WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Baccarat SA v. Domains by Proxy, LLC, DomainsByProxy.com / Virtual Clicks
Case No. D2013-0305
1. The Parties
The Complainant is Baccarat SA of Baccarat, France, represented by MEYER & Partenaires, France.
The Respondent is Domains by Proxy, LLC, DomainsByProxy.com of Scottsdale, Arizona, United States of America (the “United States” or the “US”) / Virtual Clicks of San Diego, California, United States, represented by ConflictResolution.com, United States.
2. The Domain Name and Registrar
The disputed domain name <onlinebaccarat.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2013. On February 14, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 15, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 20, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 25, 2013. On February 21, 2013, the Respondent sent a pre-commencement email communication to the Center.
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 amended Complaint, and the proceedings commenced on February 26, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 18, 2013. The Response was filed with the Center on March 15, 2013. On March 18, 2013, the Complainant sent a Supplemental Filing by email to the Center.
The Center appointed John Katz QC as the sole panelist in this matter on April 3, 2013. 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.
4. Factual Background
The Complainant is a French based company which operates from its principal office in Baccarat, a town between the larger centers of Nancy and Strasbourg in North Eastern France.
The company has been a manufacturer of fine crystal ware since 1764 in the reign of Louis XV. It operates a website <baccarat.com> which shows that the range of crystal products is extensive comprising not just tableware or ornaments but also jewelry and lighting.
Further, the company has recently extended its operations to hotels, residences, restaurants and spas. One hotel is in New York City, United States, opening in 2014.
With respect to its crystal products, the company has supplied and continues to supply its products worldwide to a range of customers including royalty and heads of State.
The company owns a number of registered trade marks around the world including the United States of America. It also owns and operates a web portal “www.baccarat.fr” and the domain name <baccarat.com>. There are also a number of country code specific domain names utilizing four languages and connecting with customers in over 40 countries. There are additionally other domain names registered, all utilizing the core name or word “baccarat”.
The company operates in the United States in over 230 store locations including 39 in California. The Respondent, Virtual Clicks, is registered with an address in San Diego, California, where the Complainant has an authorized outlet store. There is also a US specific website “www.us.baccarat.com” which allows customers to shop on line for the Complainant’s products.
The Complainant contends that its name, in relation to its products (or services) is a famous name or mark.
The Respondent operates a website at the disputed domain name which appears to offer for online sale a variety of products which appear on the home page to comprise essentially card or gambling related services. The home page features items of jewelry as well. The search function allows a visitor to type in “crystal” and sponsored links to other sites appear. So also does a window for related searches which displays Waterford and Swarovski products, both very well-known manufacturers and suppliers of crystal. These would appear to be pay-per-click (“PPC”) links or links that default to other online shopping websites. The Respondent’s website does not appear to feature Baccarat crystal at all nor any online games for the card game commonly known as Baccarat. Typing Baccarat into the search window displays other websites for crystal products and also websites for card games.
The various windows on the website at the disputed domain name all have a banner at the top “the domain online-Baccarat.com is for sale” and direct inquiries to BuyDomains.com. That website appears to be a warehouse that deals in selling domain names.
The disputed domain name was registered in the name of VirtualClicks.com in 2001. Although there is no evidence to the point it is assumed it has been live (as opposed to being merely a parking site) since that time. The Registrant was changed in April 2010 to Domains by Proxy, Inc. The Registrant was changed again in April 2012 to Virtual Clicks.
5. Parties’ Contentions
The Complainant relies upon its registered trade marks, its domain names, including <us.baccarat.com>, for online shopping and its great reputation established over very many years. It says that its name and its trade marks are both famous and identified by the relevant sector of the public with the Complainant. It says that the Respondent on the other hand does not trade in Baccarat crystal products or services, is not known by that name and has no association or link with the Complainant.
The Complainant therefore contends that the Respondent has no rights to and has registered the disputed domain name for opportunistic purposes to deceive customers and to trade off the well established reputation of the Complainant.
The Respondent relies on its registration of the disputed domain name since 2001. It says the domain name of the Complainant <baccarat.com> has been registered for only 9 months. In contrast the Respondent has owned the disputed domain name for 12 years. The Respondent does not address the change in Registrant in April 2010 nor later in April 2012.
