WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Robin Food B.V. v. Bogdan Mykhaylets
Case No. D2016-0264
1. The Parties
1.1 The Complainant is Robin Food B.V. of Houten, the Netherlands, represented by SOLV Advocaten, the Netherlands.
1.2 The Respondent is Bogdan Mykhaylets of Kiev, Ukraine, self-represented.
2. The Domain Name and Registrar
2.1 The disputed domain name <robinfood.com> (the "Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 11, 2016. On February 11, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 12, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
3.2 The Center verified that the 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").
3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 15, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 6, 2016. The Response was filed with the Center on March 5, 2016.
3.4 The Center appointed a sole panelist in this matter on March 11, 2016. However, on March 22, 2016, it became necessary for the sole panelist to recuse itself. On March 24, 2016 the Center notified the parties of the sole panelist's recusal and informed them that an alternate panelist would shortly be appointed.
3.5 The Center appointed Matthew S. Harris as the sole panelist in this matter on March 29, 2016. 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
4.1 The Complainant is a company incorporated in the Netherlands. It specialises in offering private label baby food products to retailers in the European Union and China and has done so since 2004. It delivers more than 300 different baby food products and in 2015, it delivered more than 8.2 million consumer units to its clients. In the Netherlands is has a 70percent market share in baby food supermarket private and trade labels.
4.2 The Complainant also operates a website from the domain name <robinfood.biz> promoting its business and products.
4.3 The Domain Name was first registered on June 8, 2004.
4.4 The Respondent would appear to be an individual based in the Ukraine. He is a domain name trader with a portfolio of over 1,000 domain names. He acquired the Domain Name in an auction on "snapnames.com" on July 17, 2013.
4.5 Since registered in the Respondent's name the Domain Name has been used to host a pay-per-click website. This page has displayed food related links. This page continues to operate at the date of this decision.
5. Parties' Contentions
5.1 The Complainant asserts that its name "Robin Food" is a variant and wordplay upon the name "Robin Hood". In the words of the Complainant: "Robin Food 'steals' of the 'rich' top shelf brands and gives it to the 'poor' parents".
5.2 The Complainant contends that by reason of its activities it has an unregistered (or common law) service mark in the name "Robin Food". In this respect it refers to paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"). It further contends that is has acquired trade name rights under Dutch law in the name Robin Food.
5.3 The Complainant claims that as a consequence the Domain Name is identical to a trade mark in which it has rights for the purposes of the Policy.
5.4 The Complainant further maintains that the Respondent has no right or legitimate interest in the Domain Name. It claims that none of the examples of rights or legitimate interests set out in paragraph 4(c) of the Policy apply and that the Respondent's has does not have any such right or interest by reason of its pay-per-click use. It provides print outs from the BOIP, WIPO and OHIM trade mark databases that are said to evidence its position that the Respondent owns no trade marks rights in the term Robin Food. However, these print outs do appear to demonstrate that another entity (namely "Stichting Pura Natura") does have Community and Benelux trade marks for the word mark "Robinfood" in classes 31, 35 and 44.
5.5 The Complainant further claims that it is clear that the Domain Name was registered for the purpose of selling it. In this respect it refers to a link on the webpage operating from the Domain Name which invites Internet users to click on that link to by the Domain Name. It also provides a report that suggests that there are in 1,583 domain names associated with the Respondent. It gives <cindywilliams.com> as an example of one of these domain names and others are identified in annexes to the Complaint. However, it does not suggest that the examples it has chosen are significant for any other reason.
5.6 The Complainant claims that the Domain Name has been both registered and used in bad faith. In this respect it claims that the use made of the Domain Name involves an intentional attempt to attract for commercial gain Internet users to a website by creating a likelihood of confusion with the Complainant's mark within the scope of paragraph 4(b)(iv) of the Policy.
5.7 The Respondent openly admits that he is a domain name trader and that part of his business model is to obtain domain names on the secondary market either directly from the owners or through domain name auction houses such as "snapnames.com".
