WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fakir Elektrikli EV Aletleri Diş Ticaret Anonim Şirketi v. Development Services, Telepathy, Inc.
Case No. D2016-0535
1. The Parties
1.1 The Complainant is Fakir Elektrikli EV Aletleri Diş Ticaret Anonim Şirketi of Istanbul, Turkey, represented by Başalan Patent & Trade Mark Industrial Property Services Consultancy Limited Company, Turkey.
1.2 The Respondent is Development Services, Telepathy, Inc. of Washington, United States of America ("United States"), represented by Muscovitch Law P.C., Canada.
2. The Domain Name and Registrar
2.1 The disputed domain name <fakir.com> (the "Domain Name") is registered with Name.com LLC (the "Registrar").
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 18, 2016. On March 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 18, 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 March 23, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 12, 2016. The Response was filed with the Center April 12, 2016.
3.4 The Center appointed Matthew S. Harris, Kaya Köklü and Nicholas Smith as panelists in this matter on May 9, 2016. 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.
4. Factual Background
4.1 The Complainant is a company based in Turkey, which forms part of the "Fakir" group of companies. Its business was founded in Germany in 1933. The name "Fakir" that is used for that business combines the first two letters of the word "familie" (i.e., family) and the first three letters of the name "Kircher" (the surname of the founder of the business, "H. Wilhelm Kircherer".
4.2 This business originally manufactured and sold machines and appliances for cleaning floors but has since extended its product range out to over 150 household cleaning, hygiene, heating and air conditioning products, all of which are sold under the "Fakir" name. It currently has activities in 106 countries and in Turkey the Complainant operates 5 regional head offices and its products are sold through 3,500 sales points.
4.3 The Complainant is the owner of various trade marks around the world that comprise or incorporate the "Fakir" name. They include:
(i) International trade mark registration no. 246392 for the word mark FAKIR filed on August 8, 1961 in classes 7, 9, 10, 11 and 21 and currently in force in Austria, Benelux, Switzerland, Germany, Spain, France, Italy and Liechtenstein; and
(ii) Australian registered trade mark no. 776324 for the word mark FAKIR filed on October 22, 1998 in class 7.
4.4 Fakir & Saruhan Marken GmbH (another company in the same group of companies as the Complainant) is also the owner of various other trade marks that comprise or incorporate the term Fakir", including:
(i) International trade mark registration no. 965408 for the word mark FAKIR filed on October 6, 2007 in classes 7, 9, 11 and 21 and currently in force in 19 other countries or territories; and
(ii) United States registered trade mark no. 3828402 for the word mark FAKIR applied for on October 6, 2007 in classes 7, 9, 21 and 28.
4.5 The "Fakir" group of companies (and/or their predecessors in business) have promoted their business activities from websites operating from the domain names <fakir.de> and <fakir.com.tr>. It is unclear when exactly the <fakir.de> domain name was registered, but it was in use from at least May 21, 2000. The <fakir.com.tr> domain name was registered on January 20, 2006. The Complainant is also the owner of various other domain names that incorporate the "Fakir" name.
4.6 The Respondent would appear to be a company based in Washington State in the United States that is engaged in the business of domain name trading. It registered the Domain Name on November 11, 1999. Since that date the Domain Name does not appear to have been actively used, save in connection with a domain name parking page that displays various suggested searches. As at or just prior to the date of the Complaint, none of these suggested searches appear to be related to the Complainant or its products.
4.7 This parking page also displayed a banner inviting enquiries about the Domain Name that if clicked upon, transferred the Internet user to a separate website operated by "Secured Offers", and which in turn invited offers to purchase the Domain Name.
4.8 In or about May 2004, a representative of Fakir-Werk GmbH & Co. KG (presumably another company with the Complainant's group of companies) made an enquiry through "Secured Offers" as to whether the Domain Name was for sale. It would appear that as part of this process the person making the offer was notified that in doing so they would thereby be confirming that neither they nor that person's organization claimed a legal right in the domain name to which the offer related. The Respondent responded to that email on May 7, 2004, offering to sell the Domain Name for USD 7,500.
4.9 In or about early April 2014 a representative of the Complainant once again used the "Secured Offer" system to make an offer of USD 3,000 for the Domain Name. Again as part of this process the person making the offer was asked to confirm that neither they nor that person's organization claimed a legal right in the domain name to which the offer related. The way that this operated was that in order to make any offer that person had to tick a box next to the following text:
"By submitting this offer, I confirm that neither I, nor my organization, claims a legal right to the registration of the domain listed above."