It then says that the Complainant has previously failed to secure the domain name <baccarat.biz> so the contention is made that the root mark or sign “Baccarat” is generic (Baccarat S.A. v. Priority Software Inc., WIPO Case No. DBIZ2002-00081).
The Respondent asserts that the word, name or mark “Baccarat” connotes a card gambling game and points to a significant number of landing pages for Baccarat gambling sites.
In response to the Complainant’s assertion that the website at the disputed domain name enables a visitor to access other websites selling online the Complainant’s competitors’ crystal products, it says this is simply the Respondent using what it describes as “underdeveloped domain names with professional domain name parking services which pay a share of the advertising revenue they generate”.
The Respondent also responds to the Complainant’s reference to and reliance upon previous involvement by the Respondent in adverse UDRP decisions.
The Respondent denies any attempt to pass off or utilize the reputation and goodwill of the Complainant. It also accuses the Complainant of reverse domain name hijacking.
6. Discussion and Findings
The Policy is directed towards resolving disputes concerning allegations of abuse of domain name registrations.
As part of the process, a complainant must provide evidence and submissions in support of its complaint. The expectation is that the complainant will provide such supporting evidence as is necessary to make out its case under all three heads in paragraph 4(a) of the Policy. The respondent is given full opportunity to respond. In this instance, the Respondent has filed a Response.
Paragraph 4(a) of the Policy sets out three elements that must be established by a complainant to merit a finding that a respondent has engaged in abuse of domain name registration and to obtain relief. These elements are that:
(i) The domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Each of the three elements must be established by a complainant to warrant relief.
A. Identical or Confusingly Similar
As to the first ground, the disputed domain name must be shown to be identical or confusingly similar to trade marks in which the Complainant has rights.
The Complainant must establish that it has such rights either to common law or registered trade marks or service marks and that those rights are being abused by the Respondent.
The Complainant has relevant trade marks and domain names all of which feature the word BACCARAT as part of the registration. In some instances it is the word alone whilst in others it is in combination with another word, usually descriptive of the nature of the service to which the name relates. There are a number which are associated with shopping including the online ones already discussed.
The Complainant says that the generic Top Level Domain (“gTLD”) “.com” suffix is not a distinguishing feature. It also says that the prefix “online” is no more than a description of the nature of the service likely offered by the website. Indeed it says that enhances confusion by deluding visitors to the website to assume it is a website for online Internet sales of Baccarat products.
The Respondent disputes this. In essence it relies upon the word “Baccarat” as signifying a card game or gambling. It relies upon the number of hits a search of “Baccarat” generates, their priority listing with the predominance of gambling related sites in such hits.
The Respondent contends that “Baccarat” is a generic term more attributable to gaming or gambling rather than the Complainant’s products. It analogises with the use of the word Explorer in Ford Explorer or Internet Explorer (for vehicles and a search engine respectively).
The Complainant must be correct that the “.com” suffix adds nothing. As for the prefix “online” it must also be the case that it serves only to describe in the clearest possible descriptive terms the nature of the product or service with which the main or root name or mark is connected. Thus “onlinebaccarat” connotes something associated with “Baccarat”, available or accessible via the web.
The issue under this section is whether the Respondent is correct that “Baccarat” is generic or, more accurately, descriptive, describing gaming or gambling and in this instance online gaming or gambling.
It must also be correct that “Baccarat” of itself can readily describe and refer to a card game (as it also can to the town in France) so that no exclusive rights could be acquired to the word “Baccarat” as used to describe or refer to a card game (or the French town). “Onlinebaccarat” therefore simply describes the use or reference to a web based service offering the card game Baccarat in an online platform.
However, the analogy the Respondent relies upon is misplaced or misconceived. In the case of Explorer (as in Ford Explorer or Internet Explorer) the word Explorer on its own is used descriptively. Where however the word is used in connection with another word which links the descriptive word to a particular product or trade mark (such as Ford) the analogy disappears. The combination of World and Explorer in World Explorer would be an appropriate analogy for the Respondent to rely upon. Thus, Ford Explorer is not descriptive as the word “Explorer” takes its true meaning, colour and relationship with something or someone or something from the trade mark which precedes it namely “Ford”. Internet Explorer however may be descriptive.
