WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Emerton v. Peng Goh, Service Pro
Case No. D2016-0851
1. The Parties
The Complainant is Emerton of Paris, France, represented by Gevers, Belgium.
The Respondent is Peng Goh, Service Pro from Hong Kong, China, self-represented.
2. The Domain Name and Registrar
The disputed domain name <emerton.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 April 28, 2016. On April 28, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 29, 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.
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").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 3, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 23, 2016. The Response was filed with the Center May 23, 2016.
The Center appointed Alistair Payne, M. Scott Donahey and The Hon Neil Brown Q.C. as panelists in this matter on June 13, 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
The Complainant, a French company, has operated since 2011 as a strategy consulting firm, focusing on the energy, mobility, industrial and high tech sectors and operating from offices in Paris, Brussels and Boston. It owns various trade mark registrations for its EMERTON mark including French trade mark registration number 113835650, registered on October 10, 2011 and European Union trade mark registration number 011463445 registered on April 25, 2013.
The Respondent registered the disputed domain name on April 8, 2002.
5. Parties' Contentions
The Complainant submits that it owns registered trade mark rights in its EMERTON mark as set out above and that the second level element of the disputed domain name is identical to this mark.
The Complainant submits that the EMERTON mark corresponds neither to the name of the Respondent (Peng Goh) nor to the name of his company (Service Pro) and submits that worldwide searches in numerous countries do not reveal trade mark registrations owned by the Respondent for the EMERTON mark.
It says that it has not licensed, permitted or otherwise authorized the Respondent to use its trademarks and that the disputed domain name has never been used since its registration on April 8, 2002. In this regard it notes that according to the Wayback machine in 2002, the disputed domain name resolved to a home page entitled "Emerton's family web site" and offered the web site for sale as "Most unforgettable unique gift that your friend, relative or yourself can get!". The sale price was USD 800. Subsequent to that time it says that the disputed domain name resolved to what appear to be various parking pages, as is currently the case. The Complainant notes that the parking page to which the disputed domain name resolves at the moment is in Polish and when translated it appears that it provides references to various items of workwear and thus seeks to divert Internet users who are searching for the Polish provider of professional workwear under an "Emerton" mark. This, says the Complainant, is not a legitimate or fair use of the disputed domain name.
In summary the Complainant submits that the failure by the Respondent to use the disputed domain name other than in this way during a period of 14 years means that the Respondent has not and is not preparing to use the disputed domain name for a bona fide use.
As far as registration and use in bad faith is concerned, the Complainant submits that the Respondent owns more than 730 domain names and is engaged in a scheme of mass registration of domain names with the goal of making money with pay per click links or by blocking registrations with a view to re-sale whether to trade mark owners, reputed sports people, companies or otherwise. It submits that the disputed domain name corresponds to a common family name, the name of Brett Emerton (an Australian football player between 1996 and 2012), a trademark for work clothes, a city in Australia and the trade mark EMERTON of the Complainant and was obviously registered by the Respondent on the basis that someone would want to acquire a domain name containing "emerton" and this, says the Complainant, amounts to registration in bad faith and the fact that the disputed domain name points towards a parking page including links related to workwear and considering that EMERTON is also a trademark used in Poland to designate professional workwear, then this amounts to use in bad faith.
The Complainant submits that it tried several times to contact the Respondent with an offer to buy the disputed domain name for a reasonable amount up to USD 1,000. Having received no response it then sent an offer for the sum of USD 50,000 which did receive a response from the Respondent, namely a counter-offer for USD 800,000. This says, the Complainant, when coupled with the fact that the disputed domain name has never been used, the unreasonable amount requested by the Respondent and that the Respondent could have worked out based on a simple Internet search that the request was made by the Emerton company based in France, indicates that the Respondent had knowledge of the Complainant's rights and that its demand was therefore abusive.
The Complainant notes that it also sent a letter to the Respondent (on January 21, 2016) and a reminder (on February 3, 2016) to inform the Respondent of its trademark rights and requesting him to make a reasonable offer, but received no response.
The Complainant further submits that the Respondent's use of a PPC parking pages at the disputed domain name is further evidence of use in bad faith in circumstances that he is engaged in the business of large scale registration of domains, makes no effort to avoid registering domain names identical or confusingly similar with prior trademarks and following the Complainant's offer obviously had knowledge of the Complainant's rights in the EMERTON name or mark.
The Respondent submits that he registered the disputed domain name because it is a common surname and a geographical identifier. The Respondent says that he did not target the Complainant or any other trade mark owner and could not have done so as he had no knowledge of the Complainant or its mark at the time that the disputed domain name was registered.
The Respondent notes that the Complainant is a strategy consulting company aimed at a small group of executives in very specialised sectors and not at the general public. He notes that the Complainant has offices in 3 countries, namely France, Belgium and the United States of America but not in Hong Kong where the Respondent resides and that while it owns trade mark registrations in certain European countries and in the United States of America it does not own a trade mark registration in Hong Kong and neither has the Complainant demonstrated that it has a strong reputation in that jurisdiction.
