The Complainant is Titoni AG of Grenchen, Switzerland, represented by Schluep Degen, Switzerland.
The Respondent is Synergy Technologies, LLC, Domain Administrator, of Charlestown, Saint Kitts and Nevis, represented by ESQwire.com Law Firm, United States of America.
The disputed domain name <titoni.com> is registered with Epik, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2019. On February 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 24, 2019, 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 February 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 22, 2019. The Response was filed with the Center March 22, 2019.
The Center appointed Adam Taylor, François Dessemontet and The Hon Neil Brown Q.C. as panelists in this matter on April 26, 2019. 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.
The Complainant supplies watches and jewellery worldwide under the mark “Titoni”. The Complainant has used this name since the 1950s.
The Complainant’s main website is at “www.titoni.ch”.
The Complainant owns many trade marks worldwide for TITONI including Swiss trade mark no. P-387690, filed February 4, 1991, in class 14.
The Complainant formerly owned the disputed domain name, which it used for English language websites since 2000, most recently to redirect to the English language version of its website at “www.titoni.ch”. Through an administrative error, the Complainant failed to renew the disputed domain name and the Respondent acquired it in auction on December 17, 2018.
As of February 2019, the disputed domain name was used for a website with pay-per-click (“PPC”) links relating to names and genealogy such as “Ancestry”, “Change Names”, “Family Heritage”, “Family Portraits” and “Family Tree”.
On February 15, 2019, the Complainant’s representative emailed the Respondent to say that it had omitted to renew the disputed domain name by mistake, having used it for a website for many years, noting that there was a pending transfer to the Respondent and inviting the Respondent to transfer the disputed domain name to the Complainant. The Complainant also asserted trade mark rights.
On the same day, in response to an enquiry by the Complainant, a broker from Afternic emailed the Complainant thanking it for its interest in the domain name. The broker said that the disputed domain name was a premium domain name and that the broker needed an offer of at least USD 10,000 “to engage with the domain owner.”
A summary of the Complainant’s contentions is as follows:
As a result of its active and intensive use over many years, the disputed domain name became known to customers over years as the domain name leading to the Complainant’s English language website.
The disputed domain name is identical to the Complainant’s trade mark.
The Respondent lacks rights and legitimate interests in the disputed domain name.
There is no indication that the Respondent has used the disputed domain name for a bona fide offering of goods or service. The Respondent’s website is a typical “placeholder” website with “alibi-links” to automated listings in order to simulate active content. The true purpose of the Respondent’s website is shown by the link to a domain sale website where the disputed domain name is offered for sale.
There is no indication that the Respondent has been commonly known as “Titoni”. On the contrary, it has a different name: “Synergy Technologies”. Nor does the Respondent own any relevant trade mark.
The Complainant has not authorised the Respondent to use its trade mark in a domain name.
There is no indication that the Respondent is making legitimate noncommercial or fair use of the disputed domain name. The term “titoni” is a fanciful word without any common meaning.
The domain name was registered and is being used in bad faith.
The Respondent must have been aware of the Complainant’s trade mark. A quick search engine search reveals that it is a long-standing trade mark of a Swiss watch manufacturer, that “Titoni” is a central element of the Complainant’s marketing activities, that the Complainant’s main website at “www.titoni.ch”, that third parties refer to the Complainant and its products by this name and that no one else is seriously using “Titoni” as a mark or name.
At least since the Complainant’s notice, the Respondent is aware that the disputed domain name is identical to the Complainant’s trade marks.
The broker email shows that the Respondent is acting in bad faith. It is well aware of the value of the disputed domain name derived from the Complainant’s reputation and its long use of its trade mark. The Respondent’s only aim was to sell the disputed domain name at an unreasonably high price, thereby profiting from the Complainant’s mark.
The Respondent’s actions in withholding the disputed domain name from the Complainant, demanding an unreasonably high price and offering the disputed domain name publicly to third parties, despite having received the Complainant’s notice, are all examples of use in bad faith.
In IDR Solutions Ltd. v. Whois Privacy Corp, WIPO Case No. D2016-2156 a respondent who acquired an erroneously lapsed domain name was held to have registered and used a domain name in bad faith in comparable circumstances to those here. Here, there is an even stronger case for bad faith based on the “relative weighing of harms” caused to each party.
A summary of the Respondent’s contentions is as follows:
The Respondent does not dispute the Complainant’s case as to the first element.
The Respondent does possess rights and legitimate interests in the disputed domain name.
The Respondent did not know that the Complainant was the prior owner of the disputed domain name until after the Complaint was filed.
The Complainant did not attempt to contact the Respondent until over four months after the alleged “mistake”. The Complainant did not use the Respondent’s correct email address and appears have done little to confirm the Respondent’s correct email address before filing the Complaint.
The Respondent has a legitimate interest in the disputed domain name because “Titoni” is a common surname, as well as a first name. The name is by no means exclusively associated with the Complainant. There are ample historical records showing international use of “Titoni” as a first or last name. While Titoni may not be the most popular of names, it has global third-party usage, including for restaurants, an architect, a builder and photographer, among many others.
In the past decade, the Respondent has registered over 1,000 domain names that comprise surnames or first names. It has paid competitive amounts to acquire many such domain names.
The disputed domain name has inherent value independently of the Complainant. There are well‑documented sales of first and last name domain names for significant amounts. The disputed domain name is in any case valuable as a short “.com” domain name that on its own would be attractive to investors or businesses, given that 32 other parties bid for the disputed domain name in the auction.
The Respondent’s legitimate interest is bolstered by the fact that it uses the disputed domain name to display “keyword locked” advertising links relating to surnames, genealogy and ancestry resources.
