WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Alterna Holdings Corp. d/b/a Alterna Professional Haircare v. Xedoc Holding SA / WHOIS Privacy Service Pty Ltd

Case No. D2013-0495

1. The Parties

The Complainant is Alterna Holdings Corp. d/b/a Alterna Professional Haircare of New York, United States of America, represented by Levinson Arshonsky & Kurtz, LLP, United States of America.

The Respondent is Xedoc Holding SA of Luxembourg, Luxembourg; WHOIS Privacy Service Pty Ltd of Queensland, represented by Paul Raynor Keating, Esq., Spain.

2. The Domain Name and Registrar

The disputed domain name <alterna.com> is registered with Fabulous.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2013. On March 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 12, 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 March 22, 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 March 25, 2013.

The Center verified that 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 March 27, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 16, 2013. The Response was filed with the Center April 15, 2013.

On April 25, 2013, the Complainant sent to the Center a Supplemental Filing in reply to the Response. On May 3, 2013, the Respondent sent to the Center its reply to the Complainant’s Supplemental Filing.

The Center appointed Luca Barbero, John Swinson and Diane Cabell as panelists in this matter on May 10, 2013. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

The admissibility of Supplemental Filings is left to the discretion of the Panel, which needs to bear in mind the requirements under paragraph 10 of the Rules to ensure that the proceeding be conducted with due expedition and both parties be treated equally, with each party being given a fair opportunity to present its case (see, i.a., De Dietrich Process Systems v. Kemtron Ireland Ltd., WIPO Case No. D2003-0484, Credit Europe Bank N.V. v. Peter Yu, WIPO Case No. D2010-0737).

The Panel, in view of the circumstances of the present case, has decided to consider both parties’ Supplemental Filings.

4. Factual Background

The Complainant is a developer and manufacturer of luxury hair care products, which are sold under the trademark ALTERNA.

The Complainant is the owner of several trademark registrations for ALTERNA, including the United States trademark registration Nos. 2067782, filed on July 12, 1995, in class 3; 2410914, filed on December 5, 1995, in class 3; 2243924, filed on December 5, 1995, in class 3; the Australian trademark registration No. 726564, filed on January 29, 1997, in class 3; the Danish trademark registration No. VR199803088, filed on May 26, 1997, in class 3, the French trademark registration No. 97675789, filed on April 27, 1997, in class 3; German trademark registration No. 39707, filed on February 18, 1997, in class 3; Italian trademark registration No. 810027, filed on July 17, 1997, in class 3.

The Complainant operates a web site at “www.alternahaircare.com”, by which it promotes its products online.

The disputed domain name <alterna.com> was originally registered on February 24, 1996 but was acquired by the Respondent in 2006. At the time of the drafting of the decision, the disputed domain name is not pointed to an active web site. However, according to the screenshots submitted by the Complainant, the disputed domain name was redirected in the past to a web page displaying pay-per-click links to third parties’ web sites.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical to its trademarks and trade name and states that, given the Complainant’s strong brand recognition in the hair care industry, Internet users may mistakenly believe that the Respondent’s web site is owned, sponsored by or affiliated with the Complainant.

With reference to rights or legitimate interest of the Respondent in the disputed domain name, the Complainant informs the Panel that it has neither authorized the Respondent to use its trademarks and name in any manner, nor to register, the disputed domain name. The Complainant highlights that it is the only company operating in the United States that has registered ALTERNA in connection with any hair care or cosmetics business and underlines that it has never licensed or granted the Respondent any rights to sell, advertise or promote any of the Complainant’s products.

The Complainant points out that ALTERNA is a fanciful word, coined expressly for the Complainant’s professional line of hair care products and that, therefore, the Respondent cannot argue that it has any legitimate interest in a name that is confusingly similar to the Complainant’s trademark and trade name.

The Complainant asserts that the Respondent’s motivation for registering and maintaining the disputed domain name has been to profit from diverting the Complainant’s customers to competing hair care brands and to unauthorized distributors of ALTERNA goods. The Complainant states that, prior to the notification of the Complaint by the Center, the Respondent was using the disputed domain name for monetary gain in the form of pay-per-click advertising revenue with links to either hair care brands that are direct competitors of the Complainant or to discount hair care web sites that purport to sell genuine ALTERNA products, but actually are links to unauthorized distributors and potentially counterfeit goods. The Complainant submitted a screenshot of the web site corresponding to the disputed domain name dated February 28, 2013, highlighting that, in that date, the web site featured several links promoting the sale of ALTERNA products through an unauthorized distributor at “discount-beauty.com” and various competing hair care lines.