This box had to be ticked, before the offer was transmitted to the domain name registrant. Below this was also the following text:
"If you believe that you have a legal right to this domain, or that Telepathy's registration or use of the domain infringes on your legal rights, please contact us at firstname.lastname@example.org"
4.10 A confirmation email in respect of that offer was sent by "Secured Offers" on April 3, 2014. At the bottom of this email was the following text:
"Agreed to the following statement: yes
By submitting this offer, I confirm that neither I, nor my organization, claims a legal right to the registration of the domain listed above. If I am inquiring on behalf of another entity, I confirm that this entity does not claim a legal right to the registration of the domain listed above and that I am authorised by such entity to make this representation"
4.11 Later that day the Respondent responded to that offer in an email in which it stated that the Domain Name could be acquired for USD 18,000. A different person, Mr Evli (who appears to work for the Complainant's parent company), responded on June 6, 2014 stating that he would be prepared to pay between USD 6,000 to USD 8,000 for the Domain Name.
4.12 On November 17, 2014, the same individual in the Complainant's parent company sent a further email in which he referred to the previous discussions. He claimed that the Respondent had previously claimed that it "preferred to set the price high for the mentioned domain" because "of [the Respondent's] negotiations with another potential customer" but that the Respondent was still interested in selling the Domain Name to the Complainant if that sale did not occur. He also repeated his previous offer of USD 6,000. In response, the Respondent stated that the price for the Domain Name was now USD 24,000. As part of the exchange of emails that then followed, on November 19, 2014, the Respondent sought to justify the price sought for the Domain Name, by providing a DNJoumal report of Domain Name sales and identifying 7 domain names recorded in that report where the sale price was between USD 60,000 and USD 140,000. In response to this Mr. Evli repeated the USD 6,000 offer but threatened starting the "ICANN" procedure if this was not accepted.
4.13 The Respondent responded by email in which it asserted, inter alia, as follows:
(i) That "fakir" was a common English word of Arabic origins.
(ii) That the Respondent had registered the Domain Name 15 years previously and "well before your company had registered trademarks for the mark 'fakir'".
(iii) That the time that had passed since registration meant that the Complainant had a defence of laches.
(iv) That the Complainant had agreed to the statement declaring that the Complainant has no rights in the Domain Name (as identified at paragraph 4.10 of this decision) above and asserting that:
"As has been found repeatedly under the UDRP, bringing a case such as this one, after failed purchase negotiations, without evidence of bad faith registration and use, and under circumstances where you have already been advised that the domain owner has legitimate rights is an impermissible purpose."
(v) That the Respondent had been successful in a number of UDRP cases in the past including in respect of the domain name <xpand.com>, where the complainant was found guilty of Reverse Domain Name Hijacking.
(vi) That the mere fact that the Complainant has a trade mark in respect of the term "fakir" did not mean that it would succeed in UDRP proceedings and that the commencement of such proceedings in this case would be:
"a clear abuse of the UDRP procedures and will likely lead to a Reverse Domain Name Hijacking fınding and further legal liability."
4.14 In response, the Complainant's representative stated that he was not a lawyer and did not understand the points that the Respondent had made. He claimed that the Complainant was willing to negotiate but that the Respondent's attempt to increase the sale price in the course of negotiations was not "honest behaviour". At that point communications between the parties appears to have come to an end.
5. Parties' Contentions
5.1 The Complainant describes the business of the group of companies of which it forms a part and gives details of a number of its trade marks registered in its name and other companies within the group. It also claims the FAKIR mark is a famous mark protected under article 6bis of the Paris Convention.
5.2 The Complainant describes the parking page use of the Domain Name and asserts that this does not constitute use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. It also claims that trade mark searches in a large number of countries demonstrate that the Respondent has no registered trade mark rights in the term "fakir". It claims that in the circumstances, the burden of proof to demonstrate rights or legitimate interests passes to the Respondent.
5.3 Further, the Complainant maintains that the parking page use of the Domain Name and the fact that the Domain Name has been offered for sale through "Secured Names" demonstrates bad faith registration and use. In this respect it relies upon the fact that the Complainant's FAKIR registered trade marks date back to 1961. It also relies upon email correspondence with the Respondent in which the Respondent offered to sell the Domain Name initially for USD 18,000 and then USD 24,000, which is stated to be in excess of the cost of the Domain Name. The increase in price during negotiations and the fact that the Respondent falsely stated that he had registered the Domain Name before the Complainant had a registered trade mark, is also said to demonstrate bad faith.
