WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TOBAM v. M. Thestrup / Best Identity
Case No. D2016-1990
1. The Parties
The Complainant is TOBAM of Paris, France, represented by Cornet Vincent Segurel, France.
The Respondent is M. Thestrup / Best Identity of Copenhagen, Denmark, represented by Lewis & Lin, LLC, United States of America.
2. The Domain Name and Registrar
The disputed domain name <tobam.com> is registered with eNom, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 30, 2016. On October 3, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date 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 October 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 27, 2016. The Response was filed with the Center on October 27, 2016.
The Center appointed Adam Taylor as the sole panelist in this matter on November 7, 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.
The Complainant and the Respondent made unsolicited supplemental filings on November 10 and 15, 2016, respectively.
4. Factual Background
The Complainant is an asset management firm, incorporated in 2005. It has traded under the name "Tobam" since 2008.
The Complainant is the licensee of a number of trade marks for TOBAM owned by the Complainant's founder, Yves Choueifaty, including French trade mark no. 3378423, filed September 5, 2005 in classes 36 and 42 and registered November 18, 2009 and European Union trade mark no. 8723637, filed November 16, 2009, and registered May 19, 2010 in class 36.
The disputed domain name was registered on October 11, 2004.
The disputed domain name has never resolved to an active website.
On February 24, 2011, the Complainant emailed the Respondent to enquire if disputed domain name was for sale.
During the period from 2011 to 2013 there were intermittent purchase negotiations between the parties via the Sedo platform, whereby the prices put forward by the Respondent ranged from USD 24,500 to USD 33,000 and the Complainant offered between USD 500 and USD 5,000. In the course of the negotiations, the Complainant asserted its trade mark rights and the Respondent repeatedly asked for details, asserting that to the best of its knowledge there were no third party trade mark rights at the date of registration of the disputed domain name and that the Respondent would transfer the disputed domain name to the Complainant at no cost if its trade marks did predate registration of the disputed domain name. The Complainant did not provide details of its trade marks. At one point in the period June – September 2012, the Respondent mentioned this lack of reply and said: "[…] it seems that you are trying to reverse hijack the domain as our registration predates your trademark." The Complainant replied: "No, don't worry: we are looking at our legal options and that takes time."
On May 2, 2016, the Complainant's lawyer sent a legal letter to the Respondent. The Respondent responded by email on June 7, 2016, again asking for details of the Complainant's trade marks. (The Complainant denies receiving this email.) On July 26, 2016, the Complainant's lawyer sent a chasing email without reference to the Respondent's email.
5. Parties' Contentions
The following is a summary of the Complainant's contentions:
The Complainant has a strong reputation and is widely known in Europe and beyond.
The disputed domain name is identical to the Complainant's trade mark.
There is no evidence of a bona fide offering of products or services by the Respondent. Passive holding does not constitute legitimate noncommercial or fair use.
The disputed domain name has no value to the Respondent other than the goodwill and reputation attached to the Complainant's marks.
To the Complainant's knowledge, the Respondent has never been commonly known by the disputed domain name.
The Complainant has not licensed the Respondent to use its trade marks or register a domain name including its trade marks.
The word "tobam" is arbitrary and not one which would legitimately be chosen or maintained unless seeking to create an impression of an association with the Complainant.
The failure of the Respondent to respond to the Complainant's communications on May 2, 2016 and July 27, 2016 is evidence of bad faith. There is no proof that the Complainant's communications were received. The Respondent intentionally provided incorrect contact information in order to evade service.
If the Panel considers that there is insufficient evidence of registration in bad faith, the Complaint does not necessarily fail and the Panel must consider whether in all the circumstances the Respondent is acting in bad faith per Ville de Paris v. Jeff Walter, WIPO Case No. D2009-1278.
The use of the disputed domain name constitutes passive holding in bad faith. The Complainant's trade marks have a strong reputation and are widely known. It is not possible to conceive of any legitimate use of the disputed domain name by the Respondent. Any active use of the disputed domain name will inevitably lead to a likelihood of confusion with the Complainant's mark. Given the lack of response by the Respondent to the Complainant's communications, the Respondent has breached its obligation under the registration agreement to provide accurate contact details to the Registrar.
