WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dama S.p.A. v. Registration Private, Domains By Proxy, LLC / Alexandr Tymoshenko, DomainInvestGroup / Atlanta Capital Inc
Case No. D2016-0915
1. The Parties
The Complainant is Dama S.p.A. of Varese, Italy, represented by Società Italiana Brevetti S.p.A., Italy.
The Respondents are Registration Private, Domains By Proxy, LLC / Alexandr Tymoshenko, DomainInvestGroup of Kyiv, Ukraine / Atlanta Capital Inc of Kyiv, Ukraine, internally represented.
2. The Domain Names and Registrar
The disputed domain names <paul-shark.boutique> and <paulshark.boutique> are registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 6, 2016. On May 6, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 6, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 9, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 11, 2016.
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 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on May 20, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 9, 2016. Pursuant to Paragraph 5(b) of the Rules, on the Respondents' request the due date for Response was extended through June 13, 2016. The Response was filed with the Center on June 10, 2016.
The Center appointed Richard G. Lyon as the sole panelist in this matter on June 21, 2016. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. The Panel has submitted his 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, which is based in Italy, manufactures, distributes, and sells men's, women's, and children's apparel and accessories. In the 1970s the Complainant launched its Paul & Shark sportswear brand, which is today marketed in many countries including Ukraine. The Paul & Shark brand employs a yachting theme and often uses a sail in its promotional material. The Complainant owns numerous trademarks for "Paul & Shark", both words-only and with various designs, in Italy and the European Union, the earliest of which date back to the 1980s. The Complainant owns an international mark for Paul & Shark and design that was registered in 1985. The Complainant also owns and uses numerous generic Top Level Domain (gTLD) and county code Top Level Domain (ccTLD) names with "paulshark" as the main address.
The Respondent Alexander Tymoshenko, based in Ukraine, is in cooperation with others engaged in the manufacture and sale of equipment and accessories for fishing and hunting. He registered the disputed domain name <paulshark.boutique> in August 2014 and the disputed domain name <paul-shark.boutique> in February 2016, in each instance using a privacy service. Screenshots submitted with the Complaint indicate that each disputed domain name resolved to either a website with shark-related hyperlinks or an offer to sell the domain name. When the Panel accessed the former he received an error message "Requested domain doesn't work;" the latter resolved to a standard Registrar-generated page of hyperlinks with no reference to the Complainant or the Complainant's products.
The Complainant sent the Respondent a cease-and-desist email on December 28, 2015. Email correspondence between the parties continued through March 2016, at which point the Respondent Alexander Tymoshenko made an offer to sell both disputed domain names to the Complainant.
5. Parties' Contentions
The Complainant contends as follows:
i. While <paul-shark.boutique> is registered to the Respondent Alexander Tymoshenko and <paulshark.boutique> to the Respondent Atlanta Capital Inc, the parties' email correspondence indicates that both are owned or controlled by the same person or entity. Identical contact details (telephone and telefax numbers) bolster this conclusion. Consolidation of both disputed domain names in a single proceeding is therefore appropriate.1
ii. The Complainant holds rights in "Paul & Shark" by reason of its many registered trademarks. One disputed domain name is identical and the other confusingly similar, as the gTLD and ampersand are not relevant to a comparison between the Complainant's marks and the disputed domain names. Several UDRP panels have held that the Complainant's marks and brand are well known.
iii. The Complainant has never licensed or otherwise authorized the Respondent to use its marks and none of the Respondents has been commonly known by any combination of "paul" and "shark." Based upon a trademark search through the Saegis database, no Respondent holds a trademark for "paulshark." The lack of any intention to set active websites is also evidenced by the fact that the Respondent registered a number of domain names corresponding to well-known trademarks, e.g., <brunellocucinelli.boutique>, <emporioarmani.boutique>, <giorgioarmani.boutique>, and <lexus.boutique>. The Respondent has never made use of the disputed domain names for any bona fide offering of goods or services.
iv. The renown of the Complainant's marks renders the Respondent's incorporation of them into domain names "in and of itself, an indication of bad faith." Both disputed domain names have been registered primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the Complainant (the owner of the trademark or service mark) or to a competitor of the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain names, see Policy paragraph 4(b)(i), as further indicated by the Respondents' offer to sell the disputed domain names for USD 300,000, clearly far in excess of their costs related to them.
Use of the disputed domain names for pay-per-click revenues, even if these pages were Registrar-generated, is further evidence of bad faith.
The Respondents' registration of the <paul-shark.boutique> disputed domain name following receipt of the Complainant's cease-and-desist notice, and its portfolio of domain names that incorporate verbatim other well-known brands, reveal a pattern of abusive domain name registration. In support of this contention the Complainant lists domain names owned by the Respondent that include as their dominant feature "Volvo", "Lexus", "Armani", and "Walt Disney".
The Respondent contends as follows:
i. The Complainant's marks are not well known in Ukraine. The Respondent's business uses "paulshark," one word, and is thus distinguishable and not confusingly similar to the Complainant's "Paul & Shark" mark.