5.4 So far as the fact that a representative of the Complainant appears to have disclaimed rights in the Domain Name, the Complainant asserts as follows:
"…, there is not any laws and regulations in the International Laws about the beforehand waiver of legal rights. Therefore, it cannot be accepted that clicking a statement for the waiver of the rights of a company can be accepted as legally valid because if any waiver of legal rights is required, it shall be done by the legally authorized persons. As it is known, according to Commercial Law and Company Law, companies authorize specific persons for specific matters and especially for the matters regarding with the waiver of rights, the procedures shall be completed by authorized persons who confirm their authority with notarized and legalized documents such as Power of Attorney, Signatory Declaration etc."
5.5 In this respect if claims that the person making contact with the Respondent through the "Secured Offers" system was an employee in the Complainant's IT department who was not authorised to disclaim the Complainant's rights. In support of that assertion the Complainant provides a statutory declaration identifying those persons who are authorised to bind the company.
5.6 The Respondent contends that "fakir" is an ordinary dictionary word and that it was registered by the Respondent purely because it was a dictionary word. In support of that contention it provides a statutory declaration of Mr Cohen who is described as the "president" of the Respondent in which Mr Cohen states that he was not aware of the Complainant's business at the time that the Domain Name was registered. Further, the Respondent provides corroborative evidence of that assertion by providing a print out of a "NIC Handle Report" which is said to list all domain names that were registered in the Respondent name as of January 10, 2001. All of these are said to incorporate generic/descriptive dictionary words and to have been registered on the same day as the Domain Name.
5.7 The Respondent further claims and provides evidence in the form of email correspondence that suggests that since registration the Respondent has been approached by various entities interested in purchasing the Domain Name.
5.8 The Respondent also refers to the approaches made by Fakir-Werk GmbH & Co. KG in 2004 and for and on behalf of the Complainant and/or its parent company in 2014 in relation to the Domain Name. It relies upon a purported disclaimer of rights provided by the persons when making those approaches through "Secured Names", and it is claimed that the Respondent acted in reliance of those "disclaimers" when offering to sell the Domain Name in response. This is characterised by the Respondent as voluntary and the Respondent also claims that it could have alternatively been contacted either using an alternate email address disclosed at that time or using an email address disclosed in the WhoIs details for the Domain Name.
5.9 The Respondent disputes the Complainant's characterisation of the increase in price for the Domain Name. It claims that it clearly told the Complainant that the offer of USD 18,000 was time limited and that the price was only increased when the time for acceptance of that offer had passed.
5.10 The Respondent accepts that the Complainant's trade marks are "identical" to the Domain Name. It further accepts that a number of the Complainant's marks pre-date the registration of the Domain Name, but observes that the Complainant had no registered trade mark in the United States at that time. It claims that even if the Complainant's FAKIR mark is protected by the Paris Convention this gives it no special status under the UDRP. It further notes that a number of third parties have also registered trade marks that incorporate the term "fakir".
5.11 The Respondent admits that it speculates and trades in domain names, but claims that this is a legitimate trade that provides it with a legitimate interest in the Domain Name for the purposes of the Policy. That legitimate interest is said to be "reinforced" by the fact that the advertising links displayed on the pay-per-click website operating from the Domain Name did not relate to Complainant's business.
5.12 Further the Respondent contends that the evidence that it has provided as to the reasons why it registered the Domain Name demonstrates that the Domain Name was not registered in bad faith. Further, it contends that although the Complainant has provided extensive material said to demonstrate the fame of the Complainant's business, all of this is of relatively recent origin and is of no relevance to the question of the scope of the Complainant's alleged fame in the United States in 1999; i.e., the year in which the Domain Name was registered. Further, it claims that the International trade marks relied upon by the Complainant only became easily accessible in 2001.
5.13 The Respondent also relies upon the fact that it has prevailed in no less than 17 sets of UDRP proceedings brought against it over the years. It has lost one set of UDRP proceedings but it subsequently commenced court proceedings in the United States federal courts in respect of that domain name and claims those proceedings were settled on favourable terms.
5.14 The Respondent also takes issue with the Complainant's contention that it cannot be bound by the "disclaimers" provided by various staff within the Complainant's group of companies. It asserts that there is a good legal basis for claiming that the Complainant is bound by these statements and it also takes the point that the statutory declaration relied upon by the Respondent only shows that certain persons have authority to bind the Complainant as opposed to demonstrate that others do not.
