WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fortrend Group LlC v. Rami Atallah

Case No. D2013-1377

1. The Parties

The Complainant is Fortrend Group LlC of Port Orange, Florida, United States of America (“US”), represented by Kotzker Law Group, US.

The Respondent is Rami Atallah of Mont Royal, Quebec, Canada, represented by ROBIC, LLP, Canada.

2. The Domain Name and Registrar

The disputed domain name <prive.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 August 2, 2013. On August 5, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 6, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 9, 2013

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 1, 2013. An informal communication from the Respondent was received by the Center on September 3, 2013, after the Response due date, stating that the Respondent had just received the Complaint in the mail and asking for a 30-day extension for its attorney “to look into the case more closely”. On September 5, 2013 the Center received a communication from solicitors for the Respondent asking to be included in all communications from the Center.

The Center appointed Adam Taylor as the sole panelist in this matter on September 9, 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.

On September 9, 2013, the Respondent’s representative emailed the Center asking that it not transmit the file to the Panel until the Complainant had responded to the Respondent’s request for a 30-day suspension of the proceedings to give the parties more time to discuss settlement. The Center responded on September 9, 2013, indicating that it had not been informed by either party of a possible settlement and had already appointed the Panel and transmitted the case file.

On September 10, 2013 the Panel issued the Procedural Panel Order No. 1.

In response to Procedural Panel Order No. 1, the Complainant indicated on September 10, 2013, that it did not consent to the Respondent’s suspension request.

On September 13, 2013, the Respondent requested an extension of time to file a late Response.

On September 16, 2013 the Panel issued the Procedural Panel Order No. 2.

In response to Procedural Panel Order No. 2, the Complainant indicated on September 17, 2013, that it did not consent to the Respondent’s request for an extension of time to file a late Response.

On September 20, 2013, the Center informed the parties that the Panel had decided not grant the extension request and that reasons would be given in the decision.

4. Factual Background

The Complainant has traded under the name “Privé” since September 30, 2008. It operates sells sample / second-hand branded clothing, shoes, handbags and similar products both online and through various “retail consignment stores” in the US. The Complainant’s main business location is Florida.

The Complainant’s website is located at “www.theprive.com”.

The Complainant owns US trade mark no. 4303477, for PRIVÉ in international class 35, filed October 25, 2010, and showing a first use date of September 30, 2008. The certificate records that the English translation of “privé” is “private”.

The disputed domain name is shown in the WhoIs has having been registered on December 1, 1996.

On April 20, 2011, a Canadian company called 9228-4330 Quebec, Inc., said to be connected with the Respondent (see section 6D below), applied for a Canadian trade mark for PRIVÉ. The Complainant filed an opposition on August 7, 2012 on unspecified grounds. On November 29, 2012, the opposition was decided in favour of the Complainant and the Canadian trade mark application was ordered to be abandoned.

On August 10, 2011, 9228-4330 Quebec, Inc., filed an opposition to the Complainant’s above-mentioned US trade mark on grounds of “abandonment due to nonuse”. The opposition was dismissed for failure to prosecute on February 6, 2013 and the Complainant’s mark thereafter proceeded to registration on March 19, 2013.

On July 11, 2013, the Complainant’s attorney emailed the Respondent advising that it has been instructed to pursue acquisition of the disputed domain name, now that the US and Canadian trade mark oppositions had been resolved. The attorney stated that this could be accomplished either through a voluntary transfer or else a UDRP proceeding seeking mandatory transfer of the disputed domain name due to “previous and ongoing trademark infringement committed through your use of the PRIVE mark”. The attorney added that that its client would be willing to consider a reasonable offer for the disputed domain name but that “the price you offered when we originally negotiated several years ago is not acceptable”. There is no evidence indicating that the Respondent replied to that email.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The disputed domain name is confusingly similar to the Complainant’s trade mark.

Rights or Legitimate Interests

The Respondent has no legitimate rights or interests in the disputed domain name.

The Respondent has no connection with the Complainant or its products or services and the Complainant has not authorised the Respondent to use its mark.

The Respondent has never obtained any trade mark registrations for PRIVÉ, nor could it do so given the Complainant’s prior and exclusive rights to this mark.

The Respondent’s misappropriation of the PRIVÉmark for use in the disputed domain name is no accident. The Respondent chose to register the mark to capitalise on consumer recognition of the Complainant’s mark and to draw Internet users to its own website. Nor do Respondent’s activities constitute a fair use of the disputed domain name.

Registered and Used in Bad Faith

The Respondent is no longer operating his site at the disputed domain name as this was closed down in February 2012.