The Respondent says that the disputed domain name was registered by the Respondent on April 8, 2002, some 9 years before the Complainant commenced business in 2011 and before it filed its trade mark registration for EMERTON. He submits that there cannot be bad faith registration where the registrant of the disputed domain name could not know of the existence of the Complainant or its likely rights because the Complainant did not exist at the date of registration of the disputed domain name. Further, submits the Respondent, he could not have known that the Complainant would come into existence when he registered the disputed domain name.
Finally, the Respondent makes the point that it was the Complainant that initiated contact with an offer to purchase the disputed domain name. Although the Respondent did not respond, the Complainant persisted several times and it was only after the Respondent replied that the Complainant sent a cease and desist letter informing the Respondent of its interest and trade mark registration of the EMERTON mark.
The Respondent claims that the Complainant knew or ought to have known that its case was fatally weak and that it could not prove the essential elements required by the test under the Policy and that this Complaint amounts to a case of reverse domain name hijacking. In particular, the Respondent notes that the Complainant and its experienced counsel should have known that the Complaint could not succeed in circumstances that the disputed domain name was registered many years prior to the commencement of the Complainant's business and first use and registration of its trade mark. In addition, the Respondent argues that the Complainant's unsolicited offer to purchase the disputed domain name for USD 50,000 was a false offer masked as a legitimate commercial enquiry which the Complainant used to manufacture "evidence" in support of this Complaint.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns several trade mark registrations for its EMERTON word mark, including French trade mark registration number 113835650, registered on October 10, 2011 and European Union trade mark registration number 011463445 registered on April 25, 2013. The disputed domain name (other than the top level element) is identical to the Complainant's mark and as a result the Panel finds that the Complaint succeeds under this element of the Policy.
B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. It says that it has not licensed, permitted or otherwise authorized the Respondent to use its trademarks and that the Respondent has not used the disputed domain name in relation to a bona fide business since its registration in 2002 and that use of the disputed domain name to resolve to various parking pages is not legitimate. However for the reasons set out under Part C below the Panel finds that it cannot be said that the Respondent had no rights or legitimate interests in the disputed domain name at the date of registration of the disputed domain name and accordingly that the Complaint does not succeed under this element of the Policy.
C. Registered and Used in Bad Faith
It is clear that the disputed domain name was registered by the Respondent in 2002, approximately 9 years before the Complainant commenced its business and use of the EMERTON name and mark in France and a similar time prior to the Complainant's first application to register the mark in France.
The Respondent, based in Hong Kong, China, submits that he registered the disputed domain name on the basis of its geographical significance and its use as a surname. The Panel accepts that he could not have registered the disputed domain name in bad faith in circumstances that the Complainant and its business did not exist at that time and there is no way in which he could have known of the Complainant's business or mark. Past panels have found that a domain name cannot be registered in bad faith where it was registered prior to the existence of the complainant's business and the use and registration of its trade mark and the consensus approach of panelists on this issue is noted at section 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition.
Neither is there any evidence that the Respondent subsequently targeted the Complainant or any business involving the EMERTON mark. Having registered the disputed domain name, the Respondent had it resolve to various "pay-per-click" parking pages but there was no evidence put forward by the Complainant that suggests that these pages in any way targeted the Complainant, whether by providing links to its competitors or to the Complainant itself.
The Panel accepts that it was the Complainant that initiated contact with the Respondent with an offer to purchase the disputed domain name. When the Respondent did not respond, the Complainant persisted several times and it was only after the Respondent replied that the Complainant sent a cease and desist letter informing the Respondent of its interest in and trade mark registration of the EMERTON mark. This does not support the Complainant's case that the Respondent sought to profit unreasonably from the disputed domain name in bad faith. There is nothing to suggest that the Respondent pro-actively sought out the Complainant with an offer for sale or even that it took advantage of the first approach made by the Complainant in order to make extraordinary profits from the sale of the disputed domain name.
For the foregoing reasons, the Complaint is denied.
The Respondent has sought a finding of reverse domain name hijacking against the Complainant.
For the reasons set out above, it seems to the Panel that this Complaint is without merit at all and was entirely contrived in order to obtain a domain name that the Respondent had bona fide registered many years prior to the commencement of the Complainant's business or the registration of its trade marks.
Following the initial refusal of the Complainant's offers for purchase of the disputed domain name the Complainant still attempted to obtain the disputed domain name by filing this Complaint under the Policy in circumstances that there was clearly no registration in bad faith, or evidence of targeting of the Respondent by the Complainant and therefore in which the Complaint could never succeed. The Panel also notes that the Complainant was advised by experienced counsel in these proceedings and therefore should have been aware of the prospective outcome if a decision was issued but still chose to file the Complaint. This has wasted the Respondent's time and resources unnecessarily and the Panel has no hesitation in finding that this Complaint amounts to a case of reverse domain name hijacking.
M. Scott Donahey
The Hon Neil Brown Q.C.
Date: June 27, 2016