The Complainant is European Monitoring Centre for Drugs and Drug Addiction (EMCDDA) of Lisboa, Portugal.
The Respondent is Virtual Clicks / Registrant ID:CR36884430 Registration Private Domains by Proxy, Inc., United States of America.
The disputed domain name <emcdda.org> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2010. On March 29, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On April 7, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 8, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 9, 2010. The Center verified that the Complaint together with the amendment to 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”).
There was an additional email from the Respondent to the Center on April 13, 2010, and a reply from the Center on April 15, 2010 about procedural matters.
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 April 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 5, 2010. The Response was filed with the Center on May 5, 2010.
The Response included a statement that “The Respondent consents to the remedy requested by the Complainant”. On May 6, 2010, the Center sent an email to the Complainant asking whether the proceedings should be suspended for the parties to reach a settlement. Although acknowledging the Respondent's proposal, the Complainant stated that it preferred for the process to continue. On May 25, 2010, the Center sent an email to the parties requesting them to ignore the Center's email of May 6, 2010, as it appeared that the Respondent had not consented to the transfer of the disputed domain name.
The Center appointed James A. Barker as the sole panelist in this matter on June 18, 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.
The Complainant is the European Monitoring Centre for Drugs and Drug Addiction (the EMCDDA), established in 1993 under Council Regulation (EEC) No 302/93 of February 8, 1993. Because of subsequent amendments, that regulation was recast, in part in the interests of clarity, in the form of Regulation (EC) No 1920/2006 of the European Parliament and of the Council of 12 December 2006. The latter regulation was attached to the Complaint. The regulation indicates that the Centre has legal personality and has its seat in Lisbon, Portugal. As indicated in Article 2 of the Regulation, the Centre's objective is to provide, in the areas referred to in Article 3 of the Regulation, the Community and its Member States with factual, objective, reliable and comparable information at European level concerning drugs and drug addiction and their consequences.
The Complainant says that it has been using the service mark EMCDDA and the domain names <emcdda.eu> and <emcdda.eu.int> since it became operational in 1997. The Complainant says that domain names such as these are reserved by EurID for use by European Union Institutions like the Complainant.
The Respondent has been a past (unsuccessful) respondent in a number of cases under the Policy. In Russell H. Fish v. Robert Farris d/b/a Virtual Clicks, WIPO Case No. D2005-1035 the Respondent's activities were described in this way:
“Respondents' business operations include, in part, registering a portfolio of domain names that incorporate common and generic terms, short terms and useful phrases. Respondents seek to obtain such domain names by attempting to register presumptively abandoned domain names, which have dropped from registration. After acquiring a domain name, Respondents ‘park' the domain by pointing it to a page of general interest links. Then Respondents create a search page with corresponding search terms that are connected to the domain name's content. The domain name is then used in conjunction with an advertising subscription database operated by an advertising consolidator, which is based on the nexus between terms in the domain name and those search terms for which advertisers have paid subscriptions on a performance basis. Respondents derive substantial revenue from their targeted web traffic business, and do not register domain names only for resale.”
The Complainant says that the disputed domain name is identical to its acronym EMCDDA. The Complainant says that it was the owner of the disputed domain name until February 28, 2007, and that the absence of an expiry notification was the only reason that impeded its renewal of the disputed domain name.
In relation to rights or legitimate interests, the Complainant says that, according to Article 6ter(b) of the Paris Convention for the Protection of Industrial Property, no country can allow any entity except the relevant international organization to register as a trademark the abbreviation of an international organization. The disputed domain name is used in conjunction with an advertising subscription database (a ‘pay per click' website). The Respondent is not conducting a legitimate activity related to drugs and drug addiction and the Complainant's range of activities.
The above shows, the Complainant says, an absence of any intention to operate the website for legitimate purposes. The links on the website mislead the user into believing that he/she is actually going to obtain information about drugs and addictions. The use of the disputed domain name is a violation of paragraph 4(c) of the Policy, in that it shows an intent to obtain commercial gain by misleading Internet users.