The Complainant asserts that the use of a domain name deceptively similar to a trademark to obtain click-through-revenue and to divert users to the Respondent’s web site, or to a web site of associated parties, is found to be bad faith use.

The Complainant also states that, since the Respondent is using the disputed domain name to divert the Complainant’s customers to non-approved distributors, the Complainant has no means of taking its normal steps to ensure its products meet the company’s very high quality control standards. The Complainant also alleges that the Respondent is profiting from the sale of counterfeit ALTERNA products and wrongfully diluting the ALTERNA trademark.

The Complainant contends that the Respondent registered the disputed domain name in bad faith with the specific intent to disrupt the Complainant’s business lines and to confuse and divert costumers who are seeking genuine ALTERNA products. The Complainant also asserts that the Respondent’s use of the disputed domain name is likely to cause confusion among Internet users and the general public into believing that the Complainant is the source or sponsor of the goods, services or commercial activities at the disputed domain name. The Complainant concludes that the Respondent purposefully registered the disputed domain name with the intent to disrupt the Complainant’s business and to commercially exploit ALTERNA trademark for its own benefit.

The Complainant also points out that the Respondent is responsible for the contents published on the web site corresponding to the disputed domain name, even though the Respondent has no direct control over the sponsored links appearing on an automatically generated basis, and asserts that the Respondent’s use of advertising sponsored links is evidence of the Respondent’s bad faith registration.

The Complainant alleges that the Respondent has engaged in the business of purchasing multiple domain names with no demonstrated legitimate use and informs the Panel that a WhoIs database search conducted on March 25, 2013 showed that the Respondent’s name is associated with 346 domain names.

B. Respondent

The Respondent objects to the Complainant’s trademark but acknowledges that the UDRP is not an appropriate forum to challenge underlying registration rights. The Respondent neither waives any claim as to the validity of the asserted trademark nor admits that the disputed domain name infringes upon or conflict with any legitimate rights of the Complainant or that the Respondent lacks legitimate interest or acted in bad faith.

The Respondent states that the pre-existence of a trademark has no bearing on the Respondent’s legitimate interest and that it does not impart constructive notice, since the Complainant operates in the United States while the Respondent is in Luxembourg with no connections to the United States.

The Respondent also states that the documents submitted by the Complainant to support its claim that the Complainant’s trademark is famous or so well known that it should have been known to Respondent when Respondent acquired the disputed domain name in 2006 (two references to online publications) are not relevant to the date of registration since they are dated in early 2013. More pointedly, the 2013 Huffington Post note defies any claim to fame since the first line states: “Katie Holmes has signed with a little-known haircare company”.

With reference to the term “alterna”, the Respondent points out that it is the third person conjugation of the common Spanish verb “alternar” and it is also used in English corresponding to “alternate” or “alternative”, being widely used for all manner of purposes, none of which related to the Complainant or its business.

In particular, the Respondent highlights that:

i) a Google search for “Alterna” excluding the results pertaining the Complainant shows over 20.4 million results, while a Google search including the ones related to the Complainant reflects less than 1% more results;

ii) the USPTO shows 59 different trademark registrations for ALTERNA, including trademarks for finance, venture capital, television, gift cards, and comics;

iii) the OHIM Database shows over 207 trademarks containing the term “alterna” and 11 which are exactly corresponding to “Alterna”;

iv) a search of DomainTools.com shows over 161,000 domain names contain the term “alterna”, of which 21,000 start with that term;

v) the Complainant’s Community Trademark application is being opposed because both the mark and the goods conflict with a third party trademark.

In light of the above, the Respondent concludes that ALTERNA is not an exclusive source identifier for the Complainant and renders any degree of notoriety unobtainable.

As to the use of the disputed domain name highlighted in the screenshot dated 2013 submitted by the Complainant, the Respondent states that the singular example raised by the Complainant was an anomaly caused by the Complainant’s recent and sudden online advertising activity. The Respondent also indicates that it was not aware of the issue until March 1, 2013 when it located a cease and desist letter of the Complainant during a routine review of spam filtered email and, within two days, removed the name servers from the disputed domain name until it could be assured that conflicting use would not continue. The Respondent alleges that, aside from the short period identified by the Complainant, it has not found any examples of a conflicting use, since the use has been wholly generic in nature and consistent with the general nature of the word comprised in the disputed domain name.