The Complainant has attempted to contact the Respondent several time to have the disputed domain name transferred to the Complainant and has even attempted to purchase it as the disputed domain name is no longer in use. However, the Respondent has chosen to ignore the Complainant.

Due to similarity between the disputed domain name and the Complainant’s domain name, the disputed domain name is likely to deceive the public as to the affiliation, connection or association of the Respondent with the Complainant, even when the disputed domain name is not in use.

Upon information and belief, the Respondent has no intention to resume its website or trade mark use associated with Privé.

The disputed domain name is a passive holding. The disputed domain name has no value to the Respondent apart from the goodwill and reputation associated with the Complainant’s mark.

The redirecting of the disputed domain name to parked web pages with sponsored links is not a bona fide offering of goods and services and is not a legitimate noncommercial or fair use of these domain names. The purpose of registration of the disputed domain name is to exploit, for commercial gain, Internet traffic destined for the Complainant. It is well established that use of a parking page with sponsored links is strong evidence of bad faith. The use of the disputed domain name disrupts Complainant’s business because Internet users searching for the Complainant’s products and services may be diverted from Complainant’s websites and redirected to competitor websites; in this case the Respondent.

Consumers expect to find a trade mark owner on the Internet at a domain name address composed of the organisation’s name or mark.

B. Respondent

The Respondent did not file a Response within the Response due date.

6. Discussion and Findings

A. Late Response

As indicated in Section 3 above, the Respondent has sought an extension of time to file its Response.

The gist of the Respondent’s application is that the Respondent did not open the Center’s email notifying the Complaint, which was sent on August 12, 2013, as the Respondent thought that it was spam or a scam, similar to the unsolicited correspondence relating to the opportunity to register the domain name of a company’s business in China. The Respondent says he left for his summer holiday on August 17, 2013, and only received the couriered version of the Complaint notification when he returned from holiday on September 2, 2013 - and so after the Response deadline of September 1, 2013.

UDRP panels do not tend to grant such extension requests lightly. The panel is required to consider whether there are exceptional circumstances justifying the extension.

The Respondent acknowledges receipt of the Complaint when it initially served by email and well before the Response deadline. The Respondent does not say that he had insufficient time to deal with it before departing on holiday but, rather, he claims that he did not appreciate its significance at all. However, the Panel notes that the Center’s notification of the Complaint is unlike to have come to the Respondent “out of the blue”:

1. There was a previous history of trade mark skirmishing between the parties to this proceeding – see below.

2. There is evidence that the Complainant’s attorney emailed the Respondent on July 11, 2013, warning of a potential UDRP complaint if the matter is not resolved. That email was sent to the Respondent’s email address via which the Respondent acknowledged later receiving the Complaint from the Center.

3. On August 7, 2013, the Center emailed the Complainant’s attorney regarding a deficiency in the Complaint. That email was copied to the same Respondent email address and there is no bounce-back message on the file, whereas there is one for another email address to which that communication was copied.

4. The reply from the Complainant’s attorney to the Center dated August 9, 2013, is also shown as having been copied to the same Respondent email address.

However the Respondent makes no mention of any of these previous communications and dealings and so does not explain why none of those matters alerted him to the possibility of this UDRP Complaint being filed in relation to the disputed domain name. The Panel is therefore not entirely convinced by the Respondent’s explanation and rejects the Respondent’s request. On the basis of the evidence before it, it seems to the Panel that the Respondent had good reason to anticipate the arrival of the Complaint and to appreciate its significance when it did come.

A party wishing to persuade a panel to exercise its discretion on the grounds of exceptional circumstances would be well advised to put forward a detailed and frank explanation of those circumstances, including by addressing any factors which may be adverse to its position.

B. Identical or Confusingly Similar

The Complainant has rights in the mark PRIVÉ by virtue of its registered trade mark for that term.

The disputed domain name is confusingly similar to that mark as it differs only by omission of the accent on the “e”.

The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.

C. Rights or Legitimate Interests

Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0”) explains the consensus view concerning the burden of proof regarding lack of rights or legitimate interests in UDRP cases:

“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of 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, a 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.”

As to paragraph 4(c)(i) of the Policy, given the gaps in the Complainant’s case relating to the Respondent’s use of the disputed domain name, explained below, it is questionable whether the Complainant has established even a prima facie case regarding lack of use of the disputed domain name for a bona fide offering of goods or services.

However, it is unnecessary to reach any conclusion on this point in light of the Panel’s conclusion below under the third element of paragraph 4(a) of the Policy.

D. Registered and Used in Bad Faith

The Complainant makes a general assertion that the Respondent’s misappropriation of its mark to use in the disputed domain name was “no accident” and that its purpose was to capitalise on consumer recognition of the Complainant’s mark.