The Respondent has failed to comply with the registrant representation regarding non-violation of third party rights in paragraph 2 of the Policy, which arises on registration or renewal of a domain name. The Respondent relies on Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786 ("Octogen"). The Respondent repeatedly renewed the disputed domain name after registration of the Complainant's trade marks and the Complainant's activity was widely known under the distinctive sign "Tobam".
The following is a summary of the Respondent's contentions:
In 2000, the Respondent set up a business with a view to offering personalised surname and business email addresses. To this end he registered some 3,000 surname domain names as well as various potential future business names comprising simple two-syllable words such as the disputed domain name.
The Respondent made considerable efforts to check for conflicting rights before registration of domain names, including in relation to the disputed domain name. To the best of his knowledge, no one traded under the name "Tobam" at the time of registration of the disputed domain name on October 11, 2004.
The Complainant was incorporated nearly a year after the registration of the disputed domain name. The timing of registration of the Complainant's domain names and archive versions of the Complainant's own website suggest that it did not start trading under the name "Tobam" until at least 2008.
The Respondent's business did not take off and, starting in 2010, the Respondent offered the disputed domain name and other generic domain names for sale on Sedo.
The Respondent first became aware of the Complainant when he received the first communication on behalf of the Complainant in 2011.
The Respondent accepts that the Complainant has established current trade mark rights in name identical to the disputed domain name based on the registered trade marks it cites.
The Complainant has not established any use of its trade mark in Denmark, where the Respondent resides.
The Respondent registered the disputed domain name in connection with a bona fide proposed email business, long before having notice of this dispute.
Offering for sale generic dictionary and last name domain names, including the disputed domain name, was another legitimate use.
Passive holding alone is not evidence of a lack of rights or legitimate interests.
It is disingenuous for the Complainant to claim that the Respondent registered the disputed domain name to create an impression of association with the Complainant when the Respondent registered the disputed domain name before the Complainant adopted its trade mark.
The Complainant is wrong to say that the disputed domain name is of no value to the Respondent independently of the Complainant's trade mark. The Respondent has sold similar brand-able domain names in the past.
The Complainant has failed in its burden to establish that the Respondent lacks rights or legitimate interests.
The Respondent cannot have registered the disputed domain name in bad faith as it predates the first alleged use of its trade mark by the Complainant. The Respondent registered the disputed domain name in good faith for the above-mentioned business purpose.
The overwhelming majority of UDRP panels have ruled that both bad faith use and registration must be established to prevail in a UDRP complaint.
In any case, there has been no bad faith use.
Failure to respond to an abusive demand letter is not evidence of bad faith. In fact the Respondent did respond by email to the Complainant's letter of May 2, 2016. The Complainant failed to respond, most likely because the answers to the Respondent's questions would have established that the Respondent's rights predated those of the Complainant.
The Respondent's contact information on the WhoIs record is accurate. In any case, inaccurate information alone is insufficient to demonstrate bad faith.
Passive holding alone is not evidence of bad faith. There is nothing wrong with registering a generic domain name and holding it. When passive holding has been found to evidence bad faith, it has been in cases where a registrant targets a known trade mark.
Notwithstanding the Octogen line of decisions, the overwhelming majority of panels have resoundingly rejected the proposition that a renewal of a domain name constitutes a new registration for purposes of the UDRP.
The fact that the Respondent is not willing to sell the disputed domain name to the Complainant for the price that Complainant prefers to pay does not transform Respondent into a cybersquatter.
The Complainant is guilty of reverse domain name hijacking.
The Complainant was aware that the Respondent registered the disputed domain name before the Complainant acquired rights.
The Complainant sought to mislead the Panel by claiming that the Respondent failed to respond to the Complainant's demand letter, by claiming that the Respondent's WhoIs information was incorrect and by omitting key facts about its failed attempts to purchase the disputed domain name, which demonstrated that the Complainant attempted to bully the Respondent into selling the disputed domain name for less than its value.
In the course of the pre-action correspondence, the Respondent warned the Complainant that it appeared to be to trying to reverse domain name hijack the disputed domain name as it predated the Complainant's trade mark.
The Complainant knows that there is not a hint of bad faith on the Respondent's part. Because of the timing issue, the Complainant has resorted to a heavily disfavoured and discredited prior UDRP decision – and even that case did not involve a domain name predating a trade mark.