5.15 The Respondent also asks the Panel to make a finding of Reverse Domain Name Hijacking. In this respect, it also claims that the Complainant failed to mention that the term "fakir" was a dictionary term, has failed to explain its delay in bringing these proceedings, and was unable to provide any evidence that the Respondent registered the Domain Name with the intention of targeting the Complainant. It further contends that the Complainant's assertion that it was "forced" to use the "Secured Offer" system to contact the Respondent is false. It also relies upon the correspondence that took place in November 2014 and claims that the "Complainant proceeded after having disregarded the evidentiary record included in its own exhibits and the relevant UDRP decisions sent to it by Respondent and readily available online through a cursory search."
6. Discussion and Findings
6.1 To succeed in these proceedings 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 (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.2 The Panel will address each of these requirements in turn and then make a number of observations in respect of the Respondent's claims that the Complainant has waived or disclaimed its rights in the Domain Name. It will then address the Respondent's allegations of Reverse Domain Name Hijacking.
A. Identical or Confusingly Similar
6.3 The Complainant has registered trade mark rights in a number of word trade marks for the term "fakir". The Domain Name takes the form of that term in combination with the ".com" Top-Level Domain. Given this, the Domain Name is clearly confusingly similar, if not identical, to that trade mark. In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.4 Given the Panel's findings so far as bad faith registration is concerned, it is not necessary to consider this issue further.
C. Registered and Used in Bad Faith
6.5 The Panel accepts the Respondent's contention that it was unaware of the Complainant's business at the time that it registered the Domain Name in 1999 and that the Domain Name was not registered with any intention of targeting the trade mark rights of the Complainant.
6.6 In this respect the Respondent has brought forward compelling evidence not just in the form of a Statutory Declaration to this effect, but also contemporaneous evidence that the registration of the Domain Name formed part of a larger set of registrations of dictionary terms. Whether a word or term is generic depends upon how it is used, and in the case of a domain name for what purpose it is registered. The example often given by trade mark lawyers to demonstrate this proposition is that the word "apple" is generic so far as the fruit that it describes is concerned, but is not so in the field of computers (or for that matter music, as many fans of The Beatles will attest). "Fakir" is an unusual word, but not so unusual that the Panel has any reason to believe in light of the evidence before it that the Domain Name was registered at the same time as a large number of dictionary words, that it was with the Complainant's marks and use of that term in mind, that the Domain Name was registered.
6.7 There is also the fact that the Complainant has failed to show that the reputation of its mark was so great that the Respondent is likely to have become aware of it notwithstanding the fact that the Respondent and Complainant are based in different jurisdictions. The fact that a respondent is in a different jurisdiction than a complainant is something that some people can consider to be of greater significance than it actually is, particularly if the complainant has a significant online presence. But in this case not only has the Complainant brought forward no evidence that it had such an online presence in 1999, but the Respondent has brought forward evidence to suggest that it was at that time minimal and perhaps non-existent.
6.8 This is sufficient for the Panel to conclude on the material before it that the Domain Name was not registered in bad faith.
6.9 The fact that some of the Complainant's trade marks pre-date the date that the Domain Name was registered in this case, does not matter. The Complainant must show more than this to succeed under the Policy.
6.10 Given this finding, it is not necessary to address the question of whether the Domain Name has been used in bad faith and the Panel declines to do so.
D. Disclaimer of rights
6.11 Given the Panel's finding as to bad faith registration, it is not necessary to address the Respondent's argument that the Complainant had waived its rights by making offers on the Domain Name through the "Secured Offers" system. Nevertheless, the Panel consider it appropriate to make a number of observations in this respect, given that the Respondent considers it to be an issue of some importance. The Panel has only been able to locate one other case under the UDRP in which this issue was addressed. That case was Valio Ltd. v. Telepathy Inc., CAC Case No. 100558 (<lgg.com>) but the issue was only commented on in the panel's summary of the respondent's case, and not as part of their decision.
6.12 The Panel finds the Respondent's arguments in this respect inherently unattractive. As the Respondent addresses at length in its Response, there is nothing per se illegitimate in trading in domain names. Therefore, it is hard to see why a legitimate domain name trader has any compelling reason for insisting that someone who is interested in a domain name must forgo any right to claim that domain name under the UDRP as a pre-condition for that trader even participating in discussions in relation to its sale. In short, a legitimate trader should not require such reassurance and if the domain name trader is a cybersquatter then the system is merely a device to frustrate the UDRP.
