WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Visa Europe Limited v. Silvachi Holdings Ltd / PrivacyProtect.org
Case No. D2011-0431
1. The Parties
The Complainant is Visa Europe Limited of Paris, France represented by Inlex Conseil, France.
The Respondent is Silvachi Holdings Ltd of Charlestown, Saint Kitts and Nevis, / PrivacyProtect.org of Munsbach, Luxemburg, represented by ESQwire.com PC, United States of America.
2. The Domain Name and Registrar
The disputed domain name <premiercard.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 7, 2011. On March 7, 2011, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On March 8, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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 Complainant filed an amended Complaint on March 9, 2011.
The Center verified that the Complaint amended 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 March 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response April 3, 2011. The Response was filed with the Center April 5, 2011.
The Center appointed James Bridgeman, Sir Ian Barker and The Hon Neil Brown QC as panelists in this matter on April 27, 2011. The Panel finds that it was properly constituted. Each member of 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.
4. Factual Background
The Complainant provides banking card and related services throughout the world. The Complainant is the owner of PREMIER trademark for which it holds a number of registrations namely:
Community Trade Mark registration number 000708396 PREMIER with device, filed on December 19, 1997 in classes 9 and 36 and registered on August 7, 2002.
Community Trade Mark registration number 4002705 PREMIER with device, filed on August 27, 2004 in classes 9 and36 and registered on December 14, 2005.
French registered trade mark number 3310133 PREMIER with device registered on August 27, 2004 in classes 9, 36 and 38.
French registered trade mark number 96645266 PREMIER registered on October 10, 1996 in class 36.
The Respondent carries on business as the owner of a number of domain names from which it derives pay-per-click revenue.
According to the WhoIs database the disputed domain name was registered on March 4, 2000 whereas the Respondent claims to have acquired the registration in April 2008.
The disputed domain name resolves to a website from which the Respondent receives pay-per-click revenue.
5. Parties’ Contentions
The Complainant claims rights in the PREMIER trade mark and service mark based on its ownership of the above listed registrations and its use in commerce throughout the world and in particular in France.
The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s PREMIER trademark because the disputed domain name is composed of the element “premier” in association with the descriptive element “card”. The Complainant submits that the word “premier” is the dominant element in the disputed domain name because the word “card” is descriptive. The Complainant cites a number of decisions of the OHIM to support its argument that the word distinctive and has recognised that there is a likelihood of confusion between the trademark PREMIER and Orange Premier: Premier v Orange Premier – Premier v. Aig Premier.
The Complainant also relies upon the decisions of panels established under the Policy in support of its submissions viz.
Visa Europe Limited v. Creditcardsystem.com. WIPO Case No. D2010-1530 where the panel accepted that there was a confusing similarity between the Complainant’s trademark and the domain names <premiercreditcardsnow.com>, <premiercreditcardsnow.info> and <premiercardsnow.net>. The Complainant further cites the decision in Visa Europe Limited v. Bret Fausett, WIPO Case No. D2010-1534 in which the panel also decided that there was a confusing similarity between the Complainant’s PREMIER trademark and the disputed domain name <firstpremierbankgoldcard.com>.
The Complainant further submits that it is relevant that the Complainant uses the trademark in relation to banking card services and submits that by combining the Complainant’s registered trademark with the descriptive element referring to the services that the Complainant is supplying adds to the confusing similarity. In this regard the Complainant refers to the decisions Hoffman- La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923 and TPI Holdings Inc. v. Carmen Armengol, WIPO Case No. D2009-0361.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the name “Premier” and “Premiercard” nor has the Respondent any trademark registrations for those words. There is no business relationship between the Complainant and the Respondent and the Complainant has not authorised the Respondent to use its PREMIER trademark or any of its trademarks.
The Complainant submits that the Respondent registered and is using the disputed domain name in bad faith. The Complainant helps banking institutions and banks to develop credit card services.
The Complainant’s PREMIER card is internationally known and used throughout the world since 1982 and is particularly well-known in France and the Complainant submits that it is well known as it confers certain advantages to the users. The Complainant provides marketing and management support for the PREMIER range of products, management and promotion of the PREMIER trademark, support and operating systems as well as the development of new products and services.
The Complainant submits that the Respondent is using the disputed domain name as the address of a parking page that contains links to providers of banking services. The Complainant submits that the Respondent is therefore intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s PREMIER trademark.
