The Complainant is Rosa Maria Clarà Pallarès of Hospitalet de Llobregat, Spain, represented by Landwell, PricewaterhouseCoopers, Spain.
The Respondent is Domains by Proxy, Inc. / Domain Discreet / Dennis Heinz of Scottsdale, Arizona, United States of America, Funchal, Portugal, and Houston, Texas, United States of America, respectively.
The disputed domain name, <rosaclara.com> (the “Domain Name”), is registered with GoDaddy.com, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2010 naming Domains by Proxy, Inc. as the Respondent.
On May 28, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 1, 2010, the Registrar transmitted by email to the Center its verification response confirming that the Respondent Domain Discreet is listed as the registrant and providing the contact details.
On June 2, 2010, a Mr. Dennis Heinz emailed the Center to say that the Registrar had notified him of the Complaint, the Domain Name being one of his domain names. He informed the Center that the WhoIs information was out-of-date, but he was unable to amend it because the Domain Name had been locked.
On June 3, 2010, the Registrar confirmed to the Center that its “records indicate that Dennis Heinz does have a legitimate interest in/association with the [D]omain [N]ame”.
On June 3, 2010, the Center invited comments from the Complainant regarding a re-filing issue stemming from the fact that in 2005 the Complainant had failed in a complaint against Mr. Heinz in respect of the Domain Name (Rosa María Clara Pallarés v. Dennis Heinz, WIPO Case No. D2005-0548). On June 15, 2010, the Complainant filed an amended Complaint naming Domain Discreet as the Respondent.
In response to a notification by the Center that the Complaint was administratively deficient in an unrelated respect, the Complainant filed an amendment to the Complaint on June 18, 2010.
The Center verified that the Complaint together with the amended Complaints 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 so doing, by way of an email of June 21, 2010 the Center drew the Complainant’s attention to the issues surrounding re-filed complaints and concluded “… the Center’s prima facie assessment is that the Complainant has, on balance, pleaded grounds which might justify a Panel entertaining the re-filed Complaint.” The Center informed the Complainant that it would ultimately be for the Panel to decide the issue.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 21, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 11, 2010. The Response was filed with the Center by Mr. Heinz on July 11, 2010.
The Center appointed Tony Willoughby as the sole panelist in this matter on July 14, 2010. 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 Panel’s first task is to identify the proper Respondent in this administrative proceeding. Three potential candidates are identified in the heading, namely (i) Domains By Proxy, Inc., a privacy service offered by the Registrar and named in the original version of the Complaint, (ii) Domain Discreet, a privacy service offered by Register.com, the previous registrar of the Domain Name and identified by the Registrar as the registrant in response to the Center’s registrar verification request and (iii) Mr. Dennis Heinz, the person claiming to be the owner of the Domain Name, who says that he has recently been making use of the privacy services offered by first Register.com and then when he changed registrars, the Registrar.
The Panel is satisfied that Mr. Heinz has at all material times been the underlying registrant of the Domain Name. The Panel is so persuaded by a combination of two factors. First, the Registrar has confirmed that Mr. Heinz “does have a legitimate interest in/association with the [D]omain [N]ame”. Secondly, the Complainant has clearly assumed all along that Mr. Heinz is likely to be the underlying registrant, referring to him in Section V.B of the Complaint as “the supposed owner”.
The Panel proposes to treat Mr. Heinz as the Respondent and henceforth all references herein to the Respondent are references to Mr. Heinz.
The Complainant is a designer of wedding dresses. She and her company have since 1995 established a significant reputation and goodwill under and by reference to the trade mark ROSA CLARA, which is registered in various countries, including Spain, the Complainant’s home country and the United States of America, the Respondent’s home country.
The Panel is prepared to accept as fact for the purposes of this administrative proceeding that the Complainant’s ROSA CLARA bridal wear has been on retail sale in the United States of America since a date prior to registration of the Domain Name.
The Respondent is an American individual who registered the Domain Name in 1999.
In 2005 the Complainant launched Rosa María Clara Pallarés v. Dennis Heinz, WIPO Case No. D2005-0548, contending that the Respondent had registered the Domain Name in bad faith and that the fact that as at that date the Respondent had made no use of the Domain Name was indicative of his bad faith intentions towards the Complainant.
The panel in that case found that “the Complainant has failed to meet her burden of proof on the final element of the Policy”. There was nothing to support the contention that the Respondent was targeting the Complainant’s brand when he registered the Domain Name.