5.8 He provides evidence of the fact that the Domain Name was acquired through "snapnames.com" on July 17, 2003 and that evidence suggests that he paid USD 214. The explanation that the Respondent gives for his choice to purchase the Domain Name is as follows:
"the [R]espondent saw the inherent value of the [Domain Name] as a very attractive domain for the food industry being very close to sounding to the worldwide known Robin Hood character who has positive meaning in literature which makes the term "Robin Food" in the .com extension extremely cool and has kind appeal
The [R]espondent had no knowledge of the Complainant and his interest in the term "Robin Food" prior to the secondary market auction, nor during the auction, not even before getting the Complaint".
5.9 The Respondent also admits that the Domain Name together with other domain names that he owns are then used for domain name parking pages. In this case he claims that the links generated are generic ones related to food. The Respondent also appears to contend that he went through some form of checking process to verify that only generic links were displayed from that page, but when this was done is not clear. Further, he maintains that on all his pages there is a link which states "contact us if you have a dispute". The contention here appears to be that he welcomes and will act upon complaints from trade mark owners if the pay-per-click advertisements that appear on the page conflict with those trade marks and he will then "make sure that he acts on the ads immediately if some of the ads might appear to capitalize on someone's business name."
5.10 The Respondent further contends that since he registered the domain name he has had 29 enquiries from around the world from people or entities seeking to acquire the Domain Name. He provides evidence of this in the form of a print out from "DomainNameSales.com". This material suggest that he has in fact received 31 enquiries, that these enquiries have involved eight offers ranging from USD 1 to USD 1,000 and that the Respondent has in response to a small number of these enquiries offered to sell the Domain Name for either USD 25,000 or 40,000.
5.11 This printout also appears to give details of from where the various enquiries originated. One of those enquiries was from the Netherlands and the Respondent hazards a guess that it was the Complainant that was behind that approach. As far as the Panel can tell from this material, this is not an offer that resulted in the Respondent quoting a price for the Domain Name. However, the material is otherwise said to support the Respondent's contention that the Domain Name is naturally and potentially attractive to a number of persons around the world for possible use in business.
5.12 The Respondent next claims and provides evidence of the fact that in preparing his Response he conducted a trade mark search which returned zero results. However, the trade mark search conducted appears to have been limited to a database of United States of America trade marks. Why this is said to be of relevance to this proceeding is not explained.
5.13 The Respondent then goes on to respond to the specific allegations that the Domain Name is identical to a trade mark in which he Complainant claims rights, that the Respondent has no right or legitimate interest in the Domain Name and that the Domain Name was registered and has been used in bad faith. However, in doing so he for the most part simply repeats the points already recorded above.
6. Discussion and Findings
6.1 The Complainant must make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (Policy, paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (Policy, paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
A. Identical or Confusingly Similar
6.2 The Complainant does not rely upon any registered trade mark but instead alleges that it is the owner of unregistered trade mark rights by reason of its activities. In this respect it relies upon paragraph 1.7 of the WIPO Overview 2.0. The first half of this paragraph reads as follows:
"The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such "secondary meaning" includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction."
6.3 The Complainant, understandably given that its activities would appear primarily to be undertaken in civil law jurisdictions, relies upon the last sentence in this quote to justify its claim that it has unregistered trade mark rights notwithstanding that it does not appear to undertake business in any common law jurisdiction.
6.4 Nevertheless, this Panel considers this statement in the WIPO Overview 2.0 is one that needs to be treated with some care. As this Panel stated in Antonio de Felipe v. Registerfly.com, WIPO Case No. D2005-0969 (starting at paragraph 6.14 of that decision).
"… The facts of Sibyl Avery Jackson meant that common law unregistered trademark rights were the only trademark rights of potential relevance in that case. However, it is important to add that the reasoning in that case does not necessarily preclude a finding in other cases that a complainant has unregistered trademark rights in non-common law jurisdictions. Indeed support for the proposition that unregistered trademark rights may exist elsewhere is to be found in paragraph 1.7 of [the initial WIPO Overview of WIPO Panel Views on Selected UDRP Questions]. This states that the consensus view of panelist is that 'unregistered rights can arise even when the complainant is based in a civil law jurisdiction.' One of the cases cited in support of this proposition is Skattedirektoratet v. Eivind Nag, WIPO Case No. D2000-1314. In that case the three person panel held that unregistered trademark rights were recognised under Norwegian law.