Confusion is unlikely as the Complainant's target market, yachting enthusiasts, does not overlap with the Respondent's, hunters and fishermen. The parties' logos are not similar further making confusion unlikely.
ii. In the Respondent's words: "I have registered the disputed domain names with an intention to put up a website in order to promote my own business. However, in view of the fact that:
- firstly, the target customers of our products are not active Internet users, and Internet business in Ukraine is poorly developed in general;
- secondly, as you might know, Ukraine is at war since 2014 and the country's economy is experiencing a deep crisis,
We had to suspend the launch of our Internet project."
In support of these contentions the Respondent provides a photograph of a fishing tackle box branded as "Paulshark", a trademark registration application with the Ukrainian Patent Office, and renderings of the parties' dissimilar logos.
Many domain names that incorporate "paulshark" remain available for registration. If the Complainant were serious about protecting its brand and marks it would have acquired these. The Respondents' registration of the <paul-shark.boutique> disputed domain name subsequently to the Complainant's notice to the Respondent indicates that the Complainant is less than serious in its allegations of diversion.
iii. Again quoting the Respondents: "I believe that my registration of the domain names 'paulshark.boutique' and 'paul-shark.boutique' was absolutely bona fide and lawful given the fact that I have been manufacturing products under the same name for more than 5 years and they are well known in my community under the brand name 'Paulshark' even though I haven't officially registered this trademark."
The USD 300,000 asking price reflects years of investment in the Respondents' business and the cost of changing its name after that period of time. The Respondents registered the disputed domain names in good faith, solely for their hunting and fishing-related business.
The Respondent Alexander Tymoshenko registered the other domain names cited by the Complainant "long ago" on behalf of third parties. At no time has a single such domain "been transferred to the ownership or sold to another person, which indicates that these domains have not been registered for the purpose of selling them."
6. Discussion and Findings
In order to prevail the Complainant must demonstrate by a preponderance of the evidence each of the elements of paragraph 4(a) of the Policy: that the disputed domain names are identical or confusingly similar to a mark in which the Complainant has rights; that the Respondents lack rights or a legitimate interest in the disputed domain names; and that the Respondents registered and used the disputed domain names in bad faith.
A. Identical or Confusingly Similar
The Complainant holds duly registered rights in many trademarks for "Paul & Shark". "Determination of confusing similarity under paragraph 4(a)(i) of the Policy is a comparison of the letters, words, sound, and other sensate aspects of the disputed domain name to those of Complainant's marks." MasterCard International Incorporated, MasterCard Europe SPRL v. IT Manager/ Crosspath, WIPO Case No. D2009-1714. As the Complainant argues, punctuation and the gTLD are normally irrelevant. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2. The Complainant has established this Policy element.
B. Rights or Legitimate Interests
As paragraph 4(a)(ii) requires proof of a negative, the Complainant may satisfy this element by making a prima facie showing of lack of rights or legitimate interests. Doing so shifts the burden of production to the Respondents to demonstrate the contrary, with the ultimate burden of proof always remaining with the Complainant. WIPO Overview 2.0, paragraph 2.1.
The Complainant here makes its prima facie case by stating without contradiction that it has never authorized the Respondents to use its marks and that none of the Respondents has been commonly known by any combination of "paul" and "shark". The Respondents counter with the assertion that for some years they have been making and selling fishing and hunting products branded as "Paulshark" (one word, no ampersand). Though not expressly stated in the Response, the Respondents rely in part upon the safe harbor of paragraph 4(c)(i) of the Policy, which identifies as a legitimate interest "before any notice to you of the dispute, your 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."
The record contains no evidence of actual use in commerce of any such Paulshark brand at any time. A product picture, logo, trademark application, or all three do not demonstrate use of the name in the marketplace. The Respondents have submitted no invoices, sales figures, advertising, or similar proof of an actual business, though such proof is clearly within their control if they in have been "manufacturing products . . . for more than 5 years." While the economic and political conditions in Ukraine cited by the Respondents are quite true, the Respondents claim that they impeded only the launch of their Internet business, not all business.
The Respondents' evidence is of the sort that often has been found to support a defense of "demonstrable preparations" to use a domain name. The bar is not high when it comes to satisfying Policy paragraph 4(c)(i); "[e]ven perfunctory preparations have been held to suffice for this purpose." Télévision Française 1 (TF1) v. Khaled Bitat, WIPO Case No. D2007-0137. The Respondents' proof might well suffice2 but for the fact that none of it meets the proviso at the clause's beginning that the preparations occur "before any notice to you of the dispute." The product photograph and logo are undated and the Respondents admit that the trademark wasn't applied for until after receiving the Complainant's cease-and-desist notice. Just as to pre-dispute sales, evidence of pre-dispute preparations to use, if extant, lies within the Respondents' control. Without such pre-dispute evidence the Respondents have failed to rebut the Complainant's prima facie case.
The Complainant prevails under this Policy head.
