WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
5 PRE VIE W AB v. Diego Manfreda
Case No. D2013-1946
1. The Parties
The Complainant is 5 PRE VIE W AB of Stockholm, Sweden, represented by J Lindwall Law Group, Sweden.
The Respondent is Diego Manfreda of Rome, Italy.
2. The Domain Name and Registrar
The disputed domain name <5preview.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2013. On November 15, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 21, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 11, 2013. On November 21, 2013 and December 12, 2013, the Center received email communications from the Respondent. However, no formal Response was filed with the Center by the specified Response due date. On December 12, 2013, the Center informed the parties that it would proceed with the panel appointment.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on December 20, 2013. 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 a Swedish company which holds and uses the brand 5 PRE VIE W. The Complainant states that its 5 PRE VIE W brand is used to market and sell fashion clothing and accessories through online and offline retailers and via the Complainant’s own web store.
The Complainant is the owner of a variety of registered trademarks for a figurative mark consisting of a stylized representation of the number and letters 5 PRE VIE W, namely Italian trademark No. 1400411 registered on January 11, 2011 in classes 14, 18 and 25; International trademark No. 1058683 registered on October 22, 2010 in class 25, designated in respect of China, Japan and the United States of America; and Swedish trademark number 0410207 registered on April 1, 2010 in class 25.
The disputed domain name was created on February 19, 2008. The Panel has been provided with very little information regarding the Respondent other than the Complainant’s contention that the Respondent had a “previous relationship” with the Complainant’s founder. The website associated with the disputed domain name states on the homepage “5PW | 5PREVIEW WARDROBE | OFFICIAL WEBSITE”.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical to a trademark in which it 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 states that the Respondent has no right to hold the disputed domain name and that the Respondent’s name appears as registrant of the disputed domain name solely because of a previous relationship with the Complainant’s founder, Ms. Emeli Martensson. The Complainant adds that the Respondent registered the disputed domain name on behalf of “Emeli Martensson and 5 PRE VIE W alone” and that Ms. Martensson’s credit card was used to pay the registration fee. The Complainant also contends that the Respondent’s “lack of interest” in the disputed domain name can be seen through the website’s inactivity since December 2010. The Complainant submits that the Respondent has never been an agent, distributor or in any other way held any rights to the Complainant’s brand.
The Complainant submits that the Respondent is well aware of the existence of the Complainant’s brand and its characteristics. The Complainant states that after the Respondent’s relationship with the Complainant’s founder ended the Respondent changed the password of the website to prevent the Complainant’s founder from gaining access to the disputed domain name. The Complainant notes that prior to this, Ms. Martensson had been responsible for editing and administering the website associated with the disputed domain name.
The Complainant states that the Respondent has approached the Complainant seeking money in exchange for the release of the disputed domain name. The Complainant asserts that the Respondent is well aware of the fact that the Complainant has business around the globe and that the disputed domain name is a crucial part of this. The Complainant adds: “[t]oday there are no links to the Official Swedish site ‘www.5preview.se’ or to the Official Web shop of 5 PRE VIE W. These are sites that according to us the Respondent are well aware of. This is regarding to us further evidence that the usage and keeping of the domain is in bad faith and in order to obstruct business for 5 PRE VIE W”.
The Respondent did not submit a formal Response in the administrative proceeding. However, the Respondent sent three emails to the Center following notification of the Complaint. The first of these was dated November 21, 2013. In it, the Respondent states “[c]ould you inform me what is the problem of the dispute? I have duly registered the domain 6 years ago, long before the registration of the mark. Could you please specify what is their claim?”.
The second email was dated December 12, 2013, namely one day after the due date for the Response to be received by the Center. In it, the Respondent states “I didn't receive yet a formal request from the requirent regarding the ‘rights’ that they would have on my domain. Several times I've specify that the domain is mine, and I can't understand what the other party could reclaim. Please try to inform me, maybe asking to [the Complainant’s representative] to specify the motivation of the dispute, before I'll decide to put all the stuff on the hands of my lawyer. Hope this be clear”.