Regardless of the exact extent of possible unregistered trademark rights for the purposes of the Policy, one thing is reasonably clear. Unregistered trademark rights do not exist in some nebulous way across the breadth of the countries in which a complainant proves it has a reputation. These rights derive from national laws and do not exist divorced from such laws. They therefore depend upon the extent to which the laws of a particular country recognise or do not recognise that the activities of the complainant provide unregistered rights in that country.
There is a practical point that is worth making here. A panel deciding a case under the Policy will not always have knowledge of the laws of the jurisdiction in which unregistered trademarks are claimed. A complainant bears the burden of showing that it has rights recognised by Paragraph 4(a)(i) of the Policy. Therefore any complainant claiming unregistered trademark rights would be wise not only to provide evidence of the activities that are alleged to found those rights but also to provide evidence that as a matter of law those activities are recognised as giving unregistered trademarks rights in that jurisdiction. This is particularly so if relevant unregistered rights in that jurisdiction have not been unambiguously recognised in previous UDRP decisions."
6.5 The Antonio de Felipe v. Registerfly.com decision is now over ten years old and the WIPO Overview 2.0 was published after that decision. However, as far as the Panel can tell there is only one more recent decision in the many listed in the WIPO Overview 2.0 that addresses the issue of unregistered trade mark rights. That is S.N.C. Jesta Fontainebleau v. Po Ser, WIPO Case No. D2009-1394. In that decision the distinguished panelist stated as follows:
"The issue is as to whether or not the Complainant can be said to have trade mark rights in the name of its hotel complex. The Complainant has no registered trade mark rights, so the question is as to whether or not it has unregistered common law trade mark rights or their equivalent for the purpose of the UDRP.
The word "Uniform" in the name of the UDRP is primarily a reference to uniformity across the gTLDs. At a minimum, implicit in the introduction and scope of the UDRP is its global application. The Panel takes the view that the Policy needs to be applied as uniformly as possible across the globe, particularly when dealing with a domain name in one of the gTLDs (which can be obtained and accessed around the world, irrespective of jurisdiction). Were it otherwise, on an issue such as this complainants from many civil law jurisdictions would in certain scenarios be at a disadvantage when compared to their counterparts from common law jurisdictions and those civil law jurisdictions, such as Germany, which make special statutory provision for unregistered trade mark rights.
Secondly, for the purpose of assessing what might constitute an equivalent to a common law trade mark right, it is important to understand what a common law trade mark is. In this context it is a name or sign, the use of which (or a confusingly similar variant of which) a person can restrain by way of a passing off action. For the purposes of a passing off action the plaintiff needs to be able to prove that (a) it has a reputation and goodwill in respect of the name or sign in question, (b) the defendant is using it or a confusingly similar variant of it to cause deception in the marketplace and (c) the plaintiff is suffering or is likely to suffer consequential damage.
In other words, in a common law jurisdiction, if a third party set up in competition with the Complainant under the same or a confusingly similar name, the Complainant could succeed in a passing off action and stop the activity complained of if it were able to establish those three elements.
Given the global nature of the domain name system and the international nature of much of the world's trading activity, it is entirely possible that a complainant that is physically located in a particular civil law jurisdiction could nonetheless establish common law trademark rights outside that jurisdiction by virtue of its international (including on-line) operations. Indeed, in this case, the Panel has been invited to conduct a Google search using the name of the Complainant's hotel complex, Palais Stephanie, and from the results of that search, supported by the fact that the Complainant's website has an English language version, the Panel would have thought that there was scope for the Complainant to have made out an argument on those lines. However, it did not do so and has not produced any evidence to enable the Panel to make any such finding, so the Panel turns to the jurisdiction in which the Complainant is physically located, which is France.