The Respondent states that the disputed domain name is not identical to the Complainant’s trademark and denies that it is confusingly similar. The Respondent argues that both elements of the disputed domain name are descriptive and that the Complainant cannot claim to monopolise either the word “card” or the laudatory ephitet “premier”. In this regard the Respondent cites a decision of the USPTO in 2004 that rejected an application to register the words “premier card” on the grounds that the mark was descriptive. The Respondent submits that the USPTO trademark database identifies over 3,100 registered trademarks that incorporate the word “premier”.
The Respondent argues that this Panel should take a “common sense” approach and decide that where, as in the present case, a complainant relies on a highly descriptive mark, a small difference between the mark and the domain name should be sufficient to provide a defence against a finding of confusing similarity.
The Respondent further argues that the Complaint should be denied on the grounds of delay or laches. The Respondent points to the fact that the Complaint was not filed until almost three year after the Respondent acquired the disputed domain name in April 2008.
The Respondent submits that when it registered the disputed domain name in April 2008 it believed that it was registering a descriptive combination of words in which no party could claim exclusive rights. The Respondent did not register the disputed domain name with the Complainant in mind and has furnished a declaration that it had no knowledge of the Complainant, its web site, its business name or trademark when it first registered the disputed domain name.
The Respondent has arranged for the disputed domain name to be hosted by Above.com which rotates between various domain parking services and places pay-per-click links from Google and Yahoo advertiser feeds. The links are auto-generated service and are constantly changing based on a keyword advertising inventory and user search behaviour. The Respondent owns many domain names and is not aware of which auto-generated links appear on any given domain name at any given time. There was no malicious intent whatsoever to target the Complainant or any trademark owner with the disputed domain name registration.
The Respondent submits that it has a legitimate interest in the disputed domain name established because it registered the disputed domain name based on its descriptive meaning and not to target a trademark. Citing CNRV, Inc. v. Vertical Axis, Inc., NAF Claim No. 1300901 (legitimate interest is established where “domain names have been registered because of their attraction as dictionary words, and not because of their value as trademarks”) and also relying on the decisions of panels in National Gardening Association, Inc. v. CK Ventures, NAF Claim No. 1294457(“common words and descriptive terms are legitimately subject to registration as domain names on a first come, first-served basis”); Baccus Gate Corp. et al. v. CKV et al., WIPO Case No. D2008-0321; C Brewer and Sons Ltd. v. Vertical Axis, Inc., WIPO Case No. D2009-1759.
The Respondent argues that its legitimate interest is bolstered by the fact that it uses the disputed domain name to display generic advertising links. Complainant is wrong that such use is illegitimate. Citing Target Brands, Inc. v. Eastwind Group, NAF Claim No. 267475; Future Steel Holdings Ltd. v. Private Whois Service, NAF Claim No. 1350737; Williams, Babbitt & Weisman, Inc. v. Ultimate Search, NAF Claim No. 98813; see also Roderick W. Accetta v. Domain Admin c/o Covanta Corporation, NAF Claim No. 826565; Etam, plc v. Alberta Hot Rods, WIPO Case No. D2000-1654; The Landmark Group v. DigiMedia.com, L.P., NAF Claim No. 285459; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031.
The Respondent refers to the fact that the Complainant has argued that the links appearing on Respondent’s web site include some related to credit cards. The Respondent submits that this certainly does not mean Respondent has targeted Complainant’s trademark and argues that to the contrary, the links are naturally associated with the descriptive term “card” – shorthand for credit card contained in the disputed domain name. The Respondent submits that the Complainant should, thus, not be surprised by links to “credit cards” when it is itself using the term “card” in a purely descriptive sense to associate its business with the offering of credit card services. Citing Vanguard Trademark Holdings USA LLC v. Nett Corp., NAF Claim No. 1262162 (finding no evidence of bad faith where, among other things the links were generated based on the descriptive nature of the terms incorporated in domain name).
The Respondent further argues that moreover, that the Respondent did not even select the links appearing on its web site. They were auto-generated by the domain name parking service Above.com. The Respondent submits that it is well-established that these third-party links do not in any way make Respondent’s interest illegitimate. In any event, the appearance of links created by a third party domain monetization service does not constitute bad faith on the part of the domain owner since they do not represent the registrant’s intent. The appearance of the links is simply the result of third party software. Mariah Media Inc. v. First Place Internet Inc. WIPO Case No. D2006-1275; see also Aquascape Designs, Inc. v. Vertical Axis, Inc.c/o Domain Administrator, NAF Claim No. 629222 (finding of legitimate interest notwithstanding that pay-per-click links related to complainant’s services appeared on disputed domain name web site).