For somewhat similar reasons, the Complainant says that the disputed domain name has been registered and is being used in bad faith. The Complainant also says that the Respondent registered the disputed domain name with the intention of selling or renting it and making a profit from it.
The Respondent says that it is in the business of registering domain names incorporating common words, phrases and expressions for use with paid search advertising. The Respondent asserts that, from a search of the USPTO's online database for the expressions “EMCDDA”, there is no trademark or service mark listed. The Respondent says that it has been using the disputed domain name legitimately since 2007 for a click-through service and has done so without any knowledge of the Complainant or its business.
The Respondent says that the Complainant does not own a registered trademark that is identical to the disputed domain name.
In relation to rights or legitimate interests, the Respondent asserts that it registered the disputed domain name because of its appeal as a descriptive phrase, and not because of its value as a trademark. The Respondent asserts that it has the right to register and make a descriptive use of the disputed domain name. The Respondent refers to past decisions under the Policy in which panels found that the user had rights in a domain name used to attract Internet traffic based on the appeal of a descriptive phrase. The Respondent denies that it had the intention to sell the disputed domain name and says that it had never been contacted by the Complainant regarding the sale of the disputed domain name.
For somewhat similar reasons, the Respondent says that it did not register or use the disputed domain name in bad faith. The Respondent says that the use of a domain name for third party advertising is not per se illegitimate under the Policy, provided that the respondent is not seeking to take advantage of the complainant's rights. The Respondent says that it was not aware of the Complainant's trademark when it registered the disputed domain name. The Respondent says that it had no knowledge of the Complainant, and nor could it be deemed to have constructive knowledge because a search of the USPTO database would have not alerted it to the Complainant's rights.
The Respondent's acknowledges that it has been a party to past UDRP proceedings, but says this does not establish a clear pattern of abusive domain name registration.
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.
The first thing which the Complainant must establish is that it “has rights” in a trademark or service mark for the purpose of paragraph 4(a)(i) of the Policy. Such rights might be established in one of three ways. Firstly, the Complainant might demonstrate evidence of registered trademark rights. Secondly, the Complainant might have rights arising under a special regulation (that is, legislation or regulation other than a trademark law). Thirdly, the Complainant might demonstrate unregistered trademark rights. The Panel has considered each of these options below.
The Complainant provides no evidence of, and makes no claim to having, registered trademark rights. There is no evidence that the Complainant has registered rights in the acronym of its name EMCDDA.
In the absence of evidence of registered rights, the Complainant might establish such rights by pointing to a special form of protection of its name (e.g. under international or state regulation). In this respect, the Complainant appears to argue that it has the benefit of Article 6ter of the Paris Convention.
The Complainant refers to Article 6ter of the Paris Convention, to the effect that no country can allow any entity except the relevant international organization to register as a trademark the abbreviation of an international organization. For the purpose of this proceeding, the Panel accepts that the Complainant is an international organization. The Panel also notes that Article 6ter has been referred to by previous panelists in relation to internationally protected names, including acronyms of names: e.g. Bank for International Settlements v. BIS, WIPO Case No. D2003-0986; Bank for International Settlements v. Fortune Nwaiwu, WIPO Case No. D2004-0575. (However, it is apparent that the complainant in those cases also had a nationally registered trademark: see, the latter case cited above, as well as Bank for International Settlements v. G.I Joe, WIPO Case No. D2004-0570.)
The names, abbreviations and other emblems of international intergovernmental organizations, which benefit from the application of Article 6ter, are available for searching, displaying and printing (text and images) at http://www.wipo.int/ipdl/en/6ter/. The Complainant does not refer to this facility. The Panel has however searched for “EMCDDA” on that site (in a general search, as well as a search by ‘abbreviation' and ‘name') and found no results relating to the Complainant.