It is also dependent on the context. If the Respondent used the disputed domain name solely to offer Internet based gaming and gambling and not also links to crystal products, the Complainant would likely have no basis for complaint. That would also explain why it can have no complaint with gaming and gambling domain names that use the word “Baccarat”.
A trade mark is not to be considered in isolation and devoid of the context in which it is used. A trade mark is used to signify a connection in the course of trade or business between the product or service to which the trade mark relates and is registered and some person who is the owner of that trade mark. It is a form of trade association and guarantee of such with resulting qualities or features. That is of the essence of a trade mark.
There is no question but that the disputed domain name does not use a mark which is identical to any belonging to the Complainant. So is it confusingly similar? The question must be answered by considering the manner in which the Respondent is actually using the disputed domain name. Given that its website allows a click-through to other sites offering for sale online crystal products but not those of the Complainant, the use by the Respondent must be of a confusingly similar name or mark.
Moreover, as it appears that the card games offered by the Respondent are also click-through windows to third party sites, it is clear that the Respondent does not itself use the disputed domain name for the purposes of offering a Baccarat card game online.
The Panel accordingly finds that paragraph 4(a)(i) of the Policy is made out.
B. Rights or Legitimate Interests
As to the second ground, that there are no rights or legitimate interests possessed by the Respondent, the Respondent does not put forward in evidence any business or trading operation known as or by reference to the trade mark in suit thereby justifying a proprietary right to the mark. It appears to rely upon the generic or descriptive use of “baccarat” as a card game together with online offerings of access to e-versions of the game.
Under paragraph 4(a)(ii) a respondent can justify its registration of a domain name on certain grounds some of which are set out in paragraph 4(c) of the Policy. Such grounds resolve broadly to own name use, bona fide use, or legitimate noncommercial or fair use.
In this instance the Respondent has provided a response which necessarily requires to be considered. But, as earlier indicated, the Respondent does not address the change in Registrant in 2010 nor later in 2012.
The Respondent relies upon its registration of the disputed domain name now for exactly 12 years. The Respondent raises a criticism of the Complainant for its contention that the Complainant has operated the website <baccarat.com> for several years whereas the WhoIs registration shows that domain name was registered less than a year ago. There is nothing in this point. The issue is whether the Respondent has any rights or legitimate interests as defined by the Policy.
Here, too, the Respondent relies upon the failure by the Complainant to claim the domain name <baccarat.biz>. A reading of the decision of that panel in that UDRP case shows that the respondent there was a business apparently engaged in promoting gaming online. It had a number of other gaming related domain names all featuring the name of the particular form of gaming or gambling. There was therefore no basis for confusion. Nor was the respondent there offering the domain name for sale. That case is therefore wholly different from the present and has no relevance.
The Respondent denies the relevance of the four other UDRP decisions involving the Respondent. It explains those on the basis that they contain domain names that were unique (not a highly generic root word such as “Baccarat”). It also says it owns over 10,000 domain names and four orders of transfer by UDRP panels is a minuscule proportion.
These arguments of distinction are irrelevant. The issue under this section of the Policy is whether the Respondent has any rights or legitimate interests in the disputed domain name. For the purposes of this Panel decision, the Panel has put to one side the history and four other examples relied upon under this section by the Complainant. One of those UDRP decisions is however discussed further below.
The Respondent, if it used the disputed domain name for offering services relating to online games and gambling, including the game of Baccarat, would likely have a defence. But that is not what it does. As discussed in the previous section, it appears now at least to operate on a PPC basis with related links to sites that offer crystal products which compete with those of the Complainant. It also offers links to card gaming and gambling sites. The disputed domain name is also for sale.
It is not known for how long the Respondent’s associated website has been for sale, nor for how long it has been displaying links to sites offering crystal ware. That is more relevant under the following section. Nothing historical about the website at the disputed domain name has been put before the Panel by either the Complainant or the Respondent.
If the Respondent was offering solely information concerning online gaming and gambling including for the game Baccarat, as earlier indicated, it would have a defence. However, it is quite clear that this is not the limit of its offerings. As it includes the links to third party sites including sites offering crystal ware for sale online, it must follow that at least at the present time, the Respondent cannot rely upon any business or trading operation known as or by reference to the trade mark in suit. Again, it is its actual use that matters. It is to be noted in particular that even with respect to the card games, the Respondent’s website is merely a pass through vehicle.
