The Complainant is CP Masters B.V. of Hilversum, The Netherlands, represented by Beck Greener, United Kingdom of Great Britain and Northern Ireland.
The Respondent is RareNames, WebReg of Massachusetts United States of America, represented by, NameMedia, Inc., United States of America.
The disputed domain name <imagem.com> is registered with TierraNet d/b/a DomainDiscover.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2009. On December 8, 2009, the Center transmitted by email to TierraNet d/b/a DomainDiscover a request for registrar verification in connection with the disputed domain name. On December 8, 2009, TierraNet d/b/a DomainDiscover transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 22, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 11, 2010. The Response was filed with the Center on January 11, 2010.
The Center appointed James A. Barker as the sole panelist in this matter on January 28, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On February 4, 2010, the Complainant made a supplemental filing in connection with this case. On February 6, 2010, the Respondent submitted an objection to the supplemental filing of the Complainant.
The disputed domain name was first registered on April 25, 2004, as indicated by the “creation date” in the WhoIs details attached to the Complaint, as well as in the Registrar's confirmation of those details to the Center. The disputed domain name reverts to a “portal” or “pay per click” website.
The Complainant has a European Community figurative trademark for IMAGEM, registered on September 18, 2009. Other than the evidence of its mark, the Complainant provides little evidence of the nature of its business. Evidence attached to the Response (a copy of the Complainant's website at “www.imagemgroup.com”) indicates that the Complainant acquires and manages music publishing rights and was “formed in 2007 as a partnership between CP Masters BV and Dutch pension fund APG.”
The Respondent registers domain names that become eligible for registration through expiration and deletion. The nature of the Respondent's activity in this respect has been addressed in past cases under the Policy, e.g. The Law Society v. RareNames WebReg / Rarenames, Inc., WIPO Case No. D2009-0720; Société Nationale des Chemins de Fer Français v. RareNames, Inc., RareNames WebReg and RN WebReg, WIPO Case No. D2008-1849.
The Complainant says that the disputed domain name is identical or confusingly similar to its registered mark, since it reproduces the entire phonetic content of its mark.
The Complainant also says that the Respondent has no rights or legitimate interests in the disputed domain name. The disputed domain name is not used. It reverts to a website offering the disputed domain name for sale for USD 130,000. The Respondent is otherwise not known by the disputed domain name, and is not using it in connection with a bona fide offering of goods or services. The only meaning the Complainant can think of for the word is in Portuguese, where the word means “image”. However, the Respondent is not based in a Portuguese speaking country and has no basis for alleging that the term is not distinctive.
Finally, the Complainant says that the disputed domain name was registered and has been used in bad faith, because it has been registered for the purpose of selling it in excess of the Respondent's out of pocket costs. The Complainant contacted the Respondent who asked for various sums for the disputed domain name, including USD 105,000 or asked to make an offer in excess of USD 75,000. The disputed domain name has no meaning in English, the language of the United States of America where the Respondent has its address. The Respondent has acted in bad faith within the meaning of paragraph 4(b)(i) and (ii) of the Policy. The Complainant also refers to a series of prior cases under the Policy in which the Respondent has defended its registration of domain names.
The Respondent does not dispute that the Complainant's mark and the disputed domain name are identical. However, the Respondent disputes that the Complainant has any exclusive rights in the term “imagem” or that its trademark registration provided sufficient notice to the Respondent. The Respondent notes that it registered the disputed domain name three years before the Complainant was formed.
The Respondent claims that it has rights or legitimate interests in the disputed domain name because it incorporates no more than the generic Portuguese word for “image”. Many others have registered that term in a domain name. The Respondent's use of the disputed domain name clearly falls within paragraph 4(c)(i) of the Policy, as it has used it in relation to links in Portuguese. The Respondent only offered to sell the disputed domain name to the Complainant because the Complainant asked for it to be sold.
In relation to bad faith, the Respondent says that the Complainant cannot demonstrate any of the circumstances of bad faith set out in paragraph 4(b) of the Policy. The Complainant has provided no evidence that, in 2004 when the disputed domain name was registered, the Respondent had any knowledge of the Complainant's mark.
The Respondent says that the filing of the Complaint constitutes bad faith. The Complainant should have known that it could not demonstrate one of the essential elements required by the Policy. The Respondent asks for a finding of reverse domain name hijacking.
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These elements are discussed as follows, immediately after a consideration of the parties supplemental filings. In addition, the Panel discusses the Respondent's request for a finding of reverse domain name hijacking.
