World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Iberostar Hoteles Y Apartamentos, S.L. v. N/A, Yuri Smolyansky, Registrant Organization: N/A Registrant / Contact Privacy Inc.

Case No. D2011-0952

1. The Parties

The Complainant is Iberostar Hoteles Y Apartamentos of Balearic Islands, Spain, represented by IURISTEC, S.L., Spain.

The Respondent is N/A, Yuri Smolyansky / Contact Privacy of Northbrook, Illinois, United States of America Inc. and Ontario, Canada represented by Isenberg & Hewitt, P.C., United States of America.

2. The Domain Names and Registrar

The disputed domain names <iberostar-board.com>, <iberostar.info>, <mriberostar.com> and

<weddingsbyiberostar.com> are registered with Tucows Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2011. On June 3, 2011, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain names. On June 9, 2011, Tucows Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 9, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed amended Complaint on June 10, 2011. The Center verified that the Complaint together with the 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 on June 23, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 13, 2011. The Response was filed with the Center on July 11, 2011.

The Center appointed Sir Ian Barker as the sole panelist in this matter on July 27, 2011. 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 July 29, 2011, the Panel decided to allow the Complainant to file a Reply to the Response. The Respondent was permitted to and did file additional submissions on August 3, 2011. The Panel decided to allow the additional submissions from both Parties in the exercise of his discretion and in the interests of justice.

On August 12, 2011, the Panel requested further information from the parties, to be provided within 3 working days, with replies within a further two working days. The Respondent provided his response to the Panel’s request on August 15, 2011 and the Complainant on August 17, 2011. Replies were received from the Complainant on August 18, 2011 and from the Respondent on August 18, 2011. Both lots of additional submissions would have been unnecessary had both parties supplied the information requested by the Panel in their initial documents. The Panel decided to seek these additional submissions in order to obtain further facts to add to a confusing pool of information.

4. Factual Background

The Complainant is a Spanish corporation which operates hotels and resorts in 16 countries. It has won several awards for its hotels. It owns several Spanish-registered trademarks for the word “iberostar”. The first of these was granted on March 31, 1997. The Complainant also owns numerous domain names incorporating the word “iberostar”.

The disputed Domain Name <iberostar.info> was registered on May 3, 2004.

The disputed Domain Name <mriberostar.com> was registered on May 19, 2007.

The disputed Domain Name <iberostar-board.com> was registered on July 16, 2005.

The disputed Domain Name <weddingsbyiberostar.com> was registered on April 16, 2008.

Websites under all four disputed Domain Names are all linked through “Iberostar Message Board”. In all the websites appears the following: “Mr. Iberostar Vacation Official Travel Agency of the Iberostar Message Board”. A US/Canada toll-free number is given. The websites also feature the image and logo of the Complainant. On each website, the “I like” button from Facebook for Iberostars vacations appears.

The websites operated by the Respondent offer Internet users the possibility of discounted online bookings at the Complainant’s hotels and resorts. The Respondent has been a travel agent since 2008 and is a member of the Nexion Travel Agency consortium. He is not in any direct relationship with the Complainant.

After the Complaint was filed, a statement appeared on two of the Respondent’s websites to the effect that the relevant trademarks and copyright are owned by the Complainant and that <iberostar-board.com> is not affiliated to the Complainant. A “click-through” to the Complainant’s website is then given.

5. Parties’ Contentions

A. Complainant - Complaint

The disputed Domain Names are either identical or confusingly similar to the Complainant’s registered trademarks.

The Respondent has no rights and was given no rights by the Complainant to reflect its registered trademarks in any domain names.

The disputed Domain Names create confusion for Internet viewers who may believe that the websites have some connection with or endorsement from the Complainant. The Complainant receives no direct bookings through any of the websites at any of the disputed Domain Names. The Respondent is attempting to attract Internet users for commercial gain through the websites and thus confusing users. The Respondent has registered and is using the disputed Domain Names in bad faith.