No active use of the Domain Name was made until December 2007 when it was connected to a site entitled “Rosa Clara – Diary of a Suicide Girl”. It was a blog site featuring posts from Rosa Clara, who claimed to have received a proposal of marriage. The next posts appeared in October 2008 in which she claims that the engagement has been broken off. The latest posts are dated July 2010 and one of the comments posted refers obliquely to this proceeding.
The Complainant contends that Mr. Heinz should not be treated as the Respondent. The privacy services are the registrants of record around the time that the Complaint was first filed. Mr. Heinz has not been identified as the registrant by the Registrar. All that the Registrar has said is that Mr. Heinz has a legitimate interest in/association with the Domain Name. In response to the registrar verification request the Registrar identified Domain Discreet as the registrant, so Domain Discreet should be treated as the Respondent.
The Complainant comments upon the unsatisfactory state of the registrars’ WhoIs databases and the Registrar’s responses to the email requests made of it by the Center.
The Complainant contends that this cannot be treated as a re-filed complaint.
The Complainant contends that the Domain Name is identical or confusingly similar to her ROSA CLARA registered trade mark.
The Complainant contends that the use which has been made of the Domain Name since the date of the earlier proceeding demonstrates that the Domain Name was registered and is being used in bad faith by someone who has no rights or legitimate interest in respect of the Domain Name. The Complainant contends that the registrant’s objective was to block the Complainant from registering the Domain Name.
The Respondent denies the Complainant’s allegations, explains that he has been the underlying registrant of the Domain Name throughout, using the privacy services to protect him from marketers, data gathering companies, scammers, etc.
He asserts that the confusion over the registrars’ databases stemmed from his change of registrars and the failure of the Registrar to update his contact details.
The Respondent contends that apart from this case and its predecessor, he has never come across the Complainant’s brand.
The Respondent contends that this is a re-filed case and that there is no basis for accepting it.
The Respondent contends that the Complaint was filed in bad faith and has been maintained in bad faith in the knowledge that it is misconceived.
Ordinarily, according to paragraph 4(a) of the Policy, for a complaint to succeed under the Policy, a complainant must prove that:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered in bad faith and is being used in bad faith.
However, additional preliminary considerations apply in the case of a re-filed complaint, namely a second or subsequent complaint filed by the same complainant against the same respondent in respect of the same domain name. Such complaints will only be accepted in limited circumstances (Creo Products Inc. v. Website In Development, WIPO Case No. D2000-1490). This is a sequel to Rosa María Clara Pallarés v. Dennis Heinz, WIPO Case No. D2005-0548. The Complainant is the same, for the reasons set out in paragraph 3 above, the Panel is satisfied that the Respondent is the same and the Domain Name is the same.
The issue of re-filed complaints is dealt with in paragraph 4.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, which reads as follows:
“4.4 Under what circumstance should a refiled case be accepted by a panel?
Consensus view: A refiled case involves the complainant submitting a second complaint involving the same domain name(s) and the same respondent(s) as in an earlier complaint that had been denied. A refiled case may only be accepted in limited circumstances. These circumstances include when the complainant establishes in the complaint that relevant new actions have occurred since the original decision, or that a breach of natural justice or of due process has occurred, or that there was other serious misconduct by the panel or the parties in the original case (such as perjured evidence). A refiled complaint will also be accepted if it includes newly presented evidence that was unavailable to the complainant during the original case.”
The Complainant contends that certain matters which have come to light since 2005 (the date of the earlier case) shed new light on the case and demonstrate that the Domain Name was registered and is being used in bad faith. These are dealt with in Section D below.
If the Complaint fails, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence namely:
“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 in paragraph 1 of the Rules as meaning “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
The Panel adopts the reasoning of the panel in Rosa María Clara Pallarés v. Dennis Heinz, WIPO Case No. D2005-0548 and finds that the Domain Name is “as close to being identical with the Complainant’s marks as it could be, and it certainly is confusingly similar to those marks.”
In light of the Panel’s finding under the next head, it is unnecessary for the Panel to address this issue.
This being a re-filed complaint, the Panel ignores (for this purpose) evidence which was available to the Complainant at the time of the earlier complaint and arguments based on that evidence.
The new matters which the Complainant asserts demonstrate that the Domain Name was registered and is being used in bad faith are the following:
1. The fact that the registrant (who might or might not be Mr. Heinz) wishes to hide his identity behind a privacy service. The Complainant asserts that if the underlying registrant is/was Mr. Heinz, the use of the privacy services is indicative of cyberflight.