6.13 Further, if disputes under the Policy can be avoided by a potential complainant and respondent agreeing that the domain name changes hands at a price, then that should be encouraged. Any system that discourages dialogue in this respect (which a waiver of rights, if spotted by the purchaser, is likely to do), is unhelpful in this respect.
6.14 The Panel is also not convinced by the Respondent's argument that it could be contacted through other means to be particularly compelling. This may be true, but if an offer could be made through some other means and the Respondent would have engaged in the same discussion regarding possible purchase that it did in this case, then the system serves little purpose, save perhaps to provide a trap for the unwary.
6.15 It is also appears to be inherent in both the Complainant's and Respondent's arguments about whether the person or persons who initially approached the Respondent about a potential purchase of the Domain Name had authority to bind the Complainant, that whether or not the waiver had any legal effect is to be judged by reference to some legal standard and presumably some particular local law. However, if so, which law applies? Also the issues here are far from straightforward. The Respondent's contention that many legal systems will deem a corporation to be bound by the acts of its employees is one that the Panel accepts, but whether a company is bound by the actions of someone in (if the Complainant's evidence in this respect is accepted) the Complainant's IT department where the claimed effect of the employee's act is some fundamental waiver of rights, is far from clear cut. Further, there are many other issues here in addition to questions of actual or ostensible authority. For example, from a common law perspective these questions may include (i) whether and to what extent has a respondent in such a case given sufficient consideration for that waiver to be (if that is what is alleged) contractually binding; and (ii) whether a tick box form of the sort which appears to have been used in this case would have sufficient prominence to be binding as a matter of the relevant law upon a potential complainant, whether through operation of a deemed contract, estoppel or otherwise? None of these questions are particularly well suited to be determined by a panel under the UDRP.
6.16 Ultimately, however, the Panel considers that it is unlikely that a Panel will need to address these sorts of question at least in a case such as this. The reason is that UDRP proceedings do not involve the assertion of rights in a domain name or rights of the same sort that a trade mark owner may have against an infringer. The UDRP represents a sui generis system for determining domain name disputes that is not generally dependent upon local law; see paragraph 4.15 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"). A complainant must show trade mark rights in order to take advantage of the UDRP, but this is generally considered to be an issue of standing only; see paragraph 1.2 of WIPO Overview 2.0. Also although proceedings under the UDRP and proceedings for trade mark infringement may overlap, they are not the same thing. Once the standing requirement has been satisfied, the question is not whether the complainant has "rights" in the domain name, but whether the respondent has rights or legitimate interests in the domain name and whether the domain name had been registered and used in bad faith. It is difficult to see how a complainant "waiver" is relevant to these questions. It does not create a legitimate interest in the domain name, nor does it make a registration or use that was in bad faith, a good faith registration or use.
6.19 Further, the Panel believes that to disregard this waiver would be justified under Policy grounds for the reasons already described. It also notes that for similar reasons panels have generally been reluctant to disregard "without prejudice" settlement discussions in UDRP proceedings, notwithstanding the fact that under local law rules that material might not be used in evidence in court proceedings. The issue is one that is summarised in paragraph 3.6 of WIPO Overview 2.0.
E. Reverse Domain Name Hijacking
6.20 The Respondent has requested that the Panel make a finding of Reverse Domain Name Hijacking. Paragraph 4.17 of WIPO Overview 2.0 summarises what UDRP panels have generally considered to be the circumstances in which a finding of Reverse Domain Name Hijacking may be made. In particular, it states, inter alia, as follows:
"Paragraph 15(e) of the UDRP Rules provides that, if 'after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding'. Reverse Domain Name Hijacking is defined under the UDRP Rules as "using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name".
WIPO panels have found that the onus of proving complainant bad faith in such cases is generally on the respondent, whereby mere lack of success of the complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking. To establish Reverse Domain Name Hijacking, a respondent would typically need to show knowledge on the part of the complainant of the complainant's lack of relevant trademark rights, or of the respondent's rights or legitimate interests in, or lack of bad faith concerning, the disputed domain name. Evidence of harassment or similar conduct by the complainant in the face of such knowledge (e.g., in previously brought proceedings found by competent authorities to be groundless, or through repeated cease and desist communications) may also constitute a basis for a finding of abuse of process against a complainant filing under the UDRP in such circumstances.