It is unclear how far back any activities of the Respondent reach whereby it has offered, even on a PPC basis, access to third party gambling or gaming sites, of which the Complainant could raise no complaint. The documents annexed to the Response (Annexes 8 and 9) do not establish this. Recourse to Archive.org and WayBackMachine do not assist either. It is therefore not possible to establish whether the present impugned activities of the Respondent (the links to the Complainant’s competitors’ products) go back to prior to 2010 or have only arisen at around the time of the two Registrant changes in April 2010 and April 2012.
Thus, neither the Complainant nor the Respondent has adequately dealt with this element. Addressing the principle adopted by most UDRP panels that the standard of proof is on balance of probabilities and that an asserting party bears that burden, the Complainant puts forward no direct evidence as to the historical position at registration of the disputed domain name in 2001, nor at any time thereafter when it may have become abusive through wrongful use, and whether in 2010 or in 2012. It has simply not shown when the Respondent began its offerings of links to third party sites selling crystal ware. Then again nor does the Respondent clearly address this. As set out above, Annexes 8 and 9 in the Response document do not assist. The Respondent does however clearly assert, twice in its Response, that it has used the domain name since 2001 so the inference may properly be drawn that, Registrant details notwithstanding, this Respondent has been the owner of and responsible for the disputed domain name and the website at the disputed domain name for some 12 years with a seamless ownership during that time.
The Panel is therefore in a state of equivocation. The consensus view as set out in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), states that the Complainant is at least required to establish a prima facie case of the Respondent having no rights or legitimate interests. Given that the disputed domain name was first registered in 2001, as is well-known to the Complainant, and if it would in fact have been owned by the Respondent at that earlier time, the Complainant would obviously struggle to establish as at that date the grounds under paragraph 4(a)(ii) of the Policy.
However, at the same time the Respondent has adapted its website so as to include as click-through links to third party sites which offer for sale crystal ware of manufacturers who compete with the Complainant. This, even when coupled with certain elements of potentially legitimate use (online gaming or gambling) cannot be considered legitimate use for purposes of the second element of the Policy. The Panel thus finds the extension of the online offerings in this way to be in material breach of the Policy.
The Panel accordingly finds that paragraph 4(a)(ii) of the Policy is made out.
C. Registered and Used in Bad Faith
As to the third ground, this requires that the disputed domain name be registered and used in bad faith. As has previously been said in other UDRP decisions together with earlier decisions of this Panel, both elements must be made out. Accordingly, both registration and use in bad faith have to be established by the Complainant.
The Complainant recognizes this. It relies upon its mark as being a famous mark and draws the inference that the Respondent must have known of this when (and if) it registered the disputed domain name in 2001 and that it did so for some ulterior purpose.
That of course assumes that at the time of registration 12 years ago, the Respondent was using its website much in the manner it does today. There is simply no evidence to the point nor is there any evidence which may be peripheral and from which an appropriate inference could be drawn.
The Complainant also relies upon other registrations which appear to be associated with the Respondent at least to the extent of the same address. It would be unsafe for the Panel to rely upon such material without an inquiry into the circumstances relating to those registrations. They therefore have been put to one side.
More telling are the four other UDRP decisions and in particular the decision in Russell H. Fish v. Robert Farris d/b/a Virtual Clicks, WIPO Case No. D2005-1035. That decision was not directly responded to by the Respondent in this matter. In Russell H. Fish v. Robert Farris d/b/a Virtual Clicks, the panel described the business of the respondent, as no doubt in evidence before the panel in that decision. The Respondent in the present case does not dispute or deny the same business purpose, methodology or model operates in the present case. In that the Respondent has 10,000 or more domain name registrations and has not denied the nature of its business operation as the same as in Russell H. Fish v. Robert Farris d/b/a Virtual Clicks, the inference can be drawn that it is the same or similar. This Panel gratefully adopts the description of the business model as set out in Russell H. Fish v. Robert Farris d/b/a Virtual Clicks.
