WIPO Arbitration and Mediatin Center
ADMINISTRATIVE PANEL DECISION
Tecnologia Bancaria S.A. v. Marchex Sales Inc.
Case No. D2014-0834
1. The Parties
The Complainant is Tecnologia Bancaria S.A. of São Paulo, Brazil, represented by Weinmann Zimmerli, Switzerland.
The Respondent is Marchex Sales Inc. of Drums, Pennsylvania, United States of America (“US”), represented by John Berryhill, US.
2. The Domain Names and Registrar
The disputed domain names <banco24horas.com> and <banco24horas.net> are registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2014. On May 21, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 22, 2014, 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 proceeding commenced, on May 26, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 15, 2014. The Response was filed with the Center on June 15, 2014.
On July 18, 2014 the Complainant filed with the Center an unsolicited supplemental filing.
The Center appointed Sebastian M.W. Hughes, Philippe Gilliéron and Richard G. Lyon as panelists in this matter on August 8, 2014. 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.
On August 22, 2014 the Panel notified the parties that the due date for the Decision would be extended until August 29, 2014; the due date was subsequently extended to September 24, 2014.
On August 25, 2014 the Complainant filed with the Center a further unsolicited supplemental filing and, on the same date, the Respondent sent an electronic mail communication to the Center requesting an opportunity to reply if the Complainant’s supplemental filings were allowed.
4. Factual Background
The Complainant is a company incorporated in Brazil and the owner of several registrations in Brazil for the BANCO 24 HORAS word and stylized word mark in respect of banking and financial services, the earliest dating from September 25, 1985 (the “Trade Mark”).
The Complainant is also the owner of the domain name <banco24horas.com.br> incorporating the Trade Mark, registered on July 9, 1996.
The Respondent is a company incorporated in the US.
C. The Disputed Domain Names
The disputed domain names were registered on April 6, 2003 and May 16, 2007, respectively.
D. The Website at the Disputed Domain Names
The disputed domain names resolve to websites which provide sponsored pay-per-click links to websites associated with banking services; and which contain, at the top of each website, the wording “This domain may be for sale. Click here for more info.” (the “Websites”).
The “This domain may be for sale” link on the Websites was previously linked to an auction website operated by “www.archeodomains.com” which offered each of the disputed domain names for sale at a starting price of USD 10,000. As at the date of this Decision, the disputed domain names are no longer offered for sale on the linked “www.archeodomains.com” auction website – the linked auction website presently states “Oops! We’re sorry but this domain is no longer available”.
5. Parties’ Contentions
The Complainant made the following submissions in the Complaint.
Identical or Confusingly Similar
The Complainant is the market leader in Brazil in relation to interbanking services, with a market share of 38 percent. The Complainant operates more than 14,600 automatic teller machines (“ATMs”) under the Trade Mark in more than 400 cities in Brazil, in association with well-known financial institutions such as HSBC, Citibank, American Express and Diners Club. The Trade Mark is a well-known mark in Brazil in respect of such services.
The disputed domain names are confusingly similar to the Trade Mark.
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not affiliated with or authorised by the Complainant. The Respondent is not using the disputed domain names in respect of a bona fide offering of goods or services.
Given the notoriety of the Trade Mark in Brazil, its use since 1985, and the large number of Brazilians living in the US, the Respondent must have known of the Complainant and of the Trade Mark when it registered the disputed domain names.
Registered and Used in Bad Faith
The disputed domain names have been registered and used in bad faith for the purpose of reselling the disputed domain names for an amount of money that exceeds the documented out-of-pocket costs directly related to the disputed domain names, as evidenced by the link on the Websites to the “www.archeodomains.com” auction site, and by the offer for sale included in the WhoIs search results for both of the disputed domain names.
The Respondent made the following submissions in the Response.
Identical or Confusingly Similar
The Complainant has failed to provide excerpts of the relevant registration certificates for the Trade Mark showing what the recited goods or services are, and whether there are any limitations such as to figurative presentation or descriptiveness limitations. The Complainant has, instead, offered to provide the Panel, on request, with copies of its registration certificates. Accordingly, there is no evidentiary basis presented by the Complainant to show what goods or services are covered by the registrations.