As noted above in relation to the procedural history of this case, both parties have, on their own initiative, made filings additional to the Complaint and the Response. Neither the Policy nor the Rules explicitly provide for such supplemental filings. A Panel has the discretion to admit or invite further filings under paragraphs 10(a), (b), (d), and 12 of the Rules. The Panel considers that such filings should not be admitted as a general rule. There was no sufficient cause for accepting the supplemental submissions in this case. The submissions essentially sought to reargue matters otherwise dealt with in the primary submissions. Accordingly, the Panel did not consider the further filings in the consideration of the elements which follow.
The Respondent does not dispute, and the Panel finds, that the disputed domain name is relevantly identical to the textual element of the Complainant's registered mark. The Respondent's other arguments on this point – that the Complainant does not have exclusive rights in the term “imagem” – do not otherwise affect this finding. Paragraph 4(a)(i) of the Policy does not require that the Complainant has exclusive rights. That paragraph only requires that the Complainant demonstrates that it “has rights” in a mark, and that the disputed domain name is identical or confusingly similar to that mark.
The Complainant has therefore established this first element.
Because of the Panel's finding in relation to bad faith, it is not strictly necessary for it to make a finding on this ground. However the Panel briefly considers it because it is relevant to the Respondent's request for a finding of reverse domain name hijacking.
The Respondent provides little evidence that it has rights or legitimate interests in the disputed domain name. The Respondent's activity in registering domain names appears largely opportunistic. The disputed domain name reverts to “click-through” website. Consistent with the nature of the Respondent's activity, the disputed domain name appears to have been registered speculatively, to either generate click-through revenue and be part of the portfolio of domain names in which the Respondent deals. As noted by the Panel in a previous case involving the Respondent, with somewhat similar circumstances in relation to this ground and the application of paragraph 4(c)(iii) of the Policy: “neither dealing in domain names nor click-through advertising are themselves unfair in the absence of bad faith, but would be unfair if coupled with bad faith (Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964). It is therefore necessary to proceed to the consideration of bad faith before making a finding on this element of the Policy.” Bolsa de Valores de São Paulo S.A. - BVSP v. Rarenames, WebReg, WIPO Case No. D2008-1360.
The Panel in this case takes a similar approach. That is, in this case the question of whether the Respondent has a right or legitimate interests turns on whether the Respondent has acted in bad faith. This is discussed immediately below.
The principal hurdle for the Complainant is relevantly addressed in paragraph 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, as follows:
“3.1 Can bad faith be found if the disputed domain name was registered before the trademark was registered/common law trademark rights were acquired?
Consensus view: Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant's non-existent right.”
Here, the Complainant's trademark was only registered in late 2009. From the Response (which the Complaint does nothing to relevantly contradict) the Complainant itself was only formed in 2007. The disputed domain name was registered in 2004. Therefore the Complainant had no registered rights when the disputed domain name was registered. The Complainant provides no alternative argument or evidence of having common law rights at that time, of which the Respondent might have been aware.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions reflects a careful exposition of the large majority of panel authority, and outlines principles that are representative of that authority. As such, it is significantly persuasive. While panels are not strictly bound by previous authority, “panels consider it desirable that their decisions are consistent with prior panel decisions dealing with similar fact situations. This ensures that the UDRP system operates in a fair, effective and predictable manner.” See paragraph 4.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions.
For these reasons, the Panel takes a similar approach to that set out in in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions. It follows that the Complaint cannot succeed on this ground.
The Respondent asks for a finding of reverse domain name hijacking against the Complainant. Paragraph 1 of the Rules defines “reverse domain name hijacking” as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” A finding of reverse domain name hijacking is a subset of a broader finding that may be made by a panel, under paragraph 15(e) of the Rules, that a Complaint was brought in bad faith.
“To prevail on such a claim, Respondent must show that Complainant knew of Respondent's unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith.” Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc., WIPO Case No. D2004-0843. It has also been said that “such a finding is intended only for the worst cases where there is bad faith such as malice or dishonesty or some other abuse of process.” See Plan.Net concept Spezialagentur für interactive Kommunikation GmbH v. Murat Yikilmaz, WIPO Case No. D2006-0082.
In other words, bad faith is the key criteria for a finding under paragraph 15(e) of the Rules. While bad faith is not explicitly defined for this purpose in the Policy or Rules, it is clearly a concept linked to intention. (Likewise, the Respondent's intention is a central matter for a finding of bad faith under paragraph 4(a)(iii) of the Policy.)
On balance, the Panel does not consider that the evidence shows that the Complainant intended to proceed in bad faith. The very obviousness of the gap in the Complainant's case suggests more strongly that the Complainant seriously misunderstood what was required for a finding in paragraph 4(a)(iii) of the Policy, rather than that the Complaint was brought dishonestly. The failure of the Respondent in some past cases under the Policy may also have encouraged the Complainant to believe it might succeed on the different facts of this case.
For all the foregoing reasons, the Complaint is denied.
James A. Barker
Dated: February 11, 2010