C. Registered and Used in Bad Faith
At the outset the Panel dismisses as not relevant to this proceeding the Respondents' contention that the availability of many domain names that include the Complainant's mark furnishes a defense. Just as would the fact that other third parties may be using domain names that incorporate the Complainant's marks, this might aid the Respondents in an infringement action but not in a UDRP proceeding. The question here is whether on the particular facts of this case these Respondents are entitled to use these disputed domain names. Just as which infringers or cybersquatters to pursue is the exclusive prerogative of the mark owner, so is a mark owner's decision whether to register whatever domains incorporating that mark it chooses.
The Panel also finds no defense simply because the parties' target markets have little overlap. While this circumstance may be relevant in some cases, notably those involving authorized resellers or domain names consisting of dictionary words, see SARL CM v. Ignazio Aronica, WIPO Case No. D2006-1402, in this case the scope of the Complainant's trademark rights matters naught. By analogy a person could not register <exxonmobil.boutique> to sell shoes just because the mark owner's trademark rights do not extend to shoes. The question is whether the registrant is using (or not) the domain name to take advantage of the goodwill attached to the mark. A mistaken belief, even if honestly held, that anyone may use another's marks so long as there is no trademark infringement similarly fails in this proceeding.
The issue of bad faith in this case would be easy to decide if the record demonstrated conclusively that the Respondents knew of the Complainant and its "Paul & Shark" mark when they registered the disputed domain names. With such knowledge, the Respondents' pay-per-click use, even though not directed specifically at the Complainant or the Complainant's products, would indicate an intention to benefit from identification from what even the Respondents acknowledge is a well-known retail brand.
But the evidence is hazy on the question of such knowledge as to the disputed domain name <paulshark.boutique>. The Complainant's list of owned or franchised retail stores identifies only eight in all of Ukraine. There is no indication of the Complainant's advertising or sales in that country or any indication that Ukraine is fashion-conscious or prominent in yachting circles. The "must have known" allegation, quoted in note 2, lacks factual support.
The Respondents half-deny such knowledge – "the Complainant's brand 'Paul & Shark Yachting' is not widely known and recognizable" in Ukraine; "neither I nor the majority of people in Ukraine know that 'Paul & Shark Yachting' was the supplier of equipment for the Olympic Games in 1992, sponsored the restoration of the gondolas or supported the regatta and rowing competitions. Therefore, please do not take into account this fact as the evidence that 'Paul & Shark Yachting' trademark is widely known." Not an outright denial, but not unreasonable as a basis for claiming reason not to know.
The offer to sell by itself does not demonstrate bad faith. The email correspondence was initiated by the Complainant and is not complete; it may well be, as the Respondents claim, that they were simply countering an offer from the Complainant. In a permitted negotiation – not initiated by the Respondents – the reasonableness of either party's offer is a matter for the marketplace, not this Panel's opinion.
Three facts tip the balance of probabilities in the Complainant's favor. First and most importantly, the Complainant's mark is fanciful and distinctive. Though comprised of two common English words the combination has no meaning in everyday English, even in English or American slang. Absent proof of another explanation for registration, say that the combination is a common phrase in another language such as Ukrainian or Russian, it would be remarkable indeed if the Respondents chose it by coincidence. The Respondents do not allege, much less prove, an alternate explanation. Second, the Respondents' acquisition of a second domain name after the cease-and-desist letter is indicative of bad faith, see Thule Sweden AB v. Cameron David Jackson, WIPO Case No. D2016-0414; Statoil ASA ("Statoil") v. Cameron Jackson, WIPO Case No. D2015-2226. Finally, looking most favorably upon the Respondents as possible, their registration of many domain names incorporating well-known brands reveals more than a passing knowledge of the UDRP and the conventions of domain name registration. Likewise it reveals a blithe disregard for the mandatory undertaking in paragraph 2 of the Policy that "to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party."
In light of these findings, the Panel believes that the Complainant has demonstrated that more likely than not the Respondents knew of the Complainant's mark when they registered the <paulshark.boutique> domain name.3 From there it is an easy inference that they were registered and subsequently used "intentionally . . . to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location." Policy, paragraph 4(b)(iv).
The Complainant has proven bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <paul-shark.boutique> and <paulshark.boutique> be transferred to the Complainant.
Richard G. Lyon
Date: June 29, 2016
1 The Panel finds these arguments persuasive, and the Respondents' failure to contest them and defending on the merits as to both disputed domain names render the issue moot.
2 The Complainant implies that because "It goes without saying that the Respondent has been well aware of the Complainant's rights in and to the trademark," any use of its mark for any purpose is not legitimate. Given the parties' different products and targeted audiences, this Panel is not so sure. That would likely raise a question of Ukrainian trademark law that the Panel cannot answer. For the reasons given in the text, however, that issue is not pertinent to this proceeding.
3 Given that registration of <paul-shark.boutique> post-dated the Complainant's cease-and-desist letter, that disputed domain name was obviously registered with such knowledge.