The Respondent denies registration of the disputed domain name 12 years ago for the purposes of denying the Complainant the same or similar domain name. It says there is no evidence of such a pattern of conduct and that it is an absurd contention. It also says that the fact of the disputed domain name being for sale is irrelevant. It has sold hundreds and hundreds of URLs in its time.
The Respondent also relies upon the decision in Phase Eight (Fashion & Designs) Limited v. OCC Domain Admin, WIPO Case No. D2012-2502, holding that the longer a domain name has been registered the more difficult it is for a complainant to prove registration in bad faith. There the domain name had been registered in April 2004 and the complaint was made in December 2012, some 8 ½ years later. Here, the time is considerably greater by almost 50% more, namely 12 years, again assuming that is when the Respondent first acquired the disputed domain name.
The facts and circumstances in Phase Eight (Fashion & Designs) Limited v. OCC Domain Admin were quite remarkable and not at all analogous to those in the present case. There however, as in the earlier decision that was relied upon by the panel in Phase Eight (Fashion & Designs) Limited v. OCC Domain Admin, there were serious concerns about the delay in complaining (there 8 ½ years, here 12). There were also other disquieting features before the anel in Phase Eight (Fashion & Designs) Limited v. OCC Domain Admin that do not exist here. The panel in that decision also noted that there was no evidence of any attempt to sell the domain name and no evidence of trading by the respondent in domain names for sale or other improper purpose.
It is a concern that in this case the Complainant has put on no direct evidence of the Respondent’s intention or inferred intention when the disputed domain name was initially registered in 2001, if that is when the Respondent first acquired it. Nor has it explained at all the delay. That may be for good reason and it may be that the links presently on the associated website are only of recent origin. The Respondent’s website may originally have been registered and operated purely for providing links to online gaming and gambling including the game of Baccarat. It is however no part of a Panel’s function to speculate. It is for the parties to the Complaint to put on such evidence as they have available to them and seek to rely upon in support of their respective and rival contentions.
The present difficulty causes the Panel to have to decide whether, regardless of purpose at assumed initial registration, subsequent renewals by the Respondent (again assuming initial registration in 2001 and no break in the Respondent ownership) including its current content could constitute registration in bad faith. This would be necessary because, if the Respondent indeed first acquired the disputed domain name in 2001 and has owned it since, there is simply no evidence either directly or otherwise, from which the Panel can conclude that the initial registration of the disputed domain name in 2001 was in bad faith.
The preponderance of UDRP decisions favour the view that subsequent renewals do not of themselves and without more constitute new registrations. However, something more if it exists may do so. That something more can be a change of Registrar, sale or transfer of the disputed domain name, repeated offers for sale. There does not appear to be any evidence in this case that the Registrar details have been changed for such a purpose, indeed there is no evidence of any Registrar change. Nor does it appear as if the ownership of the disputed domain name has changed and nor is there any direct evidence as to when any links to third party sites offering for sale online crystal ware were first loaded on to the website at the disputed domain name.
All that has happened is that a WhoIs search shows the Registrant identity changed in or about April 2010. On original registration the Registrant was VirtualClicks.com. In April 2010 it was changed to Domains by Proxy, Inc. Following Registrar clarification there is now the evidence of a further Registrant change in April 2012. That is all the evidence put before the Panel by the Complainant. Most importantly there is nothing at all to indicate or from which to draw an inference that the change in Registrant was accompanied by the offering of the disputed domain name for sale, the inclusion for the first time of links to the Complainant’s competitors’ products or anything else to enable a finding of bad faith.
Further, the first change of Registrant occurred in April 2010, 3 years before the present Complaint was lodged. Once again the delay has not been explained by the Complainant.
The Registrant change in 2012 has not been explained. In April 2012 the Registrant changed yet again, this time to Virtual Clicks. It appears the Complainant was not aware of this as the original Complaint was against Domains by Proxy, Inc.
The burden is clearly on the Complainant to establish registration and use in bad faith. The Complainant does not adequately address this issue. It has been left to the Panel to consider what approach will therefore be adopted.
On the question of use in bad faith, it is relatively easy to conclude, in light of the current and assumed recent use of the website to enable links to third party websites that offer for sale crystal products, coupled with the current offer for sale of the disputed domain name, that it is now being used in bad faith.
Can the two concepts of registration and use in bad faith elide so that the notion and finding of use in bad faith can support a finding of registration in bad faith?