In a civil law jurisdiction such as France, the Panel believes that the Complainant could achieve a result comparable to that available under an action for passing off by way of an unfair competition action, provided of course that it could prove a reputation and goodwill in respect of the name, the deceptive activity of the defendant and the likelihood of damage. In other words, albeit by way of a somewhat different route, the Complainant's rights in respect of its name are potentially no different from those of a trader in a common law jurisdiction.
It is on that basis that this Panel is prepared to hold that the Complainant has rights in respect of the name, 'Palais Stephanie', for the purposes of paragraph 4(a)(i) of the Policy provided that it can satisfy the Panel that the three elements necessary for a passing off action are present."
6.6 Therefore, to summarise, the panelist in the S N.C. Jesta Fontainebleau v. Po Ser case appears to have held that as a matter of fact the complainant probably had common law unregistered trade mark rights, but that regardless of whether that was true, French unfair competition law was likely to have provided the complainant with a comparable rights to that available under the English common law. Given this and the fact that as a matter of policy panelists should endeavour to interpret the UDRP as uniformly as possible, the panelist concluded that these rights under French unfair competition law should be treated as providing unregistered trade marks rights for the purposes of the Policy.
6.7 It is an approach with which the Panel agrees. Nevertheless, the point remains that a claim based on trade mark rights is one that must at least have some foundation in domestic law. Panelists are likely to strive towards a conclusion, and are likely to be persuaded, where a complainant's activities would result in unregistered trade mark rights in a common law jurisdiction, such equivalent activities elsewhere would result in rights that are also recognised as trade mark rights for the purposes of the Policy. But there must be at least something under domestic law that is capable of serving that purpose.
6.8 Although the Complainant appears in this case to be claiming unregistered trade mark rights in the abstract, it also refers to trade name rights under Dutch law. The Panel is not familiar with how Dutch trade name rights operate. Had it been necessary, it would have sought further information in this respect from the Complainant's representatives and it might easily have been persuaded that this provides unregistered trade mark rights for the purposes of the Policy. Further, should that have occurred, it is likely that the Complainant would have demonstrated that the Domain Name is confusingly similar to that "unregistered trade mark".
6.9 Unfortunately for the Complainant, and for reasons that the Panel will explain later on in this decision, the Panel has formed the view that it is not necessary for the Complainant to provide the Panel with that further information.
B. Rights or Legitimate Interests
6.10 Given the Panel's findings so far as bad faith is concerned below, it is not necessary to consider the issue of rights or legitimate interests.
C. Registered and Used in Bad Faith
6.11 The Respondent has substantially participated in these proceedings, has clearly given reasons for registering the Domain Name and has been prepared to share with the Panel internal business documents that show how he has sought to exploit the Domain Name. So far as the sharing of documents is concerned, the Respondent's approach involves a degree of openness that in this Panel's experience is rare among respondents who are domain name traders. In this limited respect, the Respondent is to be commended.
6.12 That said the Panel cannot help but confess that it has approached the Respondent's claims as to his motives for registering the Domain Name with a high degree of scepticism. The reason is that the term "Robin Food" is clearly not a generic or descriptive one. Given this the Respondent's explanation that he decided to buy it at auction because it was a "cool" combination of words that might be of interest to a food company because of its potential associations with the character "Robin Hood", is one that at first sight seemed unlikely.
6.13 There is also the fact that the material that the Respondent has disclosed shows that the Respondent has been seeking to sell the Domain Name for at least USD 25,000. A person who legitimately owns a domain name is entitled to sell it for as little or as much as he likes or thinks he can get away with. This is something that the Respondent is no doubt very familiar with given the finding in his favour on this very issue in Versalis S.p.A. v. Bogdan Mykhaylets, WIPO Case No. D2014-2284, where an offer to sell the domain name to the complainant for EUR 99,000 (even if characterised as unreasonable), was not seen as evidencing bad faith. Nevertheless, high offers of this sort are often telling. If the price sought by a domain name trader for a domain name appears to be way beyond that which appears to be its intrinsic value in the absence of the trade mark rights of others, then a trader should not be surprised if a panel concludes that the real reason why such a high price is being sought is because of that domain name's potential association with the trade mark rights of others.