Despite having certified its Complaint as being complete, the Complainant neglected to mention in the Complaint its unsuccessful attempt to register the Trade Mark in the US. As the mutual jurisdiction of the proceeding is the US, this “highly material refusal of rights” should have been disclosed by the Complainant.
Rights or Legitimate Interests
The second criterion of the Policy requires the Complainant to show that the Respondent has no rights or legitimate interests in the disputed domain names. This criterion is not limited to trade mark rights, but includes equitable interests such as expectation and reliance interests in the continued operation of a domain name for a legitimate purpose.
The finding of the United States Patent & Trademark Office (“USPTO”) in relation to the Complainant’s application for registration of the Trade Mark in the US was that the Trade Mark is “merely descriptive”. In addition, an application filed by a third party unrelated to the parties in this proceeding with the USPTO in 1983, for registration of the stylized word mark “Mini-Banco 24 HORAS” in respect of ATM banking services, was also refused in 1985. It is therefore “demonstrably false” for the Complaint to contend that the Trade Mark originated with the Complainant.
It is perfectly lawful, legitimate, and not in violation of the Complainant’s rights for the Respondent to have registered and used the disputed domain names for the purpose of advertising banking services and to have executed the warranty clause of paragraph 2 of the UDRP upon entering into a domain registration contract with a US registrar, whose contract specifically states that it is to be interpreted and applied under US law in a US court.
The Respondent is a well-known registrant and monetizer of descriptive terms in the form of domain names, which the Respondent has obtained and used because of the attractiveness of generic terms to convey paid search results for descriptive terms. The disputed domain names have been used for many years to provide paid advertising of consumer banks and consumer banking services.
Rule 15 of the UDRP empowers the Panel to decide according to “any rules and principles of law that it deems applicable”, but does not suggest the Policy is a free-for-all.
The Complainant is bound to the final determination of the USPTO in relation to the Respondent’s rights, in which the Complainant acquiesced. Put simply, the Complainant invites this Panel to over-rule the USPTO’s finding that the Complainant is not entitled to assert these rights against the Respondent, who conducts business in the US, which is further the mutual jurisdiction where the domain name was registered.
The Complainant has not only failed to demonstrate that the Respondent has no legitimate rights or interests, but the Complainant has deliberately omitted the state of rights existing among the parties, and the express refusal of enforceable rights in the Respondent’s jurisdiction by the relevant legal authority. Likewise, having legitimately acquired and used the disputed domain names, the Respondent is entitled to sell the disputed domain names to any other party in the US who may desire to lawfully use them.
Registered and Used in Bad Faith
Had the Respondent conducted a search of trade mark registrations from online databases available in late 2004, the Respondent would not have been able to access or understand the Brazilian trade mark register. However, what would have been unmistakably clear was that in 1985, the claim of Banco de Ponce to “Mini-Banco 24 HORAS” had been refused and abandoned. Thus, not only would there have been no reason to believe the term “banco 24 horas” was distinctive, but there was already at that time a positive indication available to the Respondent that the term is decidedly not distinctive.
The Complainant argues the Respondent “absolutely had to know about the Complainant” when the disputed domain names were registered. What the Respondent “absolutely” knows, and what the Complainant has deliberately concealed from the Panel, is that the Complainant’s claim was refused by the relevant authority in the Respondent’s jurisdiction.
The Complainant’s actual customers are large financial institutions, and the Complainant provides sophisticated business-to-business interbanking services under the Trade Mark, whereas the Respondent is using the disputed domain names in relation to the advertisement of consumer banking services to end customers of bank services. It cannot therefore be said that the relevant consumers of the Complainant’s services are being “diverted” in some way by the Respondent’s registration and use of the disputed domain names.