C. Complainant's Supplemental Filing
The following is a summary of the Complainant's supplemental filing insofar as admitted (see below):
The Complainant has proved use of its trade mark "all over Europe" since 2008.
The Complainant did not make threats. The Respondent made ambiguous allegations about the Complainant's trade mark predating the disputed domain name. That is why the potential buyer responded that he was looking into "his legal options" as he was entitled to do.
The Complainant never received the Respondent's alleged email of June 7, 2016, which was sent to a generic email address and not to the email address of the Complainant's counsel shown on the bottom of its letter. Therefore the Complainant did not fabricate evidence by failing to mention the email in its Complaint.
The Complainant has acknowledged since day one that the disputed domain name was registered before the trade marks and invoked a significant amount of case law to show that use in bad faith can suffice in certain circumstances even though the Respondent did not register the domain name in bad faith.
The Respondent has not established that the overwhelming majority of UDRP panels have ruled that both bad faith registration and use must be established. It has cited only five cases.
The Complainant did not provide any misleading statement of facts. To the Complainant's knowledge, the Respondent never answered or acknowledged the Complainant's 2016 correspondence and so it was reasonable to infer that the WhoIs details were incorrect or not kept up to date.
The onus of establishing reverse domain name hijacking is on the Respondent. Mere lack of success is insufficient.
The Complainant has not misrepresented that the disputed domain name predated its trade mark. The Complainant's arguments are substantiated by case law and/or evidence.
The Complainant's attempts to buy the disputed domain name are not bad faith. The Complainant did not omit key facts about its failed attempt to purchase the disputed domain name as it has no written evidence thereof and in any case those attempts are not relevant to bad faith.
Denmark is amongst the territories covered by the Complainant's EU trade marks.
The Complainant has never bullied the Respondent into selling the disputed domain name. On the contrary, the Respondent abusively fixed a high price for the disputed domain name based on the Complainant's reputation and not in relation to added value supplied by the Respondent.
6. Discussion and Findings
A. Supplemental Filings
Both parties have made unsolicited supplemental filings.
Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of supplemental filings. Paragraph 10(d) states: "The Panel shall determine the admissibility, relevance, materiality and weight of the evidence". Paragraph 12 states: "In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties".
The principles which the Panel should apply in deciding whether or not to admit supplemental filings have been considered in many cases under the Policy. See, e.g., The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447. The principles include: that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimize prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.
With these principles in mind, the Panel has decided to admit limited parts of the Complainant's supplemental filing, in particular insofar as (a) it casts more light on the facts and (b) relates to the Respondent's assertion of reverse domain name hijacking. See the summary of the admitted portion of the Complainant's supplemental filing above. The Panel has declined to admit the remainder of the filing on the grounds that the material is either standard rebuttal or could have been addressed in the Complaint or is irrelevant, given the Panel's findings regarding the third element of the Policy (see further below).
The Panel has decided not to admit the Respondent's supplemental filing because it does not add anything material to the Respondent's extensive primary submission.
B. Identical or Confusingly Similar
It is not in dispute that the Complainant has acquired rights in the mark TOBAM as licensee of the registered trade marks for that term.
The disputed domain name is identical to the Complainant's trade mark, disregarding the generic Top-Level Domain ("gTLD").
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
It is unnecessary to consider this element in light of the Panel's conclusion below under the third element.
D. Registered and Used in Bad Faith
It is not in dispute that the relevant registered trade marks post-date registration of the disputed domain name in 2004. Likewise, the Complainant's unregistered rights; the Complainant was only incorporated in 2005 and it only started trading in 2008.
Paragraph 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") states the following consensus view:
"Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date […], when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right."
