Complainant is Mappy SA of Paris, France, represented by DS Avocats, France.
Respondents are Domains by Proxy Inc. of Scottsdale, United States of America, and Owen Grace of San Francisco, United States, internally represented.
The disputed domain name <mappyhour.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2010. On April 6, 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 Complainant on April 14, 2010, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on the same date. 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”).
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 14, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 4, 2010. The Response was filed with the Center on May 4, 2010.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on May 19, 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 May 25, 2010, Complainant sought leave to submit a further filing in Reply to the Response.
While paragraph 12 of the Rules provides that the Panel may call for further submissions, the Rules neither expressly permit nor prohibit the filing of further submissions on a party's own motion. Paragraph 10(d) of the Rules provides that the Panel shall conduct the proceedings in such manner as it considers appropriate in accordance with the Policy and the Rules. Paragraph 10(d) of the Rules also provides that the panel shall determine the admissibility, relevance, materiality and weight of the evidence. Accordingly, it is within the Panel's discretion, properly exercised, to accept or refuse further submissions. The acceptance or refusal of further submissions and the weight to be attributed to them has been considered in a number of cases. See for example Gordon Sumner p/k/a v. Michael Urvan, WIPO Case No. D2000-0596 and Document Technologies Inc., v. International Electronic Communications, Inc., WIPO Case No. D2000-0270. Whilst the Rules provide some flexibility to the Panel to permit further submissions, this should occur only in exceptional circumstances such as those exemplified in the decision of the Panel in the Document Technologies Case, supra.
In the opinion of the Panel, with one exception, Complainant's proposed further filing does not materially add to the Complaint as filed and no special circumstances have been made out. The Panel therefore declines to admit the further filing to the record. It is therefore unnecessary to consider whether Respondent should be afforded the opportunity to reply. The exception referred to is that the further filing shows that Complainant is the owner of a European International trademark registration of the word “Mappy” dating from 1999 and the Panel takes note of that fact.
The disputed domain name was registered on July 6, 2006.
Complainant is a French company offering multimedia services across Europe. It offers route planning services, publishes maps and supplies tourist and practical information on the Internet through its main website <mappy.com> and it designs, develops and markets LBS and navigation solutions for consumers and corporate markets.
It owns European International registrations of the trademark MAPPY dating from 1999 and Unites States and Community trademark applications and registrations dating from January and February 2007. Complainant also owns domain names comprising the word “Mappy” in several domains including “.com”, “.org”, “.net”, “.fr” and “.us” dating from as early as 1998.
Respondents are a domain proxy holder and Owen Grace. Hereinafter a reference to “Respondent” is to be understood as a reference to Mr. Grace only. Respondent is the principal of Mappyhour LLC, a Limited Liability Company of San Francisco, California. According to Respondent, it is through MAPPYHOUR LLC that he operates a website at <mappyhour.com>, an open, online database maintained by its visitors, where one can add or adjust information regarding discounted drink specials for any restaurant or bar, making the information available to others who visit the website. According to Respondent, the name Mappyhour was born out of fusion of the word “map” and the phrase “happy hour”. The website's wiki technology along with a map interface provides a mechanism for users to share and access happy hour information. The website includes proprietary technologies that involve online chat, a visitor-sensitive recommendation system, and a self-service advertising portal for businesses in the food and beverage industry.
Respondent asserts that the website was first opened to the public on October 2, 2006, initially as a noncommercial site, and was developed and monetized in December 2006. Respondent asserts that he did not know of Complainant's existence until he was contacted by Complainant's legal representatives shortly after that time.
From January 30, 2007, a course of correspondence and discussion ensued between Complainant's lawyers and Respondent. In the course of that correspondence, Complainant demanded that Respondent withdraw the disputed domain name. In the course of further correspondence and discussion, it appears that the parties agreed that Respondent would place a message on its website at the dispute domain name redirecting users seeking to access Complainant's website to its website at “www.mappy.com”. It is unclear from the material before the Panel what were the precise terms of that agreement, however, by April 2007, Respondent's website displayed a pop-up message “If you are looking for mappy.com click here”. According to Respondent, clicking on that link led to messages in English, French, German and Spanish, stating the following:
“It's MappyHour – Mappyhour ǂ MAPPY – MappyHour does not have any legal nor economic link with the MAPPY website of the French company MAPPY. If you are looking for more information about MAPPY website, then click mappy.com”.
According to Complainant, it noticed in April 2009 that the above messages no longer appeared on Respondent's website and on April 23, 2009 it wrote to Respondent, through its lawyers, demanding transfer of the disputed domain name. In the same letter, Complainant stated that:
“Another amicable solution about which my client is ready to think is that you transfer immediately the domain name to its profit. In return, Mappy could grant you a license on its Mappy trademark and authorize you to use it on your web site under the condition, however, that you would have to use MAPPY's cartography only.”
Respondent did not reply until July 10, 2009 alleging that he had not received Complainant's earlier emails and stating that he believed the message was still appearing and stating “I will attend to matter if it is no longer working, and I will fix it if need be”. Complainant asserts that he did not do so.
Complainant contends that it has used its MAPPY trademarks since 1995 and they are well and widely known throughout Europe for Complainant's online navigation services and have a strong reputation. Complainant contends that the distinctive element of the disputed domain name is the word “mappy” and therefore it will inevitably be confused with its well-known MAPPY trademarks, especially in France.