The third email was also dated December 12, 2013. In it, the Respondent states “[f]rom February 2008 (date of registration of the domain), I dealt personally and financially safeguard the domain, avoiding the possibility that the domain was purchased and used by a third party. Why I am in the position of having to say that, in the event that the dispute will be lost, should receive fair compensation for the expenses I incurred for the protection and preservation of the domain. The costs will be quantified from my consultant and communicated to the appropriate time”.
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
The Complainant asserts that the disputed domain name is identical to the Complainant’s registered trademark. This mark is figurative in nature and consists of a design formed by the number 5 placed above the abbreviation “PRE”, which in turn is placed above the abbreviation “VIE W”.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) deals with the question of figurative trademarks at paragraph 1.11 under the heading “Are disclaimed or design elements of a trademark considered in assessing identity or confusing similarity?” The consensus view is given as follows:
“[…] as figurative, stylized or design elements in a trademark are generally incapable of representation in a domain name, such elements are typically disregarded for the purpose of assessing identity or confusing similarity, with such assessment generally being between the alpha-numeric components of the domain name, and the dominant textual components of the relevant mark. However, design elements in a trademark may be relevant to the decision in certain circumstances - such as where, for example, they form an especially prominent or distinctive part of the trademark overall. Some panels have found it to be a matter of impression in the circumstances of each case. Where the entire textual component of a complainant's relevant trademark has been disclaimed, or the only protectable component of such mark is comprised of design elements which generally cannot be represented in the alpha-numeric string of a domain name, then (absent a showing of acquired distinctiveness through use of the relevant mark) the complainant may lack any relevant rights under the UDRP on the basis of such mark, rendering moot any assessment of the disputed domain name's identity or confusing similarity with it.”
The Panel respectfully adopts the consensus view. In the present case, there is no disclaimer of any textual content in the Complainant’s trademark registrations and the elements “5”, “PRE”, “VIE” and “W” appear in that order and are all clearly and unambiguously represented in uppercase letters in a stylized typeface. There are no non-textual elements of the trademark. Accordingly, disregarding the white space in the mark and the top level domain “.com” in the disputed domain name, the Panel finds that the disputed domain name is identical to the Complainant’s trademark.
The Complainant’s trademarks all post-date the date of registration of the disputed domain name. This is not fatal to the Complainant’s case under paragraph 4(a)(i) of the Policy (see the consensus view in paragraph 1.4 of the WIPO Overview 2.0 which states that registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under the UDRP. However, the paragraph goes on to provide that in such circumstances it may be difficult to prove that the domain name was registered in bad faith under the third element of the UDRP, an issue which will be further discussed below).
In these circumstances, the Panel finds 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, including that the disputed domain name has been registered and is being used in bad faith, will result in failure of the complaint in its entirety. Accordingly, in light of the Panel’s finding under the next head, 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 website or location or of a product or service on your website or location”.
The Complainant's submissions do not focus on any particular element of paragraph 4(b) of the Policy. The essence of the Complainant’s case is that the Respondent had a prior relationship with the Complainant’s founder, the nature of which is not specified, whereby the Respondent came to register the disputed domain name on the Complainant’s behalf. The Complainant adds that the Respondent has never been an agent, distributor or in any other way held any rights to the Complainant’s brand. The Complainant indicates that for reasons which it does not specify, the Respondent has recently denied the Complainant access to the disputed domain name and has demanded money in exchange for its release.
The Respondent did not file a formal Response however it indicated in informal email correspondence that the disputed domain name was registered before the date on which the Complainant acquired trademark rights. In this, the Respondent is correct as the disputed domain name was registered in February 2008 while the earliest trademark cited by the Complainant was filed in September 2009 and registered in April 2010. On this issue, the Panel reminds itself of the terms of paragraph 3.1 of the WIPO Overview 2.0, which states the consensus view of WIPO panels under the UDRP as follows:
“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. [...]
However: In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This has been found to occur: shortly before or after a publicized merger between companies, but before any new trademark rights in the combined entity have arisen; or when the respondent (e.g., as a former employee or business partner, or other informed source) seeks to take advantage of any rights that may arise from the complainant's enterprises; or where the potential mark in question is the subject of substantial media attention (e.g., in connection with a widely anticipated product or service launch) of which the respondent is aware, and before the complainant is able to obtain registration of an applied-for trademark, the respondent registers the domain name in order to take advantage of the complainant's likely rights in that mark. (In all such cases, in order to have a chance to succeed in any filed UDRP complaint, the complainant must actually demonstrate relevant trademark rights, as these are a precondition for satisfying the standing requirement under the first element of the UDRP for rights in a mark.)”
The Panel respectfully adopts the consensus view. It is clear from this that a finding of bad faith is precluded in most cases where the registration of the disputed domain name predates the existence of the trademark. Despite the general approach, there remain some circumstances where bad faith can be found provided it can be shown that the domain name was registered with intent to target and take unfair advantage of rights ultimately vesting in the complainant, which the respondent knew were likely to arise at a later date. One of the examples given is where an informed source seeks to take advantage of rights that may arise from the complainant’s enterprises. This appears to be the thrust of the Complainant’s case in the present dispute in that the Complainant cites a prior relationship between the Respondent and the founder of the Complainant, arising out of which the disputed domain name was allegedly registered.
While a finding of bad faith is possible in such circumstances, this Panel finds itself with a very limited record consisting exclusively of the Complainant’s unspecific and unsupported assertions. This brings to the Panel’s mind the case of ExecuJet Holdings Ltd. v. Air Alpha America, Inc., WIPO Case No. D2002-0669 where the panel was faced with a similarly limited record in a post-dating trademark scenario. In that case, the panel determined that the limited record provided insufficient indications to support a finding of bad faith.
In the present matter, the Panel considers that the Complainant’s case leaves too many open questions to enable the Panel to make a proper assessment of the issue. What exactly is or was the precise nature and history of the relationship between the Parties? How did this lead to the Respondent registering the disputed domain name? What were the prevailing circumstances at the time of registration? Had the Complainant established any rights, such as unregistered trademark rights, before the disputed domain name was registered? If not, had the Complainant communicated its intentions regarding the disputed domain name and/or its proposed enterprise to the Respondent? If so, what were these intentions?
These are all crucial questions for the Complainant’s case because unless the relationship, business or otherwise, is fully understood along with the full circumstances, such that the registration of the disputed domain name may be placed into its proper context, the Panel cannot be satisfied as to whether the Respondent intended to target and take unfair advantage of the Complainant’s rights at the point of registration or was simply effecting the registration in good faith as part of its then existing relationship with the Complainant.
The Panel considered making a procedural order, in similar terms to that of the panel in ExecuJet Holdings Ltd. v. Air Alpha America, Inc., supra, to obtain further information or indeed answers from the Complainant to the open questions outlined above. The Panel however has decided against this course because the principles of the Policy envisage that the Parties shall present their case fully in the first instance and that any invitation to provide further information shall be exceptional and of necessity. The Panel is satisfied that the relevant matters were known to the Complainant and/or should have been in its reasonable contemplation at or before the time of filing of the Complaint. Furthermore, the fact that the disputed domain name pre-dated the Complainant’s registered trademarks was also firmly in issue. 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”.
As matters stand, given that the Complainant must prove not only that the disputed domain name has been used, but also that it has been registered in bad faith, the Panel finds that the Complainant has failed to establish the third element under the Policy.
For the foregoing reasons, the Complaint is denied.
Andrew D. S. Lothian
Date: December 27, 2013