6.14 There is no evidence before the Panel as to whether the figure of USD 25,000 only makes sense because of its potential associations with the Complainant. Nevertheless, the Panel considers this to be at the very least suggestive that by the time that figures of this magnitude were being sought, the Respondent knew of the Domain Name's potential association with the Complainant. Therefore, if the Panel had concluded that this was potentially determinative and given that the material demonstrating these offers was only disclosed in the Response, it is likely that the Panel would have sought additional submissions from both parties on this point.
6.15 However, ultimately the Panel has formed the view that this is not determinative and that there is no need to call for further submissions on this issue. The reason is that to succeed under the Policy a complainant must show on the balance of probabilities not only that a domain name has been used but also that it has been registered in bad faith. In the present case the date upon which bad faith registration must be demonstrated is when the Domain Name was acquired; namely July 2013. Although this date of acquisition is not revealed in the publically available WhoIs record for the Domain Name, this is a date that the Complainant would have been capable of independently establishing through other means (see for example the Panel comments in this respect in Telefire Fire & Gas Detectors Ltd. v. Easy Property Management Group / Park Sanghoon, WIPO Case No. D2013-1003).
6.16 The Panel is unconvinced that the Complainant has demonstrated that the Respondent registered the Domain Name in bad faith. The reasons for this as follows:
(i) Although there is an assertion in the Complaint that the Domain Name was registered in bad faith, there is little more than that so far as bad faith registration is concerned. There is no real attempt to explain why it is more likely than not when the Domain Name was acquired that the Respondent knew of the Complainant's use of that term in business and that it was with an intent to take unfair advantage of that use that the Domain Name was so acquired.
(ii) Notwithstanding that the Complainant appears to have been a successful business in its field, it does not claim to have achieved the status of a household name either where it conducts business or in the territory where the Respondent appears to be located. Indeed, its business model would appear to involve the production of products that carry the brands of others.
(iii) There can be a danger of overemphasising the fact that the parties in a domain name dispute are in different jurisdictions, in circumstances where the activities of a complainant can be easily established through an Internet search or otherwise. However, the Complainant does not assert let alone does it provide evidence that when the Domain Name was registered, the Respondent is likely through such a route to have become aware to the Complainant's use of that term (whether that be as a consequence of an Internet search, as a result of what could be seen on a website operating from the Domain Name just prior to its acquisition, or otherwise).
(iv) Although the Panel initially was sceptical of the Respondent's express reasons for purchasing this Domain Name, those reasons are very similar to those given by the Complainant for adopting that name for its business. The Panel therefore is not prepared to discount that explanation as so implausible that it is likely to be untrue.
(v) Although the Complainant refers to other domain names registered by the Respondent, it does not go so far as to contend that they incorporate and in some manner takes unfair advantage of the trade mark rights of others. The choice of <cindywilliams.com> as an example of one of the other domain names registered by the Respondent is curious, as this appears to be the name of a reasonably well-known American actress. But the Complainant has not sought to put forward any argument to this effect on the basis of that registration. If the Complainant has decided not to construct its case in this fashion for whatever reason, it is not for the Panel to reformulate its case for it in this regard.
(v) The waters are further muddied by the fact that according to the Complainant's own evidence, "RobinFood" appears to have been registered as a trade mark by some other Dutch entity. An OHIM trade mark search reveals that the trade mark was registered in October 2008 (i.e., before the Respondent acquired the Domain Name) and remains on the register as at the date of this decision.
6.17 In the circumstances, the Panel finds that the Complainant has failed to demonstrate that the Domain Name was registered in bad faith and, therefore, has not made out the requirements of paragraph 4(a)(iii) of the Policy.
7.1 For the foregoing reasons, the Complainant is denied.
Date: April 1, 2016