That has been described in other UDRP decisions as the “Mummygold approach” based on the decision in City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE, WIPO Case No. D2009-0643. This approach was discussed in detail by the panel in the later decision in Eastman Sporto Group LLC v. Jim and Kenny, WIPO Case No. D2009-1688 (the “Eastman Sporto Group decision”). This Panel again gratefully acknowledges the discussion of the Mummygold principle in the Eastman Sporto Group decision.
The Mummygold approach adopts, it seems to this Panel, the concept that in initially registering and subsequently re-registering or renewing registration under paragraph 2 of the Policy, the registrant warrants in an ongoing manner, that the continued registration does not violate the rights of any other party.
The decision in Mummygold has its critics, including the panel in Eastman Sporto Group. Having regard to the particularly persuasive analysis by the panel in that decision this Panel, and with some reluctance, finds that the two stage test or requirements of paragraph 4(a)(iii) of the Policy is indeed a two stage and temporally distinct process. Registration, to be abusive, must be decided as at the date of registration. It is wrong to justify, after the event, registration which may well be legitimate, as illegitimate just because subsequent use (and perhaps many years later) may have become abusive. The two concepts of registration and use in bad faith are not, in this Panel’s view, to be conflated.
That however is not the end of the matter. In the Eastman Sporto Group decision, the panel said of renewals of registration that the introductory clause of paragraph 2 of the Policy sets it applicability as a matter of contract. A registrant provides its undertaking that by applying to register a domain name or by asking a registrar to maintain or renew a domain name registration certain conditions will apply. This, unlike the covenant type interpretation necessary for the Mummygold approach, is a typical once only representation as at a discrete date, or rather in this case at successive discrete dates. Paragraph 2 of the Policy it was noted does not distinguish between the initial date of registration and subsequent request for renewal. As a result, the undertaking by the Registrant by its terms applies as of all such dates including at each date of successive registrations.
Paragraph 2 of the Policy provides:
“2. Your representations. By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.”
The panel in Eastman Sporto Group referred also to an earlier UDRP decision PAA Laboratories GmbH v. Printing Arts America, WIPO Case No. D2004-0338 that:
“… this Panel would have seen no good reason for a renewal not to be considered as equivalent to ‘registration’ in the context of the objectives of the Policy. If the renewal had not been effected the disputed domain name would have lapsed and been available to others. The abusive refreshing of the original registration is an act which this Panel considers should be an act of a kind encompassed by paragraph 4(a)(iii) of the Policy. The benefit of an original good faith registration should not be perpetual to the point where it can cloak successors in title and successors in ‘possession’ long after the original registration would have expired.”
In applying that statement in PAA Laboratories GmbH v. Printing Arts America the panel in Eastman Sporto Group said:
“For the reasons given in the last sentence of the quotation from PAA Laboratories, I doubt that ICANN intended that all renewals could be made without regard to a Registrant’s paragraph 2 undertaking.”
The Panel in Eastman Sporto Group went on:
“If a respondent has registered a domain name for a legitimate business purpose, and another business comes along that chooses to use the same name, should he not be allowed to take advantage of that fact? The answer to that question depends upon how exactly the domain name is used. If he merely intends to continue to do what he has always legitimately done, then it is difficult to see how that continued use could be characterized as use in bad faith.”
In the present case there is some evidence of a change of proprietorship but no other details that might signify conduct or use that tells against the present Respondent. The evidence amounts to no more than current use being abusive, but not necessarily original registration. At best there is only the change in Registrant details in April 2010 and then again in April 2012.
In Eastman Sporto Group and in other UDRP decisions referred to in Eastman Sporto Group the panel there held that the operative words that determined the decision in that case were “the answer to that question depends upon how exactly the domain name is used. If [the respondent] merely intends to continue what he has always legitimately done, then it is difficult to see how that continued use could be characterized as use in bad faith”. The words to be emphasized are “if he merely intends to continue to do what he has always legitimately done”.