The Respondent’s link to offering the disputed domain name for sale does not render use of the domain name illegitimate. To the contrary, the business of reselling domain names is legitimate provided there is no evidence that a trade mark was targeted.
The disputed domain name was not registered or used in bad faith.
The Respondent registered the disputed domain name simply because it incorporated a descriptive term that became available when it was offered at public auction. This is not a case of a cybersquatter looking for trade marks upon which to prey. Expiration of a domain name raises the presumption that any trademark rights in such domain name have been abandoned.
The Complainant must produce specific evidence of bad faith registration because there is no proof that the Respondent registered the disputed domain name by reference to the Complainant’s mark. But it has not done so. The nature of the PPC links supports the Respondent’s good faith.
Offering to sell a domain name after an unsolicited request is not improper. Nor is it bad faith to offer a common word or descriptive word for sale. There are no circumstances indicating that the Respondent registered the disputed domain name specifically for sale to the Complainant.
There is no evidence that the Respondent was aware of the Complainant before the Complaint was filed.
Under the Policy, the Complainant is required to prove on the balance of probabilities that:
- the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith.
The Complainant has established rights in the mark TITONI by virtue of its registered trade marks as well as unregistered trade mark rights deriving from its longstanding use of that name.
Disregarding the domain name suffix, the disputed domain name is identical to the Complainant’s trade mark
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
It is unnecessary to consider this element in light of the Panel’s conclusion under the third element below.
The Panel considers that this is a finely balanced case.
On the one hand, the Complainant has traded under its name “Titoni” for many years and it formerly owned and used the disputed domain name from 2000 until its failure to renew it in 2018 due to an administrative oversight. Also, the name “Titoni” is somewhat unusual.
On the other hand, the Respondent has established that the name “Titoni” is not exclusive to the Complainant, as it is in use in a number of countries as a surname and first name, as well as for the names of various businesses such as restaurants.
The Respondent, which is a domain name dealer, claims that it registered the disputed domain name because of its inherent value as a personal name. Indeed, consistent with the Respondent’s assertion, the Respondent has used the disputed domain name for PPC links relating to names and genealogy. The Respondent has also established that it owns a significant number of other domain names reflecting personal names.
The Respondent says that it was unaware that the Complainant was the prior owner of the disputed domain name until after the Complaint was filed. For its part, the Complainant claims that the Respondent was aware of the Complainant’s name and trade marks “[at the] latest since Respondent received a notice from Complainant about its erroneous lapse …”. The Complainant thereby appears to acknowledge that the Respondent may not have become aware of it until receipt of the Complainant’s notice; if so, that would be fatal to the Complainant’s case as the Respondent’s (previous) registration of the disputed domain name could not then have been made in bad faith.
In any case, in the absence of any evidence indicating that Respondent targeted the Complainant, the Panel has no reason to disbelieve the Respondent’s explanation. For example, there is no evidence that the trade mark possesses a high degree of fame or that the Respondent has ever used the disputed domain name in any way relating to watches or that the disputed domain name is part of a wider pattern of cybersquatting activity. Nor did the Respondent make an unsolicited offer to sell the disputed domain name to the Complainant; the price of USD 10,000 mooted by the Respondent’s broker followed an enquiry by the Complainant and therefore it does not indicate that the Respondent acquired the disputed domain name for the purpose of sale to the Complainant.
The Complainant relies on IDR Solutions Ltd. v. Whois Privacy Corp, WIPO Case No. D2016-2156 (“the IDR Case”) where a respondent who acquired an erroneously lapsed domain name was held to have registered and used a domain name in bad faith. However, the Panel disagrees with the Complainant that the circumstances of the IDR Case are comparable to those here.
In the IDR Case, not only did the respondent not file a response to explain its motive, it used the disputed domain name within the same field in which the complaint operated and for the “unidirectional collection of information” in a manner which the panel plainly found suspicious. None of which applies in this case.
The panel in the IDR Case also considered that the respondent’s purchase of a domain name which suddenly became available after 14 years indicated that it was deliberate purchase made in full knowledge of the complainant’s use and mark. Whereas here the disputed domain name is not a one-off purchase by someone in the same industry as the complainant.
While the panel in the IDR Case engaged in what it described as “the relative weighing of the harms to the parties”, the Panel does not read that case as obviating the Policy’s requirement to establish registration and use in bad faith on the part of a respondent. Indeed, while weighing up the relative harms, the panel contrasted the damage caused to the complainant with the lack of “any apparent reason that Respondent would be connected with this particular Domain Name.” But in this case, as explained above, the Respondent has put forward a potentially legitimate connection with the disputed domain name.
The Panel notes that the Complainant’s extensive quote from the IDR Case omits the following important statement:
“The Panel wishes to emphasize that it does not assume that all erroneously lapsed domain name renewals are evidence of the bad faith registration of the domain name by a new holder. Nor does the Panel believe that the Policy is designed primarily to make up for the mistakes or negligence of Registrars or Complainants in ensuring that domain names get renewed, however unfortunate that may be.
That having been said, the Panel may look to the circumstances of the case as a whole in order to determine whether the third element of the test under the Policy is met, even where the lapse of the Domain Name was done in error …”
The Panel respectfully concurs.
As set out above, the Panel has carefully looked at the circumstances of the case and concluded that it is finely balanced. The Panel has given examples of the kinds of targeting evidence that would most likely have tipped the balance in favour of the Complainant under the third element. But no such evidence has been provided.
Accordingly, given that Complainant is required to prove its case on the balance of probabilities (see section 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition), and while sympathising with the harm caused to the Complainant by its omission to renew its domain name, the Panel concludes that the Complainant has failed to establish the third element of paragraph 4(a) of the Policy.
For the foregoing reasons, the Complaint is denied.
The Hon Neil Brown Q.C.
Date: May 16, 2019