While there are a handful of UDRP cases around 2009-2010, including those cited by the Complainant, which considered alternative approaches based on the warranty in paragraph 2 of the UDRP and the wording of paragraph 4(b), amongst other things, the overwhelming approach of UDRP panels since then has been to affirm the literal meaning of paragraph 4(a)(iii) of the Policy and to require bad faith at the time of registration or acquisition of the disputed domain name. See, e.g., Coolside Limited v. Get On The Web Limited, WIPO Case No. D2016-0335, Centroamerica Comercial, Sociedad Anonima de Capital Variable (CAMCO) v. Michael Mann, WIPO Case No. D2016-1709, New Forests Asset Management Pty Limited v. Kerry Schorsch, Global Advertizing, LLC, WIPO Case No. D2015-1415, Dreamlines GmbH v. Darshinee Naidu / World News Inc, WIPO Case No. D2016-0111, Lonza AG v. Onyx Networks, Inc., WIPO Case No. D2015-1460, Movius Interactive Corporation v. Dynamo.com, WIPO Case No. D2015-1717 and Intellect Design Arena Limited v. Moniker Privacy Services / David Wieland, iEstates.com, LLC, WIPO Case No. D2016-1349.
This Panel agrees and considers that lack of registration in bad faith is fatal to the case.
In those circumstances, the Respondent's reason for registering the disputed domain name is irrelevant. Whatever its motive, the Respondent could not have set out to target the then non-existent rights of the Complainant. It is therefore unnecessary to consider in detail the various arguments raised by the Complainant, for example relating to allegedly false contact details, likelihood of confusion etc. as these can only relate to use, rather than registration, in bad faith. In any case, in the Panel's view, none of the evidence put forward by the Complainant constitutes use of the disputed domain name in bad faith.
The Panel therefore concludes the Complainant has failed to establish the third element of paragraph 4(a) of the Policy.
E. Reverse Domain Name Hijacking ("RDNH")
The Respondent argues that the Complainant has been guilty of RDNH.
Paragraph 15(e) of the 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". RDNH is defined under the Rules as "using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name".
The Panel considers that the Complainant has been guilty of RDNH for the following reasons:
1. The Complainant has failed by a large margin. In the Panel's opinion, the Complainant knew or at least should have known that it could not prove one of the essential UDRP elements. The Complainant's representatives quoted extensively from UDRP case law and the Panel thinks it unlikely that they were unaware of the current overwhelming view of UDRP panelists as to the need to prove registration as well as use in bad faith.
2. The Complaint lacks candour in that it makes no mention of the communications between the parties via the Sedo website in 2011 – 2013 regarding purchase of the disputed domain name by the Complainant. Even if the Complainant had no "written evidence" of such communications, and even if it were unable to access the Sedo site to obtain such evidence (and the Complainant has not clearly stated that that was so), the Complainant should at the least have mentioned the exchanges. Whether or not the Complainant considered that these matters were directly relevant to bad faith, nonetheless the Complainant relied on its allegedly unanswered 2016 letter and email as evidence that the Respondent had provided false contact details and so the failure to mention the previous extensive communications conveyed the misleading impression that the Respondent was generally evasive and non-responsive. (For completeness, the Panel would add that it draws no conclusion from the Complainant's failure to refer to the Respondent's email of June 7, 2016, and the Panel accepts the Complainant's assertion that it never received it.)
3. In the Panel's view, this is a classic "Plan B" case, i.e., using the Policy after failing in the marketplace to acquire the disputed domain name. This stratagem has been described in several earlier UDRP cases as "a highly improper purpose" and it has contributed to findings of RDNH. See, e.g., Patricks Universal Export Pty Ltd. v. David Greenblatt, WIPO Case No. D2016-0653 and BERNINA International AG v. Domain Administrator, Name Administration Inc. (BVI), WIPO Case No. D2016-1811.
4. In the course of the pre-complaint correspondence, the Respondent referred to the Complainant's repeated failure to disclose details of its registered trade marks in response to the Respondent's requests and asserted that the Complainant was trying to reverse hijack the disputed domain name, which predated the Complainant's trade mark. This warning should have given the Complainant serious pause for thought but it ploughed on regardless. Indeed, the Complaint rather skirted around the timing issue, giving little detail about the Complainant's trading activity and at one point asserting that the word "tobam" was arbitrary and not one which would legitimately be "chosen or maintained" unless seeking to create an impression of an association with the Complainant. Whereas the Complainant knew that the disputed domain name could not possibly have been "chosen" with the then non-existent Complainant in mind. The Complainant only really faced up to the timing issue in its supplemental filing.
For the foregoing reasons, the Complaint is denied and the Panel finds that the Complainant has been guilty of Reverse Domain Name Hijacking.
Date: November 21, 2016