It is also Complainant's contention that Respondent has no rights or legitimate interests in the domain name because he is not known by the term “mappy” and there is no existing company named Mappyhour or Mappy Hour registered in the United States, nor are there any registration of those words in the database of the United States Patent and Trademark Office. Complainant asserts that it has never authorized Respondent to register the disputed domain name.
In support of its contention that Respondent registered and is using the disputed domain name in bad faith Complainant contends that, “It was impossible for Respondent to be unaware of MAPPY's global presence in the geolocalization services market”.
As to Respondent's assertion that the name MappyHour is a fusion of the words “map” and “happy hour”, Complainant contends that it would not be so understood by a French speaking consumer but rather as a declension of the word “mappy”. Complainant interprets Respondent's expression of appreciation of Mappy's trademark concern as an indication that he was aware of Complainant's rights.
Respondent does not contest that Complainant has rights in the trademark MAPPY, but contends that because of the differences in visual appearance, scope of services, target audience, geographical focus and delivery technology, the disputed domain name and Complainant's trademark are not likely to be confused.
Respondent contends that his company Mappyhour LLC is commonly known by the domain name and he produces evidence to show that registration of that company was filed with Secretary of State for the State of California on February 7, 2007.
It is Respondent's contention that his prompt response to and willingness to address Complainant's complaint, are evidence of his good faith, not bad faith. He contends that the disputed domain name was adopted as a combination of the words “map” and “happy hour” as appropriate to the service he proposed to provide and without knowledge of Complainant or any rights it may have then had in the trademark MAPPY. Respondent contends that he honoured the agreement reached with Complainant to post a notice and link to Complainant's website and refutes Complainant's contention that the notice and link has been taken down. Respondent denies that he registered the disputed domain name for the purpose of selling it to Complainant or to disrupt Complainant's business or that he is attempting to attract visitors to is site by creating confusion with Complainant's trademarks.
Respondent contends that Complainant's actions constitute an abuse of process and requests a finding of reverse domain name hijacking. He contends, citing prior Panel decision in Hero v. Heroic Sandwich, WIPO Case No. D2008-0779, that “it should have been apparent to the Complainant, on the basis of its own investigations, that it could not reasonably succeed in bringing a complaint under the Policy”. Respondent also cites Complainant's April 23, 2009 offer to settle on the basis of a transfer and licence back as evidence of Respondent's attempt to use the Policy in an illegitimate attempt to gain control of the disputed domain name.
This is a case in which the submissions and evidence filed by both parties reveal substantial disagreement in relation to a number of facts and the interpretation to be placed on those facts. The Panel is not a court of law. It cannot examine witnesses or otherwise test the credibility or accuracy of material put to it. It must make its decision on the written record before it and must decide the issues within the parameters of the Policy. It cannot determine issues of contract, trademark infringement or unfair competition which may arise between the parties.
Complainant has provided evidence of extensive use, at least in Europe, of its trademark MAPPY and registration of it in Europe and the United States. Complainant's rights in that trademark are established.
Notwithstanding Respondent's contentions with respect to the differences between the mark MAPPY and the disputed domain name “mappyhour”, the fact remains that the domain name takes the whole of Complainant's mark. The word “mappy” is the first part of, and forms the predominant distinguishing feature of the domain name. Objectively viewed therefore it is likely to lead persons to think there is a connection between the two.
The Panel therefore finds that the disputed domain name is confusingly similar to the trademark MAPPY in which Complainant has rights.
The disputed domain name was registered on July 6, 2006. According to Respondent it was first used to direct to a website on October 2, 2006 and commercial use of the domain name at the website first occurred in December 2006. Complainant's first notification to Respondent that it disputed his use of the domain name was on January 30, 2007. It is apparent therefore that Respondent was using the domain name in the offering of its services before any notice to it of the dispute thus, prima facie, bringing the matter within paragraph 4(c)(i) of the Policy.
The further question to be decided is whether that use constituted a bone fide use. Respondent asserts that at the time he registered the domain name he was not aware of Complainant or its trademarks. There is no way in which that assertion can be tested in these proceedings, but the assertion is prima facie credible having regard to the fact that Complainant's website appears to have been directed principally at European users and Complainant's United States trademark application was not filed until February 2007. Further, Respondent's explanation of the origin of the name as a combination of “map” and “happy hour” is credible having regard to the services to which it is directed.
In the face of those facts and assertions there is no basis on which the Panel can find that Respondent's adoption and use of the domain name was not bone fide.
The Panel therefore finds that Respondent has rights and legitimate interests in the disputed domain name.
Having regard to the Panel's finding under paragraph B above, it is unnecessary to consider this ground of the Complaint. However, the Panel notes that for the reasons discussed above in paragraph C, the Panel is unable to find that Respondent's registration and use of the disputed domain name was in bad faith.
Although Complainant has been unsuccessful in this proceeding it cannot be said that its case was so devoid of reason or merit as to constitute an abuse of process. Complainant made its case but failed to satisfy the burden of proof which it bore of showing that Respondent had no rights or legitimate interests in the disputed domain name or that its use and registration were in bad faith. Failure to discharge that burden is not an indication of abuse of process.
For all the foregoing reasons the Complaint is denied.
The Panel declines to find Complainant guilty of Reverse Domain Name Hijacking pursuant to paragraph 15(e) of the Rules.
Desmond J. Ryan AM
Dated: June 10, 2010