WIPO panels have found Reverse Domain Name Hijacking in circumstances including where: the complainant in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP; the complainant failed to notify the panel that the complaint was a refiling of an earlier decided complaint [see further discussion regarding refiled complaints in paragraph 4.4 above] or otherwise misled the panel; a respondent's use of a domain name could not, under any fair interpretation of the reasonably available facts, have constituted bad faith; the complainant knew that the respondent used the disputed domain name as part of a bona fide business for which the respondent obtained a domain name prior to the complainant having relevant trademark rights [see further paragraph 3.1 above with respect to bad faith and complainant trademark rights which post-date domain name registration].
The fact of default by a respondent does not necessarily prevent a finding of Reverse Domain Name Hijacking in appropriate cases, and WIPO panels have on occasion entered such findings on their own initiative, especially where the complainant has intentionally attempted to mislead the panel by omitting material evidence.
WIPO panels have declined to find Reverse Domain Name Hijacking in circumstances including where: the complainant has succeeded in establishing each of the three essential elements required under the UDRP; the complainant's argument under a required element of the UDRP fails, but not by such an obvious margin that the complainant must have appreciated that this would be the case at the time of filing the complaint; there is a question of clean hands or factual accuracy on the part of both parties; the respondent's website contains commercial links explicitly referable to the complainant for the purpose of generating revenue, providing a basis for the complainant to be aggrieved; or there appears to be another relevant factual basis for filing the complaint."
6.21 Ultimately, the Panel has concluded that a finding of Reverse Domain Name Hijacking would not be appropriate in this case. The reason is that although the Complainant has failed to demonstrate that the Domain Name was registered in bad faith, its position here was not so hopeless that it should have known that this aspect of the case would inevitably fail. This is not, for example, a case where the respondent's registration pre-dates the complainant's business such that it was obvious and inevitable that the complainant's claims in this respect were ill founded.
6.22 An important factor in the Panel's conclusion in this respect is that although the Respondent responded to the Complainant's allegation that it had a claim under the UDRP (erroneously referred to as a claim with ICANN) and gave details of cases where such claims against it had failed against it in the past, what was notably absent from that correspondence was an unambiguous and unequivocal statement by the Respondent as to why the Domain Name was registered in this case. This is frequently the most important question in UDRP proceedings and the Respondent is clearly very familiar with the issues in such proceedings. Nevertheless, this key point was not directly addressed by the Respondent, let alone any evidence provided at that time to support that assertion. The Respondent does make the point that the Domain Name contains a generic term, but as has already been discussed in this decision, that is not the same thing.
6.23 The Panel also suspects that in this case the waters were muddied by the fact that the Respondent incorrectly asserted that the Domain Name predated the Complainant's mark. The Complainant devoted a fair part of its Complaint to addressing this point and even went so far as to claim that this statement by the Respondent supported a finding of bad faith. The Panel believes that the Complainant read far more into the Respondent's statement than was justified. It suspects that there was no intention on the part of the Respondent deliberately to mislead, and that the reason why the Respondent said what it did was that the United States registered trade mark for the term "fakir" post-dated the Domain Name. Nevertheless, it is something that the Panel thinks is relevant to the assessment of whether these proceedings were brought in bad faith
6.24 As to the other factors that are claimed by the Respondent to support a finding of bad faith, the Panel is unconvinced. It is unfortunate that the Complainant did not disclose that a person at another company within the Complainant's group approached the Respondent through the "Secured Offers" system, but there is no evidence before the Panel that the Complainant deliberately concealed this. Further, the point about possible waiver of rights was squarely addressed by the Complainant and (for reasons that the Panel has already explained above) in any event was unlikely to be of significance.
6.25 Similarly, the Panel does not consider that there was any deliberate attempt on the part of the Complainant to disguise the fact that "fakir" had a potential dictionary meaning. It openly disclosed and referred to the Respondent's contentions in this respect.
6.26 Similarly, the delay in commencing proceedings and the alleged failure to explain this is not a factor that the Panel considers to be important, particularly in light of paragraph 4.10 of the WIPO Overview 2.0.
6.27 Finally, the claim by the Complainant that the use the "Secured Offers" system was "compulsory to present an offer" does appear to be exaggerated. But it is not so misconceived that by itself it would support a finding of Reverse Domain Name Hijacking.
7.1 For the foregoing reasons, the Complaint is denied.
Matthew S. Harris
Date: May 21, 2016