2. The subsequent use of the Domain Name to connect to a site featuring references to marriage and links to a bridal service site shows that the user of the site is likely to have known of the Complainant’s brand, which was on retail sale in outlets in Texas.
3. The use made of the Domain Name from 2007 has been nonsensical and is not consistent with the Respondent’s plans for it as expressed in the earlier case and is “effectively a proof that the only purpose of the Respondent is to block and usurp the [D]omain [N]ame to ROSA CLARA, and to mislead her brand”.
4. In 2009 a series of decisions under the Policy has found that bad faith registration and use for the purposes of paragraph 4(a)(iii) of the Policy may in some circumstances be demonstrated simply on the basis of evidence of bad faith use even though there is no proof that the original registration of the name in issue was in bad faith. Here, according to the Complainant, the use of the Domain Name “related to porn and drugs” and “is clearly misleading to ROSA CLARA mark and an obvious act in detriment to Ms. Rosa Clarà, for her first Complaint in 2005.”
The Panel has considered the evidence in detail and can find nothing to establish that the Respondent was aware of the existence of the Complainant in 1999 when the Domain Name was first registered. Clearly, since the earlier case in 2005 the Respondent will have been aware of the Complainant and her brand and to the extent that the subsequent use of the Domain Name has featured references to bridal wear, it may well be, as the Complainant claims, that those references owe something to the previous dispute history, but they do not serve to demonstrate that the Respondent was aware of the Complainant (let alone targeted the Complainant) when he registered the Domain Name back in 1999.
The last of the new matters raised by the Complainant and listed above is an argument to the effect that in the intervening period since the 2005 decision the jurisprudence under the Policy has changed and bad faith use on its own can in some circumstances suffice to demonstrate bad faith registration and use even where there is no suggestion that the registration was made in bad faith; accordingly, since the subsequent use made of the Domain Name is a bad faith use directed against the Complainant, the case can be re-opened and the new “law” applied.
In the Panel’s assessment, even if (a) the recent decisions under the Policy to which the Complainant refers (e.g. Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786) constitute new “law” and (b) the subsequent use of the Domain Name constitutes bad faith use for the purposes of paragraph 4(a)(iii) of the Policy, to re-open the case on that basis would cause chaos. There have been a not inconsiderable number of cases where complaints under the Policy involving bad faith use of a domain name have failed for lack of evidence as to bad faith registration of the domain name in question. Cases can only sensibly be considered under the “law” applicable at the time the complaint is filed. In the view of the Panel, subsequent change in the “law” is unlikely to be a good reason for admitting a re-filed case. However, this Panel and many other panels have declined to follow the Octogen line. By way of example, the Panel refers to Validas, LLC v. SMVS Consultancy Private Limited, WIPO Case No. D2009-1413 and Camon S.p.A. v. Intelli-Pet, LLC, WIPO Case No. D2009-1716. Accordingly, the Panel does not accept that there has been a change in the “law”.
The Panel concludes that this case is a re-filed case and that nothing that the Complainant has put before the Panel merits the matter being re-opened.
The Complaint having failed, it remains for the Panel to consider whether he should make a finding of Reverse Domain Name Hijacking. The Respondent alleges that the circumstances surrounding the launching of the Complaint, the insistence upon naming Domains By Proxy as the sole respondent and the maintenance of the Complaint in the face of emails from the Center alerting the Complainant to the possibility that this might be found to be a re-filed complaint “demonstrates an undeniable malicious intent and recklessness or knowing disregard of evident absence of Respondent’s bad faith.”
While the Panel has a certain sympathy with the Respondent’s point of view, the confusion over the identity of the underlying registrant caused by the use of the privacy services and the varying state of the registrars’ WhoIs databases might reasonably be said to have given the Complainant cause for believing that there had been a transfer of the Domain Name. Moreover, the Complainant might reasonably have thought that some of the bridal references on the Respondent’s website were intended to target the Complainant and that the Octogen line of cases gave scope for re-opening the case.
The Panel is of the view that the Complainant’s primary objective in launching the Complaint was a bona fide attempt to protect her brand and not inspired by any desire to abuse the Policy.
For all the foregoing reasons, the Complaint is denied as is the allegation of reverse domain name hijacking.
Dated: August 13, 2010