Thus the panel there held that the undertaking given by the respondent in terms of paragraph 2 can be construed as applicable not only at the time of original registration but can also be applicable at the time of each successive registration or renewal of registration. By this means, what was once a lawful or legitimate registration may become unlawful or illegitimate or abusive. Each case may necessarily depend upon its own facts. The distinguishing facts in the present case are the now current use by the Respondent (but from an indeterminate date) of the website at the disputed domain name enabling links to third party websites offering products competing with those of the Complainant. In addition to this is the fact that the Respondent does not itself appear to offer any gambling or gaming on its website but those activities are once again by pass through clicks to third party websites. Above all else, is the fact that the disputed domain name is for sale. However, what governs any findings of fact is the correct interpretation of the Policy.
In the view of this Panel, the Policy must be construed in its overall context. Paragraph 2 does not arise in isolation. Moreover, the notes that precede paragraph 1 expressly provide:
2. This policy has been adopted by all ICANN-accredited registrars. It has also been adopted by certain managers of country-code top-level domains (e.g., .nu, .tv, .ws).
3. The policy is between the registrar (or other registration authority in the case of a country-code top-level domain) and its customer (the domain-name holder or registrant). Thus, the policy uses “we” and “our” to refer to the registrar and it uses “you” and “your” to refer to the domain-name holder.”
What is clear from note 3 in particular is that the Policy is “between the registrar … and its customer”. Thus, where the Policy uses the words “we” and “our” it refers to the registrar and where the words used are “you” and “your” it refers to the domain name holder or registrant.
When one then turns to interpret paragraph 2 of the Policy and the representations that are given, it becomes quite clear, with all due respect to any other earlier dissenting UDRP panels, that the references to “you” are references to the domain name holder or registrant and necessarily by logical implication, the warranty that is made to “us” must refer to the registrar.
If there was any doubt about such an approach to interpretation, it appears to be put to rest by the provisions of paragraph 4 of the Policy. Paragraph 4 requires the Registrant to submit to a mandatory administrative proceeding through an ICANN provider whereby a complainant may assert to the applicable provider (WIPO) the various matters and issues that arise under paragraph 4 of the Policy, namely that the disputed domain name is identical or confusingly similar, that the respondent has no rights or legitimate interests in the disputed domain name and that the disputed domain name has been registered and is being used in bad faith.
It may be that there is something of a tension between the notes to the Policy, paragraph 2 of the Policy and the Mandatory Administrative Proceeding provided for in paragraph 4 of the Policy. However, it is the task of this Panel to interpret the Policy according to its words and in its proper context. In those circumstances, this Panel holds that whatever interpretation may be placed upon the wording in paragraph 2 and the representations that are given by the Respondent, they are made to the Registrar and to no-one else. Paragraph 4 sets out the procedure for the Mandatory Administrative Proceeding and what is required to be established by a complainant to make good its complaint. Of those requirements, paragraph 4(a)(iii) requires that the Complainant establish that the disputed domain name “has been registered and is being used in bad faith”.
As indicated at the outset of this section of this Panel decision, these words are conjunctive and require the temporal linking of registration and use in bad faith to co-exist at the same time.
As to evidence of registration and use in bad faith, paragraph 4(b) of the Policy sets out what, if found by the Panel to be present, “shall be evidence of the registration and use of a domain name in bad faith” (emphasis added). The clause relevantly provides:
“b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet uses 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.”
This is a presumption of bad faith predicated on the basis that there is evidence before the Panel that the Respondent did intend to attract visitors to the associated website for commercial gain by creating confusion as to an association between the Respondent and the Complainant, contrary to the fact.
At this point it is important to reflect that the disputed domain name was originally registered as <onlinebaccarat.com> and of course remains so registered. Baccarat, as outlined earlier, is a very well- known card or gambling game. The prefix “online” merely indicates that the game may be accessed or played electronically via the Internet. Such gaming or gambling sites are manifold on the Internet so the name “onlinebaccarat” is merely descriptive of such a service. Of such a service the Complainant could have no basis whatever for complaint, if the service was and remains limited to electronic gaming and gambling.
For the Complainant to be able to rely upon the paragraph set out above in paragraph 4(b)(iv) of the Policy would require the Panel to be satisfied that as at April 2010, when the Registrant changed it was at about the same time as the associated website became to be used intentionally to attract for commercial gain visitors who through the click-through system would be able to access websites of supplies of crystal ware, in competition with the Complainant. Alternatively it could be contended that this was deceptive as indicating an association with the Complainant, contrary to the fact.