B. Respondent - Response

The Respondent registered the disputed Domain Name <iberostar.info> in 2004: he registered the disputed Domain Name <iberostar-board.com> in 2005 as a noncommercial and “unofficial message board”. He started selling Iberostar vacations in 2008 and has been responsible for USD 8 million in sales, 2500 bookings and 8,000 guests at the Complainant’s resorts. 95% of Iberostar bookings are made through travel agents, according to a reported interview with a Mr. Long, a United States manager for the Complainant.

Over the last several years, the Complainant has learned of and/or acquiesced in and/or implicitly approved the use by the Respondent of the disputed Domain Names in connection with the sale of Iberostar vacations.

The Respondent relies on paragraph 4(c)iii) of the Policy as a defence as well as the defence of laches. He asserts that the Complainant is indulging in Reverse Domain Name Hijacking (RDNH).

In November 2005 (10 months after registration of the Disputed Domain Name <iberostar-board.com>) the Respondent emailed the Complainant’s Director of International Sales claiming to be ‘a webmaster for an Iberostar ‘message board’ which had several thousand members who were all “true Iberostar lovers”. He sought information about new initiatives of the Complainant. He was put in touch with the Complainant’s United States representative, Mr. Long, whom he emailed on November 11, 2005 seeking Iberostar updates claiming that “our members” are “true Iberostar supporters and repeat customers”. Despite an initial response expressing some interest, the Complainant did not provide the Respondent with information about new initiatives.

The Respondent annexed other emails which he had sent to the Respondent’s representative in 2006 and 2007 referring to a forum accessed by the Disputed Domain Name <iberostar-board.com>. He provided a declaration under penalty confirming some of the assertions in the Response. On January 11, 2007, he complained about a lack of response to an email of December 12, 2006, asserting that he “deserved” an instant response since his website had 4,500 members.

The Respondent is an independent travel agent who has been selling Iberostar vacation packages since 2008. Through his membership of the Nexion consortium of agents, he can access discounts which are passed on to his customers. At least 90% of his sales are for Iberostar resorts. He has been provided with password access to Iberostar marketing materials and graphics for use in his website.

On June 23, 2011 Nexion announced that the Respondent was “once again the top seller of Iberostar hotels across our benchmark of agents”. All the websites other than that at <iberostarboard.com> are used to sell Iberostar vacations and each has a disclosure that the site is for a travel agency and is not affiliated with the Complainant which has little online traffic of its own.

The Complainant is using the process under the Policy to avoid paying commissions to the Respondent who has provided many customers for the Complainant.

The Respondent has a legitimate right and interest in the disputed Domain Names since the websites are limited to the Complainant’s products only and the Respondent accurately discloses the lack of a formal relationship with the Complainant. See Gorstew Ltd & Unique Vacations Inc v. Sunset Leisure Group, NAF Claim No. 94943.

The Respondent did not register and is not using the disputed Domain Name in bad faith since he uses the disputed Domain Name for the mutual benefit of both parties. See Iberostar Int’l A.G. v Leisure Travel, NAF claim No. 045076.

The Respondent relies on the line of authority stemming from the decision in Oki Data Americas Inc v. ASD Inc., WIPO Case No. D2001-0903 (“The Oki Data case”). To come within paragraph 4(c)(i) of the Policy a reseller of a complainant’s goods or services should be restricted to selling only the complainant’s goods and must accurately disclose the relationship with the complainant.

C. Complainant’s First Additional Submissions

It was only since the Complaint was commenced that the Complainant knew that it was the Respondent who was behind the registration of the disputed Domain Name. On four occasions between November 20, 2007 and February 5, 2009, the Complainant’s lawyers sent the Respondent an email asking him to “cease and desist” using the Disputed Domain Name <iberostar info> and <iberostar-board.com>. He did not reply to any of them and hid his identity behind a privacy service. Accordingly, since November 2007, the Respondent has been aware of the Complainant’s opposition to the use of its trademarks in the Disputed Domain Names. The Panel considers that this particular information from the Complainant should have been disclosed in the initial Complaint.