Having recently abandoned its application for registration of the Trade Mark in the US, the Complainant is seeking to use the UDRP to expand the reach of its limited rights. The UDRP was not intended to confer on trade mark owners rights beyond what are available to them at law, and thus to “internationalize” every positive trade mark office determination, while ignoring negative trade mark office determinations. The Policy is not intended to provide a backdoor through which parties may obtain rights they do not have, and which have been expressly denied to them.
The Respondent’s registration and use of the disputed domain names for a long period of time cannot possibly amount to “some sort of serious disruption to the Complainant’s business”.
The fact the Complainant has deferred taking action in relation to the disputed domain names for many years makes it more difficult for the Complainant to establish bad faith.
The Complainant seeks an exemption from the implied duty of candour in UDRP proceedings in failing to completely describe the state of its rights in a highly relevant jurisdiction. This proceeding is merely an attempt by the Complainant to assert claimed “rights” beyond the scope of what has been expressly denied to the Complainant. Use of the Policy for that end is an improper purpose, particularly where the Complainant has not been forthcoming about the circumstances that informed its choice to proceed in this forum.
Accordingly, the Complainant has failed to establish the disputed domain names have been registered and used in bad faith.
6.1 Supplemental Filings
The consensus view under paragraph 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“the WIPO Overview”) is that panels have sole discretion, under paragraphs 10 and 12 of the Rules, whether to accept an unsolicited supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting its filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response.
As the Complainant has not provided sufficient reasons to satisfy the above criteria, the Panel determines that it will not admit the supplemental filings in this proceeding.
6.2 Substantive Elements of the Policy
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
The Panel majority notes that the bulk of the submissions in the Response focusses on issues relating to the law of the mutual jurisdiction, including detailed analysis of the findings of the USPTO in examining, and ultimately refusing, the Complainant’s application for registration of the Trade Mark in the US.
The Panel majority, whilst noting that paragraph 15(a) of the Policy gives the Panel a broad discretion to have regard to any system of law it feels appropriate, considers it has a duty to issue its decision based upon the UDRP, rather than any particular national law, including the law of the mutual jurisdiction (see also paragraph 4.15 of the WIPO Overview).
A. Identical or Confusingly Similar
The Panel majority finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate the dates of registration of the disputed domain names by many years.
The Panel majority finds the arguments of the Respondent regarding the purported lack of evidence of relevant trade mark rights unconvincing. The Complainant has filed with the Complaint an email apparently sent to the Complainant’s representatives by the Complainant’s Brazilian trade mark attorneys, which contains representations of no less than 9 relevant word and/or stylized word mark registrations for the Trade Mark in Brazil, and lists the registration number, date of registration and Nice classification of goods or services in respect of each such registration. In addition, the Complainant has filed with the Complaint the Complainant’s Wikipedia entry for BANCO 24 HORAS, as well as a print-out from the Complainant’s “www.banco24horas.com.br” website which prominently displays an ATM bearing the Trade Mark.
The Panel majority finds therefore that the Complainant has provided sufficient evidence to establish relevant rights in the Trade Mark obtained through both registration and use.
The Panel majority notes the Complainant has offered to provide copies of its registration certificates for the Trade Mark if required. The Panel has the absolute discretion to request further statements or documents from the parties, under paragraph 12 of the Rules, although, in all the circumstances of this proceeding, the Panel majority does not consider it is necessary to make such a request, the Complainant having, in the opinion of the Panel majority, otherwise put sufficient evidence before the Panel to establish its rights in the Trade Mark.
It is well-established that, for the purposes of the first limb under paragraph 4(a) of the Policy, any limitations as to figurative representation or descriptiveness of complainants’ marks are unlikely to be of relevance. It is the textual component of the Complainant’s trade marks that is of relevance for the purposes of the Policy (see paragraph 1.11 of the WIPO Overview). The Panel majority considers this is in any event a moot point, as the evidence shows that the Complainant’s registrations for the Trade Mark include, in addition to a stylized representation of the Trade Mark in lower case on a shaded background (the version of the Trade Mark used on the Complainant’s website and on its ATMs depicted on its website), a word mark registration.