The purpose of Article 6ter is to prohibit the registration and use of trademarks which are identical or similar to certain emblems or official signs. However, as this Panel sees it, Article 6ter does not in itself confer rights in a trademark. The Complainant did not alternatively provide evidence that it has rights in a mark arising from Regulation (EC) No 1920/2006 of the European Parliament and of the Council of December 12, 2006, or any other Community regulation.
The Panel has considered that Regulation, but sees nothing that confers on the Complainant any special rights, akin to trademark rights, in EMCDDA. In the absence of such evidence, the Panel cannot conclude that the Complainant has rights in a mark arising from the regulations which establish it, or otherwise, for the purpose of these expedited proceedings under the Policy.
The Complainant does not alternatively argue that it has common law rights in the acronym of its name. However the Panel has considered this option for completeness. Even though it is not argued by the Complainant, such a finding might be open to the Panel if there were sufficient evidence in the case file to support it.
It is well established that the Policy protects rights in unregistered trademarks: see e.g. Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052. The majority view of what is required to establish such rights is set out in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, which states that:
“Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such ‘secondary meaning' includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographic area does not limit complainant's rights in a common law trademark. Unregistered rights can arise even when the complainant is based in a civil law jurisdiction.”
The Complainant has, however, made no argument that it has such unregistered rights. As such, the Complainant has provided little evidence of the kind referred to in the WIPO Overview, that might support a finding of unregistered rights. For these reasons, the Panel is not able to find that the Complainant has rights in an unregistered mark for EMCDDA for the purpose of the present Policy proceedings.
Although recommendations have been made to ICANN that the Policy be expanded to apply also to certain emblems of international governmental organizations (see e.g. Report of the Second WIPO Internet Domain Name Process, September 3, 2001, recommendations 158 to 168), the Policy presently only applies to trade or service marks.
For all these reasons, the Panel finds that the Complainant has not established that it “has rights” in a mark for the purpose of paragraph 4(a)(i) of the Policy.
Because of the Panel's finding above, it is not strictly necessary for the Panel to also make findings on paragraphs 4(a)(ii) and (iii) of the Policy. Despite this, the Panel notes that its finding above should not be read to condone the Respondent's behavior.
The Respondent's argument that it registered the disputed domain name “because of its appeal as a descriptive phrase” is unconvincing. The acronym EMCDDA is plainly not descriptive of anything. The fact that it is also an acronym for a phrase that contains descriptive words (the name of the Complainant) does not mean that the collection of letters EMCDDA is itself descriptive. That acronym would be meaningless to most Internet users who were not already familiar with the Complainant (or perhaps some other entity which might use a similar acronym – but then there is no evidence in the case file of any other such entity).
Although the case file is not clear about when the Respondent registered the disputed domain name, the Respondent claims that it has used the disputed domain name since 2007. This generally tallies with the Complainant's statement that it was the registrant of the disputed domain name until February 2007, but that it failed to renew the registration because it did not receive a notice of the expiry of it. What this suggests to the Panel is that the Respondent ‘snapped up' the domain name when the Complainant failed to renew its registration. The nature of the links on the Respondent's website also make it clear that it is seeking to profit from associations with the Complainant's acronym (e.g. those links include “drug statistics” and “European Union”).
Had the Complainant demonstrated rights in EMCDDA, the evidence outlined above would suggest to the Panel that the Respondent lacks rights or legitimate interests in the disputed domain name, and registered and has used it in bad faith. However, the Panel has found insufficient evidence of trademark rights in this case. While the Respondent's activity might reasonably be viewed as unfair practice, it is not a practice that is within the scope of the Policy to resolve. The Panel also notes that its findings in this proceeding do not affect any right the Complainant may have to submit the dispute to a court of competent jurisdiction.
For all the foregoing reasons, the Complaint is denied.
James A. Barker
Dated: July 7, 2010