The Respondent agrees with the Complainant that a domain owner is obligated to prevent pay-per-click results which conflicting with known trademarks so as not to unfairly target a trademark holder, but underlines that, however, pay-per-click usage which does not conflict with this obligation is legitimate.

As to the Complainant’s allegations of dilution and tarnishment, the Respondent states that they are insufficient since i) the Complainant’s trademark is not famous; ii) trademark rights are limited both jurisdictionally and to the specific goods and services for which they were registered; iii) the Complainant’s above-mentioned allegations fundamentally shift the burden to the Respondent in contravention of the Policy.

The Respondent also states that the use of a WhoIs privacy service is not illegitimate and highlights that the Respondent is making a fair use of the disputed domain name in the pay-per-click industry without intent to misleadingly divert consumers, since it is not using the disputed domain name to target the Complainant or any asserted “value” in the Complainant’s trademark. The Respondent concludes that, given the nature of the disputed domain name, the mere possibility of confusion is not sufficient to show an illegitimate intent on behalf of the Respondent to divert consumers.

As to bad faith at the time of the registration, the Respondent asserts that the Complainant provided no evidence relevant to the intent of the Respondent in August 2006, when the disputed domain name was registered by the Respondent, and highlights that a finding of bad faith requires evidence that the Respondent specifically targeted the Complainant, having registered the disputed domain name because of its asserted trademark value. The Respondent also reiterates that the disputed domain name is constituted by a single word of common usage supported by wide-spread third-party non-conflicting use.

The Respondent expressly denies having heard of the Complainant or of its trademark prior to the learning of this dispute and underlines that the Complainant operates in the United States, while the Respondent is located in Luxembourg and does not do business in the United States. The Respondent also states that the United States Alexa reports show that traffic to the Complainant’s web site originates almost entirely from the United States and there is no basis to conclude that the Respondent should have been aware of the Complainant when it acquired the disputed domain name.

The Respondent states that the Complainant asserted bad faith registration based upon alleged bad faith use, while the Complainant should have proved both and may not rely upon current use to sully the Respondent’s intent at registration.

The Respondent also asserts that laches bars the Complaint, since the Respondent held the disputed domain name for almost seven years and at no time prior to 2013 did Complainant make any effort to “recovery” it.

The Respondent also requests that the Panel make a finding of Reverse Domain Name Hijacking.

6. Parties’ supplemental filings

A. Complainant

The Complainant states that a search on “www.archive.org” web site shows instances of conflicting use that the Respondent did not include in its Response and attaches to the Complaint screenshots taken from Archive.org dated April 2006 and August 28, 2008, showing that links targeting the Complainant’s branded products were published on the correspondent web site. The Complainant, therefore, reiterates that such use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.

The Complainant also contends that, given the Respondent’s high degree of sophistication and extensive business experience in pay-per-click advertising and as an owner of hundreds of domain names, it is unlikely that the Respondent was unaware of the Complainant and its business lines when it purchased the disputed domain name. The Complainant underlines that the Respondent’s “willful blindness” is no defense to the Respondent’s bad faith registration, in light of the Respondent’s history and status as a professional domain name registrant.

The Complainant also asserts that the Respondent has engaged in a repeated pattern of abusive domain name registrations as it has been involved in numerous disputed under the Policy (involving the domain names <metart.com>, <lavalamp.com>, <kaleidoscope.com> and <paydayamerica.com>), where it has been found that it was using the ownership of a domain name to take advantage of another company business.

The Complainant also reiterates that the Respondent must be deemed responsible for the contents published on the web site corresponding to the disputed domain name and alleges that the Respondent’s use of sponsored advertising links demonstrates awareness of the use of the disputed domain name to target the Complainant in 2006.

As to the doctrine or defense of laches, the Complainant contends that it does not generally apply under the UDRP since a delay in bringing a complaint does not itself prevent a complainant from being able to succeed under the UDRP where it can establish a case on the merits under the requisite three elements. In addition, the doctrine of laches does not apply since the Respondent has advanced no credible argument that it has, or will, suffer injury because of any delay by the Complainant in initiating this proceeding.

As to the Respondent’s request for a finding of Reverse Domain Name Highjacking, the Complainant states that it has to be denied since the disputed domain name was being used, as of April 8, 2006, to specifically target the Complainant and the Complainant has provided evidence fulfilling the three requirement of UDRP.

