WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Baby Delice v. Registration Private, Domains by Proxy, Inc / Reuel Ghosh, Erevmax, Inc.
Case No. D2017-0755
1. The Parties
The Complainant is Baby Delice of Vitrolles, France, represented by BBLM Avocats, France.
The Respondent is Registration Private, Domains by Proxy, Inc of Scottsdale, Arizona, United States of America / Reuel Ghosh, Erevmax, Inc. of Colonia, New Jersey, United States of America.
2. The Domain Name and Registrar
The disputed domain name <togolo.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 13, 2017. On April 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 14, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 20, 2017 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 April 24, 2017.
The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on April 25, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 15, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 19, 2017.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on May 26, 2017. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is the owner of registered trademarks for the mark TOGOLO, the earliest of which is registered with the National Institute of Industrial Property (France), no. 97/691131, and is a semi-figurative mark consisting of a black oval with the word "Togolo" in white superimposed in a stylized script. This mark was registered on August 5, 1997 in international class 30 in respect of confectionery, chocolates and sweets. The Complaint is extremely brief and the Panel is not told anything about the extent of use of the Complainant's TOGOLO mark or the Complainant's commercial activities in general.
According to the WhoIs record, the disputed domain name was created on December 28, 2005. The registrant disclosed in such record appears to be an incorporated entity based in New Jersey, United States of America ("USA"). The Panel is not told anything else about the Respondent or its commercial activities. The website associated with the disputed domain name appears to be a parking page provided by the Registrar featuring a variety of sponsored advertising listings which do not relate to the goods in respect of which the Complainant's trademark is registered. It appears that when the Complainant's representative visited the associated website it was unavailable and an "error 404" message was generated.
In October 2016, a representative of the Complainant entered into an arrangement with the Registrar whereby the latter was instructed to attempt to conduct negotiations with the Respondent to purchase the disputed domain name on the Complainant's behalf. According to a communication received from the Registrar, the Respondent replied to the invitation to negotiate specifying a proposed price but the Parties failed to reach agreement and it appears that the negotiations were abandoned thereafter.
5. Parties' Contentions
The Complainant contends that the disputed domain name is identical to trademarks in which the Complainant owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant notes that the disputed domain name contains the Complainant's TOGOLO mark in its entirety and adds that the addition of the generic Top-Level Domain ("gTLD") suffix ".com" is not sufficient to escape a finding that the disputed domain name is identical to the trademark.
The Complainant notes that it has not licensed or otherwise authorized the Respondent to use the TOGOLO trade mark. The Complainant asserts that because the disputed domain name is identical to the Complainant's trademark, the Respondent cannot reasonably demonstrate an intention to use the disputed domain name in connection with a bona fide offering of goods or services. The Complainant notes that the Respondent is not known as "Baby Delice" and argues that the Respondent is not commonly known by the disputed domain name. The Complainant asserts that the Respondent cannot demonstrate a legitimate noncommercial or fair use of the disputed domain name because it is inactive, adding that it could not have been used without infringing the Complainant's intellectual property rights.
The Complainant submits that it is reasonable to infer that the Respondent registered the disputed domain name with full knowledge of the Complainant's trademark given the latter's distinctiveness. The Complainant describes contacting the Registrar and notes that the Respondent proposed a sum of USD 15,000 for the disputed domain name. The Complainant suggests that the fact that the website associated with the disputed domain name has been inactive may be considered as passive holding of the disputed domain name which it adds may be interpreted as bad faith registration and use in terms of the Policy.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
There are two parts to the inquiry under the first element of the Policy. The Complainant must first demonstrate that it has rights in a trademark and secondly that the disputed domain name is identical or confusingly similar to such trademark.
In the present case, the Complainant has provided evidence of its TOGOLO registered trademark, as described in the factual background section above, to the satisfaction of the Panel. The Panel notes that the second level of the disputed domain name is identical to such trademark. The Panel disregards the figurative/stylized elements of the trademark as they are incapable of representation in a domain name and the textual elements are suitably prominent and severable therefrom (see section 1.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") on this topic).
The gTLD, in this case ".com", is typically disregarded for the purposes of comparison on the grounds that this is wholly generic and required for technical reasons only.
In these circumstances, the Panel finds that the Complainant's trademark is identical to the disputed domain name and thus that the first element under the Policy has been established.