It is not possible to deduce the existence of consent by the Complainant to the use of its trademarks from any of the exhibited emails between the Respondent and representatives of the Complainant. All the Respondent did was inform the Complainant of the existence of a site dedicated to followers of Iberostar on which they could exchange experiences and opinions. After receiving a negative or no response to his initial enquiry, the Complainant indicated in his email of November 7, 2005 that he was disappointed at the Complainant’s lack of interest in keeping him updated and that “As before, we will continue getting Iberostar related news from other sources”.

The Respondent’s business is attracting potential customers interested in purchasing travel packages from third parties who have a direct relationship with the Complainant. The Respondent is attracting traffic to his website for his own financial interests. The Respondent has never been an accredited agent of the Complainant. It is possible to obtain the Complainant’s logos from the Complainant’s website without being an agent or without needing a password. From the section “Material Media” on the Complainant’s website, it is likewise possible to access its photo library and logos.

The Respondent says he started as a travel agent in 2008. Yet he knew in 2007 that the Complainant had asked him to stop using the Complainant’s trademarks.

The disclaimer was added to the websites after the Complaint was filed, as can be seen from the notarized copies annexed to the Complainant showing them as they like before the filing of the Complaint.

D. Respondent’s First Additional Submissions

The information referred to in the Response concerning the Respondent should have been made available to the Complainant’s lawyer. The Complainant’s delay in pursuing a complaint under the Policy has severely prejudiced the Respondent who has built up a successful travel agency devoted to the Complainant’s products. Why the Complainant wants to cut off such a source of revenue is irrational and incomprehensible.

There is no sworn evidence to support the submissions of the Complainant’s lawyers. The Respondent’s websites contain advertisements for the Complainant’s resorts through <tripadvisor.com> which is not affiliated with the Respondent.

E. Respondent’s Second Additional Submissions

In response to the Panel’s request, the Respondent supplied the following additional information.

The Respondent purchases packages for the Complainant’s resorts from wholesalers who purchases large blocks of rooms. He is remunerated by commission paid through Nexion which is the travel agent consortium to which he belongs.

Since 2008, the Respondent has spoken about his business with the Complainant’s representative in the United States, at annual trade shows in Chicago.

The Respondent has won travel agent incentive programmes directly from the Complainant. To obtain these awards he had to register each booking under his agency name. The Complainant therefore knows of the Respondent’s activities and on March 3, 2011 received such an award.

The Respondent has other links on the websites only with TripAdvisor which has reviews of Iberostar resorts.

The Respondent registered the disputed domain names with a privacy service on March 24, 2009 in order to reduce spam emails and bot member registrations.

F. Complainant’s Reply to Respondent’s Second Additional Submissions

The Respondent has acted always through Nexion using as “Agency Name” in the booking registration from either “Nexion” or a CLIA number of Nexion. The emails the Respondent exhibits are an automated response to an onsite booking.

The Complainant suspects that the Respondent has modified the incentive award email.

The <mriberostar.com> website has links to the Respondent’s websites dedicated to other hotel chains.

The Complainant detected that the disputed domain name <iberostar.info> had been registered with a privacy service in April 2008. The Complainant sent emails to the privacy service complaining in April and May 2008 but received no reply.

The Respondent hid behind a privacy service, after receiving the Complainant’s email requiring him to cease and desist on February 5, 2009.

It was not until December 2009, that the Complainant found out that the disputed domain name <mriberotstar.com> was hidden through a privacy service.

G. Complainant’s Second Additional Submissions

As to why the Complainant did not file a complaint in a reasonable period after it had sent the ‘cease and desist’ emails, the Complainant replied to the following effect.

A complaint under the Policy is ‘the last way forward’ because of costs and a preference for a friendly agreement. The Complainant has never ceased to challenge the Respondent’s use of the disputed domain names. It took the various actions detailed above. The Respondent never replied to the Complainant’s emails. The Respondent has had ample notice and time to change his modus operandi. The Complainant has some 50 domain names in recovery.

H. Respondent’s Reply to Complainant’s Second Additional Submissions

The Complainant has never contacted the Respondent about an agreement to settle. The Respondent sought, through counsel, to explore with the Complainant’s counsel about a resolution but the Complainant did not respond.