B. Respondent

The Respondent states that the Complainant’s supplemental filing is improper since no exceptional circumstances have been shown that could justify its submission.

With reference to the screenshots submitted by the Complainant, the Respondent points out that:

- the screenshot dated April 2006 pre-dates the Respondent’s registration and is irrelevant since a notice at the top of the page stated it was not an historical record (“The Wayback machine does not have this URL. Here is the page from the Live web”);

- the screenshot dated August 28, 2008 apparently does appear in the Archive.org calendar, but, even if considered, such single entry does not support a finding that the registration was undertaken to target the Complainant and does not constitute an exceptional circumstance sufficient to support the Complainant’s Supplemental Filing. The Respondent apologizes for having missed this single entry in the 138 calendar entries and 739 data points included in the Archive.org database and states that, such use does not support a finding that the registration was undertaken to target the Complainant in 2006. The Respondent also states that the first historical record for the Complainant’s own web site is dated August 2008 and asserts that the pay-per-click page appeared on the web site published at the disputed domain name, if at all, because of activity surrounding the Complainant’s web site launch in August 2008.

The Respondent reiterates that the Complainant’s trademark is not famous, since the evidence submitted by the Complainant and collected by the Respondent shows the contrary.

As to the Complainant’s contention of a Respondent’s pattern of bad faith registration, the Respondent states that the presence of three adverse rulings noted by the Complainant does not show a pattern of abusive conduct, highlighting that i) the three instances noted by Complainant were each hotly contested disputes each involving different facts and ii) the Respondent has prevailed in the majority of the UDRPs disputes, including cases involving the domain names <kaleidoscope.com> (twice), <prime.com>, <cheapautoinsurance.com>, <elearners.com>, <six.com>, and <shoppers.com>.

The Respondent reiterates that the Complainant has provided no explanation as to the reasons why it did not start recovering activities of the disputed domain name for almost seven years and highlights that it purchased the domain name <alternahaircare.com>, at which it operates its main web site, from a large portfolio holder only in August 2008.

The Respondent rebuts the Complainant’s assertion that the Respondent will suffer no harm, stating that the disputed domain name has now a value of at least $36,000, and remarks that panel decisions have regularly held that long delays weaken any argument of bad faith for the reason that the passage of time erodes the argument that the original registration was in bad faith or that use is actually conflicting or dilutive of trademark rights.

The Respondent concludes that the Complainant’s Supplemental Filing provides further support for a finding of Reverse Domain Name Hijacking, as the Complainant, having been alerted by the Respondent of its failure to address bad faith registration, chose to present a 67 page Supplemental Filing which attempts to re-argue and establish credibility based upon an irrelevant entry misrepresented to be from April 2006 and a single historical 2008 page post-dating registration by two years.

7. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant 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. Identical or Confusingly Similar

As mentioned in the factual section, the Complainant has provided evidence of ownership of several trademark registrations for ALTERNA (word mark) in the United States and in several countries of the world.

The Panel is, therefore, satisfied that the Complainant has established rights in the trademark ALTERNA for the purpose of paragraph 4(a)(i) of the Policy.

Based on a visual or aural comparison of the trademark ALTERNA with the alphanumeric string in the disputed domain name <alterna.com>, the Panel finds that the disputed domain name is identical to the Complainant’s trademark ALTERNA.

Indeed, it should be taken into account the well-established principle that the generic top level domain may be excluded from consideration as being merely functional component of a domain name. See i.a. Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429, stating: “the specific top level of the domain name such as ‘net’ or ‘com’ does not affect the domain name for the purpose of determining whether it is identical or confusingly similar”; and Chevy Chase Bank, F.S.B. v. Peter Ojo, WIPO Case No. D2000-1770, where it was found that “the accused domain name <chevychasebank.org> is legally identical to Complainant’s trade name CHEVY CHASE BANK.” See also, among others, Priority One Financial Services Inc. v. Michael Cronin, WIPO Case No. D2006-1499 and Laramar Group, L.L.C. v. XC2, WIPO Case No. D2006-0617.

In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is identical to the trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

In light of the Panel’s finding in the following paragraphs, it is not necessary for the Panel to come to a decision in this regard.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, 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 the disputed domain name in bad faith:

(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.

With reference to the bad faith registration requirement, the majority of the Panel finds that, in view of the evidence on records, the Complainant has not provided sufficient evidence demonstrating that, at the time of the registration of the disputed domain name, the Respondent was actually aware of the Complainant and of its trademark rights and specifically intended to target the Complainant’s trademark.