In the alternative, the Panel would need to be satisfied that as at the reversion back to the original Registrant in April 2012, it was at or about this time that any offending activity was commenced on the website at the disputed domain name.
Given the descriptive nature of “onlinebaccarat” and that the registration and ownership go back to 2001, there is simply no basis to assume original registration or use shortly thereafter was in bad faith.
However, the facts are clearly more complex as at April 2010 or April 2012 when the Registrant changed. That it was in the name of Domains by Proxy, Inc for some two years is simply unexplained. It is to be inferred that the brief hiatus of some two years was of no particular significance to the Respondent as the Respondent unequivocally claims twice in its Response that it registered the disputed domain name 12 years ago and has “continuously owned <onlinebaccarat.com> for almost 12 years”.
This Panel accordingly assumes that the present Respondent has indeed owned the disputed domain name since its original registration in 2001, including during the two years it was in the name of Domains by Proxy, Inc. That is simply accepting the assertions of the Respondent in its own Response, where it appears on two separate occasions. In light of the unexplained hiatus of two years when the disputed domain name was registered in the name of Domains by Proxy, Inc the Panel is constrained to hold, by virtue of paragraph 4(b)(iv) of the Policy and as explained in the sections above, that at some point in time, not identified by either the Complainant or the Respondent, the Respondent began placing on its associated website links to products of competitors of the Complainant. Such conduct is clearly misleading. It has nothing whatever to do with online gaming or gambling sites and is simply an adjunct offering created at some indeterminate point in time. It is therefore unclear as to when these links to third party crystal manufacturers or vendors were created by the Respondent. It may not matter, for at some time the perfectly legitimate registration and use of <onlinebaccarat.com> with links to gaming and gambling sites became abusive. It may be that this was between 2010 and 2012 when the registration was in the name of Domains by Proxy, Inc. It is not stated in the Policy that the date or time at which an original registration becomes abusive is critical.
The disputed domain name is for sale and the Respondent acknowledges that it owns more than 10,000 domain names and websites. It also acknowledges that it “hosts underdeveloped domain names with professional domain name parking services which pay a share of the advertising revenue they generate” (one assumes to the Respondent). Further, the Respondent states it “has a very active URL sales component to its business. It has sold hundreds and hundreds of URLs during the course of its existence”.
Thus, and by a very slender margin, this Panel concludes that the disputed domain name is now being used for the purposes of attracting business by confusing visitors to the website into thinking the disputed domain name and associated website are in some way associated with the Complainant or alternatively that the Respondent is gaining some commercial advantage by virtue of its links now to third party websites offering for online sale crystal ware but not that of the Complainant.
This aspect of the Complaint is most unsatisfactory given the absence of direct evidence from the Complainant or the Respondent. The Panel has emphasized the evidence put on the Respondent. The Panel also emphasizes that this finding is based upon the present state of the website operated by the Respondent and no findings whatever have been made concerning the historical website down to whatever the point in time may be when the links to other crystal manufacturers first appeared on the Respondent’s website.
The Respondent finally asserts that this is a case of reverse domain name hijacking or abuse of process. For the same reasons as set out immediately above, this contention is rejected.
It is noted that the registration of the disputed domain name is about to fall due for renewal of registration. The Registrar has confirmed that it is in Registrar lock status.
The disputed domain name was registered on April 18, 2001. It is currently in locked status. Under the Expired Domain Deletion Policy (EDDP) where a domain name the subject of a UDRP dispute is deleted or expires during the course of the dispute the complainant has the option to renew or restore the domain name under the same commercial terms as the registrant. It is not known whether the Respondent will wish to renew its registration pending the determination of this dispute. This point has not been addressed by the Respondent. The EDDP provides that there is an auto-renew grace period of up to 45 days during which the disputed domain name is available for de-registration. Accordingly, and consistent with the terms of the Policy, this Panel is of the view that the appropriate course is to allow the procedures under the EDDP to be followed.
For the foregoing reasons, and in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Complainant be entitled to exercise its rights under the EDDP and that the disputed domain name <onlinebaccarat.com> be transferred to the Complainant if this is possible. If not, the Panel orders that the domain name registration be cancelled.
John Katz QC
Date: May 20, 2013