Whatever disconnect exists between various officers of the Respondent, some were aware of and in communication with the Respondent and they have never asked the Respondent to change the disputed domain names.

The Respondent repeated the assertion of RDNH and submitted that each disputed domain name should be considered separately.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, in order to prevail, a complainant must prove the following elements of a claim for transfer or cancellation of a respondent’s domain name:

(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and

(iii) that the respondent’s domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Disputed Domain Names <iberostar.info> is identical to the Complainant’s registered trademarks.

The Disputed Domain Name <mriberostar.com>, <iberostar-board.com> and <weddingsbyiberostar.com> are all confusingly similar to the Complainant’s registered trademark. In each of these disputed Domain Names, the trademark ‘Iberostar’ is dominant. The other words in each Domain Name are merely ancillary. The letters “Mr” have little distinctive capacity. The word “board”, in Internet speak, denotes a discussion or chat site associated with the trademark. The words “weddings by Iberostar” focus on one activity frequently catered for by hotels and resorts. Again, the emphasis is on the trademarked expression.

Accordingly, the Complainant has satisfied the first limb of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Panel finds that the Complainant gave no consent to the Respondent to reflect its trademark in a domain name. Viewed in their entirety, the emails from the Respondent and the Complainant’s rather bland replies thereto cannot constitute consent. Rather, it seems clear that, at least from November 2007, the Respondent knew that the Complainant did not wish him to use its trademark. Yet in 2008, he set up as a travel agent in the way outlined in his Response, operating regardless of the Complainant’s trademarks. The Respondent did not deny in his Supplementary Reply that he had received these emails to which he had made no reply.

So any claim that the Respondent comes within paragraph 4(c)(1) of the Policy namely that before receiving notice of the Complaint the Respondent had used or made demonstrable preparations to use the Disputed Domain Names in connection with a bona fide offering of goods and services cannot be credible. True, the actual Complaint was not filed until recently, but he received notice in 2007 to the same effect.

Clearly when the Respondent set up business in 2008 as a travel agent, specializing in selling discounted holidays at the Complainant’s resorts, he had been advised of the Complainant’s attitude to his using its trademark in a domain name. Yet he went ahead and used the Complainant’s trademark on his websites.

Likewise, a defence under paragraph 4(c)iii) of the Policy in relation to the Disputed Domain Name <iberostar-board.com> cannot succeed. Although the site is supposed to be a site for the exchange of experiences and comments about the Complainant and its resorts, the use of the Complainant’s trademarks in the website cannot be either noncommercial or fair. The site is an adjunct to the Respondent’s business and it can attract persons interested in buying holidays at the Complainant’s resorts at the discounted rates that the Respondent appears able to offer, although that ability to offer a discounted rate does not come through any direct relationship between the Complainant as provider and the Respondent as agent. Accessing each of the Disputed Domain Names must mislead Internet users into thinking that the websites have some connection with the Complainant. The trademark is thus necessarily tarnished.

The consensus view on whether a reseller distributing trademarked goods or services can have rights or legitimate interests in a domain name which contains the trademark is summarised in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") at paragraph 2.5 as follows:

“Consensus view: Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder. The respondent must also not try to “corner the market” in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark.

However: Some panels take the position (while subscribing to the consensus view) that it will generally be very difficult for a respondent to establish rights or legitimate interests where that respondent has no relevant trade mark rights and without the authority of the complainant has used a domain name identical to the complainant’s trademark (i.e., <trademark.tld>). [See further View 1 in paragraph 2.4 below regarding impersonation.]

Furthermore: A small number of UDRP panels have taken the view that, without express authority of the relevant trademark holder, a right to resell or distribute that trademark holder’s products does not create a right to use a domain name that is identical, confusingly similar, or otherwise wholly incorporates the relevant trademark.”

The Oki Data case, supra , which has been followed by many UDRP panels, held that the use of a manufacturer’s trademark by a dealer or reseller should be regarded as a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy if the following conditions are satisfied:

(a) The respondent must be actually offering the goods or services at issue.

(b) The respondent must be selling only the trademarked goods.

(c) The site itself must disclose accurately the respondent’s relationship with the trademark owner.

(d) The registrant must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the chance to reflect its own mark in a domain name.

Applying these principles, the Respondent would fail on (b) and (c). There is no full disclosure of the Respondent’s relationship with the Complainant. There is nothing approaching the disclosure made, for example, by the Respondent in ITT Manufacturing Enterprises Inc., ITT Corporation v. Douglas Nicoll, Differential Pressure Instruments Inc., WIPO Case No. D2008-0936. There is no statement about the lack of any direct agency relationship between the Respondent and the Complainant. A disclaimer was put on, belatedly by the Respondent, after the Complaint had been filed. Moreover, the site does not deal solely with the Complainant’s resorts. The <mriberostar.com> website gives links to both TripAdvisor and to other hotel chains. It does not therefore sell only the trademarked services. Accordingly, the Oki Data case, supra, of authority cannot assist the Respondent. All the websites are linked.

Accordingly, the Panel finds paragraph 4(a)(ii) of the Policy established.

C. Registered and Used in Bad Faith

Often, where a complainant has taken no action against an allegedly offending domain name for some years after its registration, bad faith registration and/or use can be hard to infer. The explanation by the Complainant for the delay in filing this Complaint (which had to be extracted by the Panel by way of request for further information) is not utterly convincing. There is no good reason offered for failing to take action after the last of its emails produced no reply.

While the Panel understands the Respondent’s argument that he appears to have obtained implied permission in 2005/2007 to use the Complainant’s IBEROSTAR mark to market IBEROSTAR vacations, there is nothing in the record to show that the Complainant intended to give up the right to control its own trademark. Indeed, the Complainant subsequently demanded several times that the Respondent stop using the mark. The Panel finds that, despite the Respondent’s investment in his websites to promote the Complainant’s vacations, he did not acquire the right to identify himself with the Complainant’s mark without its permission when he started business as a travel agent. See The Stanley Works and Stanley Logistics, Inc v. Camp Creek Co. Inc., WIPO Case No.. D2000-0113 (finding retail seller of complainant’s goods does not have an interest in complainant’s trademark); see also NET2PHONE INC. v. DYNASTY SYSTEM SDN BHD, WIPO Case No. D2000-0679 (finding that membership in complainant’s web-affiliate program does not create a legitimate interest in an infringing domain name).

It is significant that the Respondent’s disclaimers appeared only after the Complaint had been filed. The Respondent did not deny in his Reply to the Complainant’s Additional Submissions that the disclaimers appeared only then. The belated placing of the disclaimers betokens bad faith. Otherwise, why were they not inserted on the websites when the Respondent commenced business?

It seems clear that the Respondent knew of the Complainant and the widespread reach of its trademarks from the emails he sent to the Complainant’s representatives, starting in November 2005.

The fact that the Respondent went ahead after the Complainant did not accede to the Respondent’s wishes (in his 2005 emails) for updated information, is also a pointer to the Respondent’s bad faith. So too is the failure of the Respondent to respond to emails asking him to “cease and desist” use of the Disputed Domain Name.

The inference is that, for whatever reason, the Respondent decided to register these disputed Domain Names in the knowledge that he had no authority to reflect the Complainant’s marks in Domain Names. Even if he were not intending to post material uncomplimentary to the Respondent on the websites, the ‘fan-site” cases make it clear that, even a supporter of the trademark owner, cannot just register a domain name which is identical or confusingly similar to a trademark, without the trademark owner’s assent and without any indication in the name to show that it is a fan site. See WIPO Overview 2.0, paragraph 2.5. (This Panel adheres firmly to view 2 expressed therein).

The fact that the Respondent chose to hide his identity through a privacy site was initially troubling in the circumstances of this case. The reason, advanced by the Respondent in Additional Submissions, for the privacy registration seems less than plausible in the light of the Complainant’s emails requiring the Respondent to cease using the Complainant’s mark.

Somewhat puzzling is the lack of action by the Complainant in not pursuing a Complaint under the Policy expeditiously. It clearly knew by 2007 the extent of the Respondent’s activities, yet the explanation for a delay of 3 years plus in filing a Complaint is not entirely convincing. Usually, a complainant will attempt to justify a delay by saying it did not know of the offending until shortly before the Complaint was filed. However, the Complainant knew about the disputed Domain Names since 2007 at least.

However, this delay is not fatal to the Complainant. In the view of this Panelist (a view also adopted by many others (see WIPO Overview 2.0, paragraph 4.10)), the equitable doctrine of laches does not apply under the Policy. In general, the greater the delay in filing a complaint, the harder it normally is for the Panel to confirm bad faith registration years before.

That difficulty does not arise here because the emails exhibited by the parties show that the Respondent clearly knew of the Respondent’s trademarks when he registered the Disputed Domain Names. Accordingly, the Panel funds bad faith registration proved.

Bad faith use has to be separately proved and this is more difficult, because the Complainant has known of the Respondent’s use of the Disputed Domain Name and must be assumed to have known about the content of the websites.

Paragraph 4(b)(iv) of the Policy provides that the following can be evidence of bad faith:

“(iv) By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The Respondent either indirectly on the <ibero-board.com> site or directly on the other three sites, is using the Complainant’s mark for commercial gain and is creating confusion in the mind of the Internet user that the sites have some connection with the Complainant. As noted earlier, the disclaimer (which is hardly clearly brought to the viewer’s attention) was inserted after the Complaint had been filed and therefore is excluded from consideration.

The facts are different from those in the Iberostar Int’l A.G. v. Leisure Travel case, supra, in that, there, the Respondent set up a website whilst working with an official of the Complainant.

The Policy does not provide for a defence of acquiescence. If the criterion for justifying a complaint was that the registration or use was “unfair”, such as is the criterion under the Nominet Policy (used for “.uk” and “.nz” disputes), the result on this particular issue may have been different, Complainant, having done nothing to enforce its rights for three plus years, and benefiting from the Respondent’s active selling of its products. However, the Policy does not allow this type of equitable defence.

What makes proof of bad faith use difficult, despite the above indications, is that at least the Complainant’s United States staff have known of the Respondent’s use of the Complainant’s marks in the Respondent’s websites. The Complainant did not deny the Respondent’s claim of his contacts a complainant employee in the United States. Given the Respondent’s rewards and the fact that his involvement as an indirect agent must have been known, it is hard to infer current bad faith use.

So that, whilst the initial registrations may have been in bad faith, the Complainant’s apparent partial acquiescence in the Respondent’s activities may have taken his current operations out of the bad faith use category for the purpose of the Policy. The fact that the Respondent’s activities apparently create a large amount of business for the Complainant is also a consideration.

As has been said often by Panelists, the Policy is aimed primarily at cybersquatting. This seems to be a commercial trademark dispute which should be resolved by a court hearing which can assess evidence in a way unavailable to a Panelist in a proceeding under the Policy. The summary processes under the Policy are quite unsuitable for this purpose. The Panel expresses no view as to whether a trademark infringement action by the Complainant against the Respondent would be successful in a court, but a court is the proper forum to weigh up all the countervailing considerations that have been outlined in this decision. However, a decision which could have the effect of closing down or severely affecting the Respondent’s business is better made by the judicial process.

Accordingly, the Panel is unable to infer current bad faith use and the Complaint must be denied.

7. Reverse Domain Name Hijacking (RDNH)

RNDH was alleged by the Respondent in his initial Response. He did not specifically seek a declaration from the Panel to that effect.

Assuming that there had been such a request, the Panel’s view is that this case cannot be one where a RDNH is appropriate – see WIPO Overview 2.0, paragraph 1, 4.17.

The Complainant has proved almost all of the elements required to succeed in a complaint, failing only because the Panel considers that current bad faith use had not been proved. Moreover, the Panel considered that the question whether the Respondent infringes the Complainant’s trademark rights is better determined in a court rather than under the limited procedures offered by the Policy.

Accordingly, the Panel declines to make a declaration of RDNH.

8. Decision

For all the foregoing reasons, the Complaint is denied.

Sir Ian Barker
Sole Panelist
Dated: August 23, 2011

 

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