As mentioned in the paragraphs above, the Complainant contends that the Respondent purposefully registered the disputed domain name in bad faith with the intent to disrupt the Complainant’s business lines and to confuse and divert costumers who are seeking genuine ALTERNA products.

To support its assertions, the Complainant states that i) the trademark ALTERNA consists of a fanciful word coined expressly for the Complainant’s professional line of hair care products; ii) the Respondent’s use of advertising sponsored links featuring the trademark ALTERNA, as shown in the historical web site records retrieved through Archive.org, is evidence of the Respondent’s bad faith registration; iii) given the Respondent’s experience in pay-per-click advertising and as an owner of hundreds of domain names, it is unlikely that the Respondent was unaware of the Complainant and its business lines when it purchased the disputed domain name, the Respondent’s “willful blindness” being no defense to the Respondent’s bad faith registration; and iv) the Respondent has engaged in the business of purchasing multiple domain names with no demonstrated legitimate use.

With reference to the first point raised by the Complainant, the Panel acknowledges that the word “alterna” has no meaning in English, while, as indicated by the Respondent, it corresponds to the third person conjugation of a commonly Spanish verb, “alternar” (and indeed also corresponds to an Italian word “alternare” also meaning “alternate”).

Even though the Respondent has not explained the reasons why it opted to register the disputed domain name, identical to the Complainant’s trademark, and has merely redirected it since its acquisition to a parking page with pay-per-click links, the majority of the Panel finds that others elements need to be considered in the assessment of bad faith registration.

Firstly, based on the documents and statements submitted by the Respondent, that the Panel carefully examined, several companies besides the Complainant have been using ALTERNA as a trademark to identify their goods or services not interfering with the Complainant’s business.

In addition, the Complainant, which is based in the United States, has failed to prove that the Respondent, located in Luxembourg, was actually aware of the Complainant’s trademark at the time of the registration. Moreover, the majority of the Panel finds that the Complainant has not submitted sufficient evidence to show that the trademark ALTERNA was well-known at the time the Respondent acquired the disputed domain name. Indeed, the 2013 Huffington Post note, submitted as evidence by the Complainant, is not apt to prove the Complainant’s well-known character, since the first line states that the actress Katie Holmes has signed with a "little-known haircare company”.

Furthermore, among the numerous historical records of “www.alterna.com” submitted by the Parties, only two screenshots, taken in 2013 and on August 28, 2008, show links related to ALTERNA, while on the screenshot from Archive.org dated 2006 – when the disputed domain name was registered by the Respondent - it is expressly stated that a historical record of how the web site appeared at that time was not available.

In light of the above, even assuming that the Respondent, as a professional in domain registrations, would have need to perform trademark searches before choosing the domain name to register, the majority of the Panel finds that there must be sufficient evidence that the Respondent had the intent to target the Complainant and its marks or goodwill in order to capitalize on them (Telephone and Data Systems, Inc. v. Protected Domain Services / Daniel Wang, WIPO Case No. D2011-0435, Bolsa de Valores de Sao Paulo S.A. - BVSP v. Domainsource.com Inc., WIPO Case No. D2008-1362, Ancien Restaurant Chartier v. Tucows.com Co, WIPO Case No. D2008-0272, WIPO May 6, 2008). See also F. Hoffmann-La Roche AG v. Domain Admin Tucows.com Co., WIPO Case No. D2006-1488.

The Panel recognizes that the use of the disputed domain name to publish links related also to ALTERNA hair care products highlighted by the screenshot taken in 2013 and by the 2008 historical web site record submitted by the Complainant could have mislead Internet users as to the source, sponsorship or affiliation of the correspondent web site by the Complainant.

However, based on the documents and statements submitted by the parties in the present proceeding, the majority of the Panel finds that the evidence provided as to the use of the disputed domain name in 2008 and in 2013 is not sufficient to infer that the Complainant was aware of the Complainant’s trademark and registered the disputed domain name to specifically target the Complainant’s trademark.

Regarding the laches doctrine invoked by the Respondent, the Panel agrees with the consensus view of the WIPO Panelist that it does not apply to UDRP proceedings. However, the Panel acknowledges that bringing a complaint after so many years could result in a more difficult proof of the bad faith registration requirement.