However, the WhoIs information shows that the disputed domain name was registered on December 1, 1996. If the Respondent was the party who first registered the disputed domain name in 1996, then the registration occurred some twelve years before the Complainant says it started trading under the name “Privé” and fourteen years before the Complainant applied for its registered trade mark, and so the Respondent could not at that time have contemplated the Complainant's then non-existent right.

Paragraph 3.1 of WIPO Overview 2.0 states the following consensus view:

“Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date …, when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right.”

It is true that the consensus view that paragraph 4(a)(iii) of the Policy requires bad faith at the time of registration of the domain name was challenged in a couple of UDRP decisions in 2009: City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE; WIPO Case No. D2009-0643 and Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786. However, numerous panel decisions since then have reasserted the long-held and consistent view of UDRP panels (with the concomitant benefit of clarity and certainty for parties to UDRP cases) that paragraph 4(a)(iii) of the Policy means what it appears to say, namely that the conjunctive “and” indicates that there must be bad faith both at the time of registration and subsequently. See, e.g., Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011 and the cases listed therein.

The Complainant is required to prove its case on the balance of probabilities - see paragraph 4.7 of WIPO Overview 2.0. This is notwithstanding the Respondent’s failure to respond – see paragraph 4.6 of WIPO Overview 2.0.

If it is the Complainant’s case that the Respondent acquired the disputed domain name after the Complainant had acquired rights in the name “Privé”, then it is the Complainant’s responsibility to make this argument and supply supporting evidence. This is typically done by means of archive WhoIs printouts showing evolution of ownership of the disputed domain name. However, the Complainant does not even address the issue of when the Respondent acquired the disputed domain name, let alone supply supporting evidence. The Complaint must therefore fail on this ground alone.

According to the record before the Panel, the earliest date on which the Respondent is shown to be the owner / controller of the disputed domain name is August 10, 2011. This is the date on which a Canadian company called 9228-4330 Quebec, Inc., filed an opposition to the Complainant’s US trade mark, in the course of which it stated that it was the owner of the disputed domain name. The Complainant describes this Canadian company as the “brand owner” of the Respondent. In the circumstances, the Panel thinks it reasonable to infer that the company is connected with the Respondent.

However, even if the Complainant had proved that the Respondent had only acquired the disputed domain name on or about August 10, 2011, so putting the acquisition date at its most favourable to the Complainant and after the first establishment of the Complainant’s rights, the Complaint would still have failed for the following reasons.

First, the disputed domain name consists of the generic term “privé”, meaning private. There is therefore nothing in the disputed domain name itself which suggests that the Respondent selected it with reference to the Complainant.

Second, the Complainant gives no detail whatever, let alone any supporting evidence, as to the scale of its own business. For example, the Complainant does not say how many “retail consignment stores” it operates. There are no statistics indicating the extent of its online or other operations. There is no information as to turnover or marketing spend. There is no explanation of the kinds of marketing undertaken and no examples of the Complainant’s marketing of its trade mark.

Nor is there anything indicating the extent of the Complainant’s activity, if any, in Canada where the Respondent is located. It is possible that such information may have featured in the Complainant’s opposition to the Respondent’s Canadian trade mark application but the Complainant has not provided those documents in this case. It is clear, at least, that the Complainant does not operate any retail consignment stores in Canada; it describes its stores as being located in the US.

In short, the Complainant has not demonstrated a level of, or indeed any, activity by reference to its name which would give reason to think that that, if the Respondent acquired the disputed domain name as late as August 2011, it did so with knowledge of the Complainant or its mark.

Third, there is nothing to show that the Respondent has used the disputed domain name in a manner which targeted the Complainant in some way, e.g., for a competing business, and which might have indicated that the Respondent registered the disputed domain name for a malign purpose vis-à-vis the Complainant.

The above-mentioned notice of opposition to the Complainant’s trade mark dated August 10, 2011, states, but without giving details, that the disputed domain name was then being used for the provision of online retail services under the mark PRIVÉ. Furthermore, the Complainant has produced an email from “[…]@prive.com” dated February 17, 2012, with the subject-line “Closing Day”. It is worth reproducing the email in full:

“Dear Member,

Thank you for shopping at PRIVÉ.

While the past year has seen many accomplishments, we have made the decision to close the company. Several factors have played a part in this decision - most importantly, the overall level of service offered to our members.

The website will close on Friday, February 17th 2012 at 5PM EST. AI! outstanding orders will be filled and our customer service help line will remain open until the end of February, 2012.

Should you have any questions or concerns, please do not hesitate to contact us at […]@prive.com.

Thank you,

The PRIVE team.”