B. Rights or Legitimate Interests
The requirements of paragraph 4(a) of the Policy are conjunctive. A consequence of this is that failure on the part of a complainant to demonstrate one element of the Policy will result in failure of the complaint in its entirety. Accordingly, in light of the Panel's finding in connection with registration and use in bad faith, it is unnecessary for the Panel to address the issue of the Respondent's rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location".
The Complainant's submissions on the question of registration and use in bad faith are scant in the extreme, as will be noted from section 5A above where they are repeated with only modest editing. Likewise, the Complainant's supporting evidence is sparse and of limited assistance, consisting as it does only of a WhoIs record in respect of the disputed domain name, the Complainant's trademark certificates, an "error 404" return for the website associated with the disputed domain name and the correspondence between the Complainant's representative and the Registrar's domain name broker, which itself is unremarkable.
The principal question for the Panel on this topic is whether the Respondent had the Complainant's rights in mind at the time when it registered the disputed domain name and whether it proceeded with bad faith intent to target such rights. There is insufficient evidence to that effect before the Panel on the present very limited record. The Complainant asserts that its trademark is distinctive. If the alleged distinctiveness had been supported by suitable evidence, it might have led the Panel in the direction of making a reasonable inference that the Complainant's mark is more probably than not being targeted by the Respondent's registration and use of the disputed domain name. However, the Complainant fails to show why, how and to what extent its mark is distinctive. Specifically, the Complainant has failed to present any evidence that is typically required to show distinctiveness such as the nature of the use of the mark, the amount of sales under the mark, and the nature and extent of advertising using the mark. The Panel can see that the mark is not a word in the English language but this is as far as the Panel can go on its own. Is "Togolo" a unique, coined or "made up" term and what are its origins? Is there evidence that reasonably excludes the possibility of the term's use by an entity such as the Respondent in ways independent from the Complainant's mark? Does the term uniquely or principally refer to the Complainant or its goods or services, for example on Internet search engines?
In any event, how might the Complainant's trademark, registered in France, have come to the knowledge of the Respondent, an entity in the USA, on or prior to the date of creation of the disputed domain name? Does the reach of the Complainant's trademark or the Complainant's commercial activities extend to the USA, whether by trading, global or substantial Internet presence, business location or other reason? How and where, in general, has the Complainant's trademark been used? The Panel does not know and in the absence of answers to all or at least several of the outstanding questions on this topic is not prepared to infer bad faith on the part of the Respondent simply from the fact that the website associated with the disputed domain name either displays the Registrar's parking page or returns an "error 404" page, or from the fact that the Respondent named a price for the disputed domain name when it received an unsolicited approach from agents acting on behalf of the Complainant, in particular when the Complainant's identity and interest was not disclosed to the Respondent by such agents.
The Complainant submits that passive holding of a domain name may lead to an inference of registration and use in bad faith on the part of a respondent. The Panel agrees that this is so in appropriate circumstances. Section 3.3 of the WIPO Overview 3.0 sets out the consensus view of WIPO panels on this topic, including the fact that non-use of a domain name does not prevent a finding of bad faith. However, as the section goes on to note, panels will look at the totality of the circumstances of a given case including in particular the degree of distinctiveness or reputation of a complainant's mark. This presupposes that a UDRP panel will be provided with sufficient evidence, including material supportive of such distinctiveness or reputation together with a full description of the background circumstances, rather than a mere unsupported assertion as the Complainant has offered here. In the Panel's opinion, neither the fame, distinctiveness or repute of the Complainant's mark is sufficiently self-evident for the Panel to be able to make a finding in that respect and this is particularly important to the question of registration and use in bad faith where the Respondent is not based in the Complainant's jurisdiction.
The Panel notes that it could have requested further information by way of a procedural order to allow the Complainant to supplement its case. However, given the Complainant's assertion of the distinctiveness of its mark within the Complaint it must already have been in the Complainant's reasonable contemplation that suitable supportive evidence and/or more detailed submissions would be required. As the panel in Grove Broadcasting Co. Ltd v. Telesystems Communications Limited, WIPO Case No. D2000-0703 stated, "[a] Complainant should 'get it right' the first time and should have provided all the information necessary to prove its case from the material contained in the Complaint and its annexes alone".
In all of these circumstances, the Panel finds that the Complainant has failed to prove on the balance of probabilities that the disputed domain name has been registered and is being used in bad faith and thus the third element under the Policy has not been established and the Complaint fails.
For the foregoing reasons, the Complaint is denied.
Andrew D. S. Lothian
Date: June 9, 2017