As stated in a similar decision involving the same Respondent (Youi Pty Ltd. v. Xedoc Holding SA, WIPO Case No. D2012-1329), the majority of the Panel finds that this is a borderline case and not a clear case of cybersquatting. This Decision is based on a limited evidentiary record and it is of course open to the parties to pursue the matter in an appropriate Court, should they wish to do so.

For the reasons detailed above, the request for a finding of Reverse Domain Name Hijacking is denied.

8. Decision

For the foregoing reasons, the Complaint is denied.

Luca Barbero
Presiding Panelist

Diane Cabell
Panelist

John Swinson
Panelist (Dissenting)

Date: June 11, 2013

Dissenting Opinion

With respect, I disagree with the majority in relation to the third element of the Policy. The majority finds no bad faith registration in this borderline case. I respectfully disagree.

It is true that the Complainant did not prove that the Respondent had actual knowledge of the Complainant or its trademark rights at the time it purchased the disputed domain name. As other panelists have recognized, this is not surprising, because:

“… in a Policy proceeding, without provision for discovery and live testimony, a complainant has little or no opportunity to obtain evidence routinely available in civil litigation but ordinarily within the control of the respondent. For this reason bad faith may be proven inferentially.” Public Service Electric & Gas Company v. Definitive Sports Management LLC, WIPO Case No. D2012-0617 (“the PSEG Decision”).

The PSEG Decision’s discussion of bad faith is instructive. In that case, the Panel found that the Respondent’s conduct did not amount to bad faith registration or use. But is also recognizes the concept of “willful blindness”, where the respondent is a professional domain name registrant who turns a blind eye to third party trademark rights.

Here, the Respondent is a well-known professional domain name registrant that purchases domain names and operates pay-per-click websites. It has been involved in a number of prior disputes under the Policy, including disputes where the complainant was successful (<metart.com>, <lavalamp.com>, <paydayamerica.com>) and disputes where the Respondent was successful (<kaleidoscope.com>, <gaylive.com>, <shoppers.com>, <cheapautoinsurance.com>, <starmail.com>, <thundervalley.com>).

Similar to the three-member-panel decision in Hydentra, LP. v. Xedoc Holding SA, WIPO Case No. D2008-0454, I find that the evidence suggests that disputed domain name was registered to take advantage of the reputation of the Complainant’s business so as to generate revenue from sponsored searches. The Respondent may not have had actual knowledge of the Complainant, but would clearly have been aware of the traffic that the disputed domain name was generating at the time it decided to acquire the disputed domain name. It would be unbelievable that a sophisticated domain name acquirer such as the Respondent would not have reviewed traffic details and search engine results before valuing and acquiring the disputed domain name.

In my view, this traffic was generated by users looking for the Complainant’s “www.alternahaircare.com” website, but did not enter the full domain name. The fact that the Complainant cannot prove that the Respondent did not actually notice references to the Complainant in such search results is not fatal to the Complainant’s case.

The Respondent is a sophisticated online business, with knowledge of trademark and cybersquatting legal issues. The Respondent could have easily conducted online searches from Luxembourg, before acquiring the disputed domain name, that would have returned results about the Complainant, and I believe that it most likely did so.

Moreover, the Respondent’s stated reasons for acquiring the disputed domain name are not believable. The Respondent appears to assert that the disputed domain name was acquired because of its generic value, being a Spanish word. The Respondent did not present any evidence that in the period that it owned the disputed domain name that the disputed domain name was used in any way associated with this alleged generic meaning. The Respondent’s website at the disputed domain name was in English, not in Spanish, and at no time related to the generic meaning of the domain name.

I consider that “alterna”, when considered in the context of a website in English (which is the context here) is not a generic term or a word in an English dictionary. It is a fanciful term, and it is the trademark of the Complainant.

Moreover, as the majority notes, there is evidence that shows that the Respondent’s website at the disputed domain name (on at least two occasions) included links to the Complainant’s website. A business that monetizes domain names must take care to ensure that it does not profit from the domain name in its trade mark sense, which is what has occurred here. This is evidence of bad faith use.

I do not need to rely upon use of a privacy service in relation to my findings of bad faith.

The majority did not consider the second element of the Policy. In light of my findings above, I consider that the Complainant presented a prima facie case on this element that the Respondent has not rebutted. A pay-per-click website that includes links to the website of the relevant trademark owner’s website does not, in my view in the circumstances of this case, give the Respondent the necessary rights or interests within the second element of the Policy.

Accordingly, I would find for the Complainant.

John Swinson
Panelist (Dissenting)

Dated: June 11, 2013