When checked by the Panel, the disputed domain name did not resolve to a website but it is clear from the above that the Respondent formerly used the disputed domain name for some form of online retailing activity.

However, the Complaint skirts carefully around the issue of the Respondent’s usage of the disputed domain name. Although the Complainant refers to the Respondent’s former use of the disputed domain name on a number of occasions, it does not explain exactly what that usage was. It seems unlikely that the Complainant, which has engaged in a number of trade mark skirmishes with the Respondent and which has evidently gone to the trouble of getting itself onto the Respondent’s mailing list, is unaware of the nature of the Respondent’s former business at the disputed domain name. The Panel suspects that the Complainant has avoided the subject because to reveal it would suggest that the Respondent registered the disputed domain name for the purpose of a business unrelated to the Complainant and its area of trade, perhaps one referable to the generic meaning of the disputed domain name. In any event, there is no evidence before the Panel indicating any illicit usage of the disputed domain name on the part of the Respondent.

For the above reasons, the Panel considers that the Complainant has failed to establish registration in bad faith, irrespective of the date when the Respondent did in fact acquire the disputed domain name,

The Complainant asserts that the disputed domain name is a “passive holding”. The Complainant focusses on the cessation of the Respondent’s previous (unexplained) use of the disputed domain name, observing amongst other things that the Respondent ignored approaches from the Complainant’s attorney seeking transfer of the disputed domain name, including purchase offers, notwithstanding that the website was no longer in use. The Complainant asserts its belief that the Respondent has no intention to resume its website or trade mark use associated with PRIVE. The Complainant also suggests that the disputed domain name has no value to the Respondent apart from the goodwill and reputation associated with the Complainant’s mark, presumably because the Respondent is no longer using it.

The Complainant entirely misunderstands the concept of passive holding, which is explained at paragraph 3.2 of WIPO Overview 2.0 as follows:

“Consensus view: With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa. Some panels have also found that the concept of passive holding may apply even in the event of sporadic use, or of the mere "parking" by a third party of a domain name (irrespective of whether the latter should also result in the generation of incidental revenue from advertising referrals).”

So the principle of passive holding enables a panel to consider all the circumstances of the case and to draw appropriate inferences about bad faith registration and use in cases where there is no active use, or at best sporadic use, of the domain name. Whereas the Complainant wrongly implies that the principle can arise even where there has been previous active use of the disputed domain name and that it entails some sort of separate exercise whereby the nature of that usage, and indeed the circumstances of registration, are ignored and a complainant’s trade mark rights are simply weighed against the fact that a respondent has later ceased using a domain name.

The Complainant relies in particular on Euromarket Designs, Inc. v. Domain For Sale VMI, WIPO Case No. D2000-1195. But that case involved typical indicators of passive holding, none of which are present here: lack of active use of the domain name, a well-known trade mark and the respondent’s concealment of its identity.

In the Panel’s view, this is therefore not a case of passive holding, as that concept has been developed by previous panel decisions and summarised in WIPO Overview 2.0.

The Complainant further claims that the disputed domain name has been used as a parking page with sponsored links and that the purpose behind registration of the disputed domain name was to exploit Internet traffic destined for the Complainant. The Complainant adds that the Respondent’s activities do not constitute a fair use of the disputed domain name and, in support, it invokes Verizon Trademark Services, LLC v. NA a/k/a NA DomainDevelopments.com, NAF Claim No. FA616307, which the Complainant summarises as holding that “respondent’s use of the domain name <verizoncenter.com> for a website featuring links to competing products and services is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name”. The Complainant thereby hints at similar illicit usage of the disputed domain name by the Respondent but does not explicitly say so, let alone supply any evidence showing use of the disputed domain name for a website offering products and services competing with the Complainant.

As the Complainant has produced no evidence of the alleged parking page, the Complainant’s submissions based on such usage must fail. In any case, paragraph 2.6 of WIPO Overview 2.0 makes clear that use of a parking page with links relating to the generic meaning of a domain name is likely to be permissible, in contrast with a situation where such links capitalise on trade mark value. If there were such a parking page, it is therefore entirely possible that it was justifiable under such principles or, indeed, the circumstances might have indicated that the parking page post-dated the Respondent’s previous legitimate use of the disputed domain name and was not part of the Respondent’s original purpose on registration. But it is impossible to assess such matters without any evidence of the parking page itself including the date and the nature of the links.

For all of the above reasons, the Panel finds that the Complainant has failed to establish the third element of paragraph 4(a) of the Policy.

7. Decision

For the foregoing reasons, the Complaint is denied

Adam Taylor
Sole Panelist
Date: September 23, 2013