It is also accepted that the location of the trade mark, its date of registration (or first use), and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trade mark under the first element of the UDRP (see paragraph 1.1 of the WIPO Overview).
The Panel majority therefore considers the fact the Complainant was unsuccessful in applying for registration of the Trade Mark in the US by itself bears no relevance to the Panel’s determination as to whether the Complainant has otherwise established rights in the Trade Mark.
The disputed domain names are (with the exception of the generic Top-Level-Domains (gTLDs) .com and .net, respectively) identical to the Trade Mark.
The Panel majority therefore finds that the disputed domain names are confusingly similar to the Trade Mark and holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organisation) has been commonly known by the domain name even if the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain names by many years. The Panel majority finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Panel majority is of the opinion that the Respondent’s submissions regarding the Complainant’s failure to obtain registration of the Trade Mark in the US, and the failure in 1985 of an unrelated third party to obtain registration of the trade mark “Mini-Banco 24 HORAS” in the US, are generally irrelevant to the question as to whether the Respondent has established rights or legitimate interests in the disputed domain names.
The Respondent maintains that it is entitled to rely upon the determination of the USPTO in its home jurisdiction in order to establish rights or legitimate interests in the disputed domain names. The Panel majority considers whether or not the Complainant (or third parties) have been able to obtain registrations for the Trade Mark, or similar marks, in the US (or indeed elsewhere) has no particular relevance per se in determining whether the Respondent here has rights or legitimate interests in the disputed domain names under the Policy.
The Panel majority finds no basis, under the Complaint, under the UDRP, under US law, or otherwise, for the Respondent’s bald assertion that, in filing the Complaint, the Complainant is somehow inviting the Panel to over-rule the USPTO’s refusal of registration of the Trade Mark. The Panel has no jurisdiction, under the UDRP or otherwise, to do so.
The Panel majority also rejects the Respondent’s assertion that, in issuing its Decision in this proceeding under the Policy, the Panel is necessarily bound by the determination of the USPTO in respect of the Complainant’s application for registration of the Trade Mark in the US. Whilst it may have regard to any evidence placed before it (including such USPTO determination) and to any system of law it deems appropriate, the jurisdiction of the Panel is derived from the UDRP.
The Panel majority rejects the Respondent’s argument that, simply because the Complainant was unable to obtain registration of the Trade Mark in the US, the Respondent is therefore automatically entitled, under the Policy, to sell the disputed domain names to any person in the US who may lawfully desire to use them.
The Panel majority finds the manner in which the disputed domain names have been used by the Respondent, both to capitalise on the repute of the Trade Mark to gain pay-per-click revenue rather than on any descriptive meaning that the disputed domain names may correspond to, and, at the same time, to offer the disputed domain names for sale at a starting price of USD 10,000 per domain name (both prominently on the Websites and also in the WhoIs search results for the disputed domain names), is inconsistent with rights or legitimate interests.
The Panel majority would note further that the Respondent’s conduct in, at some stage following filing of the Complaint, instructing the auction website to no longer offer the disputed domain names for sale, is also inconsistent with the rights asserted in the Response.
The only potentially relevant right relied upon by the Respondent is the use of the disputed domain names in relation to the Websites to earn pay-per-click revenue via sponsored links to financial services related websites. The Panel majority notes that there is only a fleeting suggestion in the Response that the Respondent registered the disputed domain names for the purpose of advertising banking services descriptively, as opposed to targeting the Trade Mark. An examination of the Websites demonstrates that:
1. None of the sponsored links relate to the concept of 24 hour banking services; and
2. The sponsored links include links referring to direct competitors of the Complainant in the Brazilian banking market, including Banco Caixa, Banco Santander, Banco do Brasil, Itau Unibanco and Bradesco.
The evidence suggests therefore the Respondent is not making use of the disputed domain names in respect of sponsored links genuinely linked to the generic meaning of the disputed domain names. To the contrary, the Respondent is capitalizing on the Trade Mark, including, in particular, through sponsored links in connection with goods or services that compete with those of the Complainant (see paragraph 2.6 of the WIPO Overview).
