WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SIX Group AG v. Xedoc Holding SA
Case No. D2012-1548
1. The Parties
The Complainant is SIX Group AG of Zürich, Switzerland, represented by Meisser & Partners, Switzerland.
The Respondent is Xedoc Holding SA of Luxembourg, Luxembourg, represented by Law.es, Spain.
2. The Domain Name and Registrar
The disputed domain name <six.com> (the “Disputed Domain Name”) is registered with Fabulous.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2012. On July 31, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 1, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 2, 2012.
The Center verified that 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 August 3, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 23, 2012. The Response was filed with the Center on August 23, 2012.
The Complainant submitted a Supplemental Filing on August 30, 2012. On September 5, 2012, the Respondent filed a Request for Extension of Time to File Supplemental Reply. On September 21, 2012, the Respondent submitted a Supplemental Filing in reply to the Complainant’s Supplemental Filing.
The Complainant had requested a single-member panel. Exercising its rights under paragraph 5(b)(iv) of the Rules, the Respondent requested a three-member panel. The Center appointed Charné Le Roux, Philippe Gilliéron and Diane Cabell as panelists in this matter on September 27, 2012. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. 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 is a Swiss stock exchange operating primarily in the Swiss financial sector, under the trade mark SIX. However, approximately 25% of the Complainant’s revenue is generated outside of Switzerland, where approximately one third of its employees work. The Complainant is present in 24 foreign countries, with the largest locations in these countries being Paris, Vienna, Stockholm, Stamford, Connecticut (United States of America) and London. The Complainant’s 2011 fiscal year showed an operating income of CHF 1,257,655,000. The Complainant first registered the trade mark SIX in 1989, as a Swedish registration obtained on July 10, 1989. The Complainant also owns two other trade mark registrations for SIX, being International trade mark registrations acquired in October 2008 and March 2009 respectively.
The Disputed Domain Name was registered in 1995 and was acquired by the Respondent in 2004. Up until approximately January 2011, the Respondent used the website associated with the Disputed Domain Name in connection with Pay-Per-Click (PPC) landing pages. Thereafter, the website was redirected to an adult content website, namely “www.sexvideos.com”, which is owned by the Respondent. The Complainant approached the Respondent anonymously in December 2010 to purchase the Disputed Domain Name and received a counter offer for USD 2 million in response.
5. Parties’ Contentions
The Complainant submits that it has acquired rights in the SIX trade mark as a consequence of:
a. the registration of its trade mark in Sweden in July 1989 and as an International trade mark in 2008 and 2009 respectively; and
b. its use of the SIX trade mark in Switzerland and 24 other countries including France, United Kingdom, United States of America and Germany.
The Complainant contends that its SIX trade mark is well known.
The Complainant argues that the Disputed Domain Name is identical and/or confusingly similar to its SIX trade mark.
The Complainant intimates at the outset of its argument that it was not too concerned with the Respondent’s initial use of the Disputed Domain Name in connection with PPC use, but that the change to pornographic content after its approach to purchase the Disputed Domain Name prompted it to file the present Complaint.
The Complainant contends that the Respondent lacks rights or legitimate interests in the Disputed Domain Name in that:
a. the Complainant registered its trade mark prior to the registration of the Disputed Domain name and since the SIX trade mark is very well known in the financial world, the Respondent should have been aware of the Complainant’s trade mark;
b. the Respondent initially used the Disputed Domain Name in connection with a PPC website linked to financial topics, which the Complainant submits does not amount to the bona fide offering of goods or services;
c. the current use by the Respondent of the Disputed Domain Name in connection with adult/pornographic content does not qualify as a legitimate interest;
d. the Respondent’s concealment behind a privacy service does not amount to the bona fide offering of goods or services;
e. the Respondent is not commonly known by the Disputed Domain Name;
f. the Respondent only registered the Disputed Domain Name for commercial gain in order to misleadingly divert consumers to sites that are not affiliated to the Complainant;
g. the Respondent is using the Disputed Domain Name to attract users for commercial gain, which it derives by attracting the public familiar with the Complainant’s trade mark to a website where pornographic goods and services are offered. The Complainant contends that this does not constitute legitimate, noncommercial or fair use of the Disputed Domain Name; and
h. the Respondent was neither authorized nor licenced by the Complainant to use the Complainant’s trade mark.
The Complainant further contends that the Disputed Domain Name was registered and is being used in bad faith. According to the Complainant, since the Disputed Domain Name is not descriptive of financial services, the Respondent’s use of the Disputed Domain Name in relation to links to financial services can only be explained on the basis that the Respondent was aware of the Complainant’s trade mark.
The Complainant submits that the fact that the Respondent concealed itself behind a privacy service shortly after redirecting the website associated with the Disputed Domain Name to a pornographic website, demonstrates that the Respondent registered the Disputed Domain Name in bad faith.
The Complainant also submits that the Respondent’s attempt to sell the Disputed Domain Name for over USD 2 million is evidence of bad faith.
The Complainant contends that the registration of the Disputed Domain Name was made in order to prevent the Complainant from using its trade mark as a domain name and bases this argument on the fact that its SIX trade mark was already known in the financial world before the Respondent registered the Disputed Domain Name. It argues that the Respondent’s links to websites offering services in the field of finance supports this contention. The Complaint provided evidence of the Respondent’s involvement in two other UDRP procedures and submits that this shows a pattern of conduct. These UDRP disputes involved the domain names <metart.com> and <kaleidoscope.com>.
The Complainant furthermore submits that the registration of the Disputed Domain Name was made primarily for the purpose of disrupting its business. The Complainant offers in support of this contention the fact that the Respondent is linking the Disputed Domain Name to a pornographic website which is exploitative, particularly since the Disputed Domain Name is not descriptive for sex.
The Complainant contends that the Respondent intentionally attempts to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trade mark. The Complainant states that the Respondent is undoubtedly generating an income from the redirection of the Disputed Domain Name to a pornographic website.
The Complainant finally contends that the Respondent registered the Disputed Domain Name primarily for the purpose of selling it for a consideration in excess of its out of pocket costs. It bases its contention on the fact that the Respondent indicated that the Disputed Domain Name could be purchased for USD 2 million.
The Complainant requests that the Disputed Domain Name be transferred to it.
The Respondent submits in connection with the Complainant’s trade mark rights that the Swedish trade mark registration appears to have been acquired by the Complainant after the Respondent registered the Disputed Domain Name and, in any event, that all the other trade mark registrations of the Complainant post date the Respondent’s acquisition of the Disputed Domain Name.
The Respondent contends in connection with its rights and/or legitimate interests in respect of the Disputed Domain Name that the Complainant must first make out a prima facie case showing a lack of rights or legitimate interests, before the burden of proof shifts to the Respondent to show that a right and/or legitimate interest does exist. The Respondent submits that this test does not involve a balancing of which party has the better right, but rather that the Respondent must at least establish a “potentially legitimate interest”, whereupon the Complainant should prove that such interest is illegitimate. The Respondent submits that the Complainant has not established a prima facie case as aforesaid, but even if it did, that any presumption has been refuted.
The Respondent denies firstly that the Complainant’s SIX trade mark is famous and submits that there has been no evidence of third party recognition in this regard. The Respondent argues that the Complainant’s evidence, which is limited to self produced materials and entries showing trade mark registrations, are bald allegations without evidence. It denies that it has been aware or had known of the Complainant or its trade mark until receipt of the Complaint.
The Respondent submits that the trade mark SIX is a common word in the English language. It provided evidence that there are over 4,000 trade marks listed on the United States Patent and Trademark Office (USPTO) and Office for Harmonization in the Internal Market (OHIM) databases that consist or include the term “six”, and over 68,000 domain names that commence with the word “six” and over 75,000 domain names which incorporate the word “six”. It points out that the domain name results above are limited to domain names with extensions ending with .com, .net, .org, .info and .us and that there would be many more if other extensions are included in this analysis. The Respondent denies that the word “six” could ever act as a source identifier for the Complainant.
In connection with the pre-2011 PPC use, the Respondent submits evidence to show that there was only a single PPC reference to “finance” in 2006 and that a single reference to such a general category is insufficient to show an absence of a legitimate interest. It submits that its pre-2011 PPC use was indeed legitimate, even if it was not contextually related to the meaning of the word “six”, particularly because the SIX trade mark is not famous or a coined phrase. The Respondent strongly denies that people entering <six.com> will be looking for the Complainant.
The Respondent submits that its current use of the Disputed Domain Name in connection with adult content is legitimate. The Respondent provided evidence to show that “six” is a common search term for the word “sex” and that statistical results that it obtained prior to changing its website use to adult content, showed that traffic to the Disputed Domain Name has a significant portion of people searching for sex. The Respondent’s evidence shows that revenues prior to the change of use of the Disputed Domain Name were low and the bounce rate high. This led the Respondent to believe that it would receive increased traffic if the website was redirected to “www.sexvideos.com” and the statistics that the Respondent provided after the change shows that it was correct. The traffic continued to grow and the bounce rate had fallen, meaning that users visiting the site are staying longer and viewing more content.
The Respondent’s explanation regarding the price that it sought for the Disputed Domain Name is that the Complainant’s December 2010 offer was anonymous and unsolicited by the Respondent. It also did not assert any trade mark or other claim. The Respondent advises that it did not know that the offer originated from the Complainant and that its counter offer of USD 2 million was consistent with third party valuations of the Disputed Domain Name. In this regard, the Respondent submitted evidence of a valuation of the Disputed Domain Name at USD 1.180 million.
The Respondent denies that its use of a privacy service shows a lack of legitimacy. It submits that it is a standard privacy service that has not been used improperly.
The Respondent denies that there is any requirement for it to be commonly known by the Disputed Domain Name or to conduct business under that name. It also denies that it requires an authorization or licence from the Complainant, because “six” is a generic term and is used by the Respondent for a purpose that is not related to the goods and services for which the Complainant’s trade mark was granted.
The Respondent submits that it is making a fair use of the Disputed Domain Name without the intent misleadingly to divert consumers. It submits that there is no evidence to show that people entering <six.com> are in fact looking for the Complainant and that the Complainant’s trade mark SIX is not famous or exclusively associated with the Complainant.
The Respondent denies that it has deprived the Complainant from using its trade mark in a corresponding domain name, since the Complainant is already using the domain name <six-group.com>, which fits in with its trading name.
The Respondent denies that the Disputed Domain Name was either registered or used in bad faith. It denies that there is any evidence to show that the Respondent specifically targeted the Complainant, and that the Disputed Domain Name is a single word in common use. It submits that the presence of a single PPC link in 2006 to a general category for “finances” does not establish bad faith and neither does the use of the Disputed Domain Name to sell adult content.
The Respondent denies that its registration or use of the Disputed Domain Name was with the intention to cause confusion with the Complainant. It argues that the mere fact that the Disputed Domain Name may be equal to the Complainant’s trade mark is not in itself evidence of bad faith. The Respondent submits that it registered and used the Disputed Domain Name in good faith and for a legitimate purpose.
The Respondent requests for the Complaint to be denied and also for a finding of reverse domain name hijacking to be made. It submits that the Complainant is using the UDRP to deprive the Respondent of its legitimate ownership of the Disputed Domain Name. It refers to the following factors in support of this argument:
a. that the Complainant should have realized that its Complaint could never have succeeded, particularly since it admits that Disputed Domain Name was initially registered in good faith; and
b. that the Complainant was using the UDRP to circumvent a legitimate purchase process whereby it could own the Disputed Domain Name.
C. Supplemental Filings
The Complainant filed a Supplemental Filing wherein it indicates that since the evidence showing bad faith could not be brought forward in the Complaint, the additional evidence that it received after it had filed the Complaint should be considered. In this regard it refers to an email and website message allegedly sent by the Respondent on the day after the Complaint was filed. Both these messages indicate that the filed Complaint constituted a hijacking attempt by the Complainant of the Disputed Domain Name, that the Complainant would be “sued for reverse domain name hijacking” and a statement that the UDRP proceeding was “all over the domain name blogs”. The Complainant submits that the messages, as well as the blog referred to, were initiated by the Respondent. The Complainant argues that the emails and the commencement of a blog allegedly by the Respondent constitutes nothing else but a war against the Complainant by the Respondent. The Complainant deals further with the bad faith conduct of the Respondent in offering the Disputed Domain Name for excessive value.
The Respondent replied to the Supplemental Filing of the Complainant. It denies that the email and the website message referred to by the Complainant, were sent by or at the request of the Respondent. It submitted evidence that information regarding filed UDRP complaints is disclosed to the public almost immediately, or at least very soon after they had been filed and that at least 17 comments were left by the public on the said blog on the same day as those messages complained about by the Complainant, none of which emanated from the Respondent. The Respondent continues to deal in its Supplemental Filing with the issue of the offer for sale of the Disputed Domain Name and reverse domain name hijacking.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in the proceeding, the Complainant must prove on a balance of probabilities:
(i) That the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which it has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) That the Disputed Domain Name has been registered and is being used in bad faith.
A. Supplemental Filing
The parties’ Supplemental Filings deal, primarily, with one email allegedly sent by the Respondent to the Complainant and one website message allegedly left on the Complainant’s website by the Respondent, both of which criticize the Complainant and accuse it of domain name hijacking. Both parties also reargue in their Supplemental Filings matters previously set out in the Complaint and Response.
To summarise the parties’ new submissions in these additional filings, the Complainant uses in support of its argument that it must have been the Respondent who posted the email/message, the fact that they were sent prior to the publication of information regarding the filed UDRP Complaint. The Respondent, however, denies that it is the author of the email and message respectively and also submits evidence that the information regarding the filed UDRP Complaint was, in fact, published well before the email and message were generated.
Unsolicited supplemental filings will only be allowed in exceptional circumstances, in line with the Policy objective of delivering prompt and effective resolution of domain name disputes (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), at paragraph 4.2, in this regard. These exceptional circumstances generally involve matters that arise after the initial pleading was filed and which could not reasonably have been anticipated at that time. In this instance, the critical and perhaps even threatening content of the email and messages referred to, was not proven to have emanated from the Respondent and in any event has no real bearing on the matter. This will not be admitted. As the balance of the Supplemental Filings consists primarily of re-argument of matters included both in the Complaint and the Response, this is also not admitted.
B. Identical or Confusingly Similar to a mark in which Complainant has rights
The Complainant has furnished evidence of a trade mark for SIX, registered on the Swedish register and as an International trade mark and furthermore, use of that mark in commerce. Either suffice to establish rights in the mark for Policy purposes.
The strength of the trade mark, how many others have similar marks, or any priority between the rights of the parties in similar marks, though of relevance under paragraphs (4)(a)(ii) and (iii) of the Policy, are not taken into account under this threshold requirement. The Disputed Domain Name does not differ in any way from the trade mark in which the Complainant has rights and is thus identical to it.
The Complainant has satisfied this Policy requirement.
C. Rights or Legitimate Interests
Paragraph (4)(a)(ii) of the Policy requires the Complainant to prove a negative, namely that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. This is accomplished as follows: “Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie is made, the production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, the complainant is generally deemed to have satisfied paragraph (4)(a)(ii) of the UDRP. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.” See WIPO Overview 2.0 at paragraph 2.1, in this regard.
The facts of this matter are that the Respondent acquired the Disputed Domain Name in 2004. At that time the Complainant owned a Swedish trade mark registration dated July 1989. The initial, pre-2011 use of the Disputed Domain Name was in connection with PPC links and the Panel is prepared to accept the Respondent’s evidence that there was a single entry to “finance” in January 2006 and that this single link to a general term is not directly linked to the Complainant. PPC websites are not in and of themselves unlawful or illegitimate. Much depends on whether the links are contextually related to the defined meaning of the domain name in question or whether there is targeting, or a taking of an advantage of another mark in the process of generating advertising revenue. The Panel accepts the Respondent’s evidence that reference to “finance” which is a category link, does not specifically indicate a targeting of the Complainant. The Panel also takes note of the general nature of the other links on the page submitted by the Complainant in support of its argument of targeting, and also those having appeared prior to and following the January 2006 use complained of, as submitted by the Respondent. See in this regard Telephone and Data Sytems, Inc. v. Protected Domain Name Services – Customer ID: NCR-813584 / Daniel Wang, WIPO Case No. D2011-0435. The Panel finds that the Respondent’s pre-2011 use does not show that the Respondent lacks legitimate interests in the Disputed Domain Name.
The post 2011 use of the Disputed Domain Name in connection with adult content, as deplorable as it may be, also can not in and of itself be said to be illegitimate. The Panel takes account of the fact that there is extensive third party use of the term “six”, both as trade marks and as domain names, and that it cannot by any stretch of the imagination be considered famous or exclusively associated with the Complainant. The Panel also takes account of the reasons offered by the Respondent for the change in content of the website attached to the Disputed Domain Name to adult content. The Panel accepts that the Respondent’s decision was to increase the traffic to its website following investigations that it had undertaken concerning the traffic sources that arrived at the Disputed Domain Name, which shows that “six” is considered a common search term for sex. The Panel finds that the Respondent’s post 2011 use also does not show that the Respondent lacks legitimate interests in the Disputed Domain Name.
In this UDRP proceeding, there is no evidence that the amount that the Respondent sought as a consequence of the offer made by the Complainant to purchase the Disputed Domain Name involved taking advantage of whatever goodwill attached to the Complainant’s mark. The Panel accepts that the Disputed Domain Name, which is a .com domain name and consists of a generic three letter word, may hold considerable inherent value as, in fact, shown by the Respondent in a valuation that it had conducted. After all, the Complainant’s offer was unsolicited and anonymous and made no reference to any trade mark rights.
The Complainant has not carried its burden of proof under this Policy head.
C. Registered and Used in Bad Faith
The lack of any evidence of the Respondent targeting the Complainant or its trade mark also precludes a finding that the Respondent selected and registered the Disputed Domain Name to take advantage of the Complainant or its mark. Such a finding is ordinarily required for establishing bad faith in registration. See also Forest Laboratories, Inc. v. Clark Grace, WIPO Case No. D2011-1006. Bad faith registration and use must each be proven separately, so regardless of the Panel’s finding under the second element, the Complainant has not carried the burden of proof under this Policy head.
D. Reverse Domain Name Hijacking
The Respondent asks the Panel to rule that the Complaint represents an attempt by the Complainant at Reverse Domain Name Hijacking. This is defined in the definition section of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”. Paragraph 15(e) of the Rules provides as follows: “If after considering the submissions, the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”.
The Panel finds that there is no evidence to show that the Complainant did not believe it had a legitimate case under the UDRP based on the information available to it when the Complaint was filed. The evident weakness of the Complainant’s UDRP Complaint is not sufficient in itself for a finding of Reverse Domain Name Hijacking.
Accordingly, the Panel declines to enter a finding of Reverse Domain Name Hijacking against the Complainant.
For the foregoing reasons, the Complaint is denied.
Charné Le Roux
Dated: October 11, 2012