The Respondent submits that it is clear that Respondent did not intend for any specific links to appear on <premiercard.com> based on Complainant’s trademark. Respondent’s use of the disputed domain name is clearly a use in connection with the bona fide offering of goods and services.
6. Discussion and Findings
This Panel has decided to admit the Response notwithstanding that it was filed outside the time allowed under the Rules as the Respondent has provided an explanation for the late filing and as the time involved is de minimis there is no prejudice to the Complainant or the process.
The Respondent has raised the defence of laches and argued the Complaint should be dismissed due to the delay on the part of the Complainant in bringing this Complaint. This Panel is aware of the recent decision under the Policy in The New York Times Company v. Name Administration Inc. (BVI), NAF Claim No. FA1349045 where the administrative panel held that laches is "a valid defense in any domain dispute where the facts so warrant..."
While the members of this Panel are divided as to whether laches is available as a defence under the Policy, this Panel has decided that it is not necessary or appropriate in all the circumstances of the present proceeding to decide this Complaint on the basis of the principle of laches. The Respondent’s application to dismiss the Complaint on the grounds of laches is therefore refused.
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in respect of the disputed domain name to obtain an order that a domain name should be cancelled or transferred:
(1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) that the domain name has been registered or is being used in bad faith.
A. Identical or Confusingly Similar
On the evidence before this Panel, the Complainant has established rights in the PREMIER mark through its registration and use of the PREMIER mark in relation to bank card services.
The disputed domain name consists of the combination of two elements namely the words “premier” and “card”. The first element is identical to the Complainant’s mark and the second element relates directly to the services provided by the Complainant. Both elements are descriptive the combination of the descriptive element “card” does not reduce the similarity and since the Complainant has adapted the mark PREMIER for the provision of banking card services, the combination of these two particular elements, in the circumstances merely adds to the potential for confusion.
This Panel finds therefore that the Complainant has succeeded in establishing the first element of the test as set out in paragraph 4(a)(i)of the Policy.
B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and the burden of proof has therefore shifted to the Respondent to establish such rights.
The Respondent’s claim to rights and legitimate interests in the disputed domain name rest on the claimed entitlement to use the disputed domain name to generate pay-per-click revenue and claims such entitlement based on the generic and descriptive character of the two dictionary words: “premier” and “card”.
This Panel was divided on the question as to whether the Respondent has discharged the burden of proof to establish that it has rights or legitimate interests in the disputed domain name. As this Panel has decided unanimously that the Complainant has failed to prove that the disputed domain name was registered and is being used in bad faith (see below), it is not necessary to decide this point.
C. Registered and Used in Bad Faith
The Respondent has filed a declaration averring that when the Respondent was not aware of the Complainant’s mark, registrations, or rights when the Respondent registered the disputed domain name in April 2008. The Complainant has not furnished any evidence of the reputation of the mark to assist this Panel in deciding on the credibility of this statement.
The Respondent admits to being in the business of registering generic words as domain names to generate pay-per-click income. This in itself does not give the Respondent rights or legitimate interests in the disputed domain name under the Policy but neither is it objectionable as such provided that the domain name is not being used to take predatory advantage of the Complainant’s mark.
This Panel notes that the trademark registrations relied upon by the Complainant all pre-date the acquisition of the disputed domain name by the Respondent in 2008 and the Respondent would have constructive notice of same. On the other hand each of the registrations relied upon by the Respondent with the exception of the French registration number 96 645266 are for device marks. The USPTO decision relied upon by the Respondent shows that PREMIERCARD was the subject of a trademark application in the United States in 2004. It also illustrates the weakness of the mark relied upon by the Complainant which is obviously a very descriptive combination of a noun and a laudatory ephitet.
Given the decision of the USPTO which pre-dated the Respondent’s acquisition of the disputed domain name, it is not unreasonable to accept that when the domain name was registered the Respondent believed that it was a generic phrase and so it was not registered in bad faith.
On the evidence before this Panel the Complainant has failed to prove that the Respondent registered the disputed domain name in bad faith and therefore the Complaint must be refused.
For all the foregoing reasons, the Complaint is denied.
Sir Ian Barker
The Hon Neil Brown QC
Dated: May 11, 2011