In the absence of a firm denial in the Response that the Respondent knew of the Complainant and its Trade Mark at the time it registered the disputed domain names, and in light of the manner in which the disputed domain names have been registered and used (both to generate pay-per-click revenue by providing sponsored links to websites connected with or associated in some way with competitors of the Complainant; and in order to offer the disputed domain names for sale both via the Websites and the WhoIs results for the disputed domain names), the Panel majority is unable to make a finding under the second limb in favour of the Respondent.
Instead, the Respondent appears to be deflecting this issue in claiming, in response to the Complainant’s assertion that the Respondent “absolutely had to know about the Complainant” when the disputed domain names were registered:
“What the Respondent ‘absolutely’ knows, and what the Complainant has deliberately concealed from the Panel, is that the Complainant’s claim was refused by the relevant authority in the Respondent’s jurisdiction.”
In all the circumstances, the Panel majority finds that the Respondent has failed to show that it has acquired any rights in respect of the disputed domain names or that the disputed domain names are used in connection with a bona fide offering of goods or services.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names.
There has been no evidence adduced to show that the Respondent is making any legitimate noncommercial or fair use of the disputed domain names.
The Panel majority finds that the Respondent has failed to produce sufficient evidence to establish rights or legitimate interests in the disputed domain names. The Panel majority therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(i) of the Policy, the following conduct amounts to registration and use of a domain name in bad faith on the part of a respondent:
“(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”
The Panel majority considers that, in all the circumstances (including the fact the disputed domain names are identical with the Trade Mark), the evidence suggests the Respondent likely knew of the Complainant and the Trade Mark at the time it registered and commenced use of the disputed domain names, in the case of <banco24horas.com>, some 18 years after the Complainant commenced use of the Trade Mark, and, in the case of <banco24horas.net>, some 22 years after the Complainant commenced use of the Trade Mark. The Panel majority considers it is telling that, in preparing and filing its detailed Response, the Respondent has been unable to include in the Response a firm and direct denial of any such knowledge at the time it registered the disputed domain names.
Having found the requisite knowledge requirement on the part of the Respondent, it follows that this is a clear-cut case of bad faith registration and use under paragraph 4(b)(i), the disputed domain names having been offered for sale in the WhoIs results for the disputed domain names, and also via the auction website directly (and prominently) linked to the Websites, for a starting price as high as USD 10,000 for each domain name.
Furthermore, the Panel majority considers the steps taken by the Respondent, after the commencement of this proceeding, to take down the offer for sale from the auction website to which the Websites are linked, does not sit at all well with the Respondent’s protestations as to its lack of bad faith and its asserted entitlement to sell the disputed domain names “to any other party in the US who may desire to lawfully use them”.
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use of a domain name in bad faith on the part of a respondent:
“(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.”
The Respondent asserts broadly the right to monetize the disputed domain names via the sponsored links on the Websites. The Respondent does not claim that the content on the Websites is automatically generated, or that the pay-per-click revenue is generated by a third party. In any event, it is well-established that operators of such websites (even if not directly responsible for the content on the websites, and even if not directly profiting from the sponsored links on the websites) have a duty to prevent inclusion of advertising or links which profit from trading on third party trade marks (see paragraph 3.8 of the WIPO Overview). The Panel majority concludes, in all the circumstances, the Respondent has failed to adduce sufficient evidence to suggest that it has taken any steps, in good faith, to prevent the inclusion of such links on the Websites.
The Panel majority notes, for the record, there appears to be no evidential basis in support of the Respondent’s assertions that the Complainant uses the Trade Mark in respect of “sophisticated business-to-business interbanking services”. The evidence demonstrates that the Complainant uses the Trade Mark in respect of, inter alia, ATMs used by consumers.
The Panel majority therefore concludes that bad faith has been made out, under paragraphs 4(b)(i) and 4(b)(iv) of the Policy.
For the foregoing reasons, the Panel concludes that the disputed domain names have been registered and used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled.
6.3 Reverse Domain Name Hijacking (“RDNH”)
The Respondent referred to the unanimous three member panel decision in Chuan Sin Sdn. Bhd. v. Internet Admin (not for sale), Reflex Publishing Inc., WIPO Case No. D2014-0557, a decision relied upon by the Panel minority in this proceeding.
As was discussed in Chuan Sin Sdn. Bhd. v. Internet Admin (not for sale), Reflex Publishing Inc. (supra), paragraph 15(e) of the Rules provides as follows:
“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 in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.
Although the Respondent does not seek a finding of RDNH in this proceeding, the Panel majority would agree that UDRP panels have an absolute discretion under the Policy as to whether or not to make findings of RDNH.
The Panel majority would note, however, for the record, that the complaint in Chuan Sin Sdn. Bhd. v. Internet Admin (not for sale), Reflex Publishing Inc. was dismissed unanimously by the three member panel primarily because the panel was unable to conclude there was sufficient evidence to show the respondent had targeted the complainant and/or its SPRITZER brand:
“The Panel finds that Complaint fails to demonstrate that when the Respondent registered the Disputed Domain Name, the Respondent might have had the Complainant’s trade mark in mind. Moreover, there is nothing about the subsequent use of the Disputed Domain Name which might reasonably lead to any such inference.”
The panel in Chuan Sin Sdn. Bhd. v. Internet Admin (not for sale), Reflex Publishing Inc. was evidently fortified in reaching its conclusion by the respondent’s clear assertion of fact that it was not aware of the complainant or its trade mark when it registered the disputed domain name, and by the fact the disputed domain name had been used in respect of sponsored links to “irrelevant products and services”, apparently having no connection with the complainant’s bottled water (or similar) products.
This is to be contrasted with the present proceeding, where the Panel majority has concluded, on the evidence, that the manner in which the disputed domain names have been registered and used is consistent with a finding that the Respondent, in registering and using the disputed domain names, had the Complainant and its Trade Mark in mind.
Although not privy to the relevant pleadings, the Panel majority would also take issue with the submissions of the respondent apparently accepted by the panel in Chuan Sin Sdn. Bhd. v. Internet Admin (not for sale), Reflex Publishing Inc. that it is unlikely that trade mark authorities in Asia would have been aware of the dictionary definition of “spritzer”, particularly in the case of Malaysia, a country with a rich and ongoing history of use of the English language. It is possible that the Malaysian authorities, in examining the respondent’s trade mark application in that country, may have even raised during the examination process the common English language meaning of the word “spritzer” as an alcoholic beverage mixed with a non-alcoholic carbonated beverage.
In making its finding of RDNH, the panel in Chuan Sin Sdn. Bhd. v. Internet Admin (not for sale), Reflex Publishing Inc. relied upon the standard form statement of truth required by all complainants when filing UDRP complaints:
“The information contained in this Complaint is to the best of the Complainant’s knowledge complete and accurate, that this Complaint is not being presented for any improper purpose, such as to harass, and that the assertions in this Complaint are warranted under the Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.”
The Panel majority is of the opinion that the requisite statement of truth does not impose a general obligation on complainants who are otherwise able to establish valid and subsisting trade mark rights to disclose their entire trade mark prosecution history.
For the purposes of the first limb under paragraph 4(a) of the Policy, the assertions warranted under the Rules simply require complainants to establish the relevant disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights. Whether or not the complainant has been successful in obtaining such rights in any particular jurisdiction would not per se be relevant to a finding under the first element.
It is further of note that the statement of truth refers to the same concept of harassment that is used in paragraph 15(e) of the Rules.
Clearly each proceeding must turn on its facts. The Panel majority would nonetheless posit that, in circumstances where the evidence supports a finding in favour of a complainant in relation to all three relevant elements under paragraph 4(a) of the Policy, there can be no positive obligation of general disclosure.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <banco24horas.com> and <banco24horas.net> be transferred to the Complainant.
Sebastian M.W. Hughes
Date: September 24, 2014
The Panel Majority acknowledges that Respondent’s actual knowledge of Complainant is necessary for a finding of bad faith; this is not a case of willful blindness or “should have known.” see WIPO Overview 2.0, paragraph 3.4.1 I agree with this concession and approach. Where the Panel Majority and I part company is on the sufficiency of the evidence on that subject.
Complainant’s evidence on this matter is nil. Its entire allegations on bad faith, beyond alleging (but not proving2 ) trademark ownership in Brazil, are as follows (case citations omitted):
“Beforehand it needs to be emphasized that the Respondent absolutely had to know about the Complainant and his market position. As shown before the Complainants trademark is well known in Brazil and also in Southern, Latin and Northern America. The large population of Brazilians all over the Americas and especially the USA create a profitable environment for the sale of the domains. The statistics for the United States of America estimate that between 450’000 and 1.1 Million people with Brazilian nationality live in the USA and that 300’000 of them can be found in Florida (see Annex 9 and 10). In Brazil itself the trademark is very well known (which is proven by the presence in over 400 cities and over 14’600 ATMs in Brazil alone) (see Annex 5 and 6). These facts show, that the banco24horas domains are a lucrative assets [sic] for domain grabbers, who only intend to resell the domains.
The Respondent must have known about the Complainants position as he has acquired the domains only for the purpose of resale (see Annex 1, 2, 7 and 8). According to § 4(b)(i) UDRP the registration of a domain has been made in bad faith, if the registration has been made with the purpose of reselling the domain for an amount of money that exceeds the costs of acquisition. This is especially the case, when the registrant displays the purpose of the acquisition on a website specialized on domain auctions and/or if the Who-Is database excerpt includes an offer for sale. In the case at hand the Respondent has put up the domains for sale on an auctionwebsite (archeadomains.dom) and allows the Who-Is database to display that the domains are also for sale (see Annex 1, 2, 7 and 8), which already shows that the Respondent is acting in bad faith. Additionally, the Respondent states on the websites that correspond to the domains that the domains are for sale (see Annex 11 and 12). Furthermore, the Respondent has not only registered one domain that is identical to Complainant’s trademarks, but multiple domains which all are part of this dispute. According to § 4 (b)(i) UDRP the registration of multiple identical domain names with different gTLD shows also a registration in bad faith, if they are all up for sale. Therefore, the Respondent has registered the domain names in bad faith as he planned to profit from the Complainants fame by reselling each domain for at least USD 10’000 (see Annex 7 and 8). The price for which the Respondent offers the Domains alone shows that the registration has been made in bad faith . . .have decided that offers for above USD 350 and GBP 900 – 1200 for a domain are considered as offers in bad faith according to § 4(b)(i) UDRP. In this view, the respondent has clearly shown its bad faith in registering the domains that are part of this dispute.”
This argument is a simple and obvious non sequiter; it matters naught what “[t]he large population of Brazilians all over the Americas” knew about Complainant. This proceeding concerns Respondent’s knowledge in 2004, when it registered one of the disputed domain names following an acquisition, or 2007, when it registered the other. The notion that because Respondent sometimes sells domain names it registered this one intending to sell it (another non sequiter) misses the point – what’s at issue under paragraph 4(a)(iii) is Respondent’s knowledge of the mark – and ignores well-settled Policy precedent that selling domain names by itself is lawful and not automatic evidence of bad faith.3
As with any other matter in a Policy proceeding, bad faith in registration must be proven, with evidence. See Policy, paragraph 4(a) (“the complainant must prove that each of these three elements are present;” emphasis supplied); Rules, paragraph 3(b)(xv) (quoted below); see also Western Research 3000, Inc. v. NEP Products, Inc., WIPO Case No. D2004 0755 (“The Policy requires the Complainant to prove each of the three elements” (emphasis in original).
The Panel Majority finds4 as evidence of actual knowledge: identity of the disputed domain name with Complainant’s mark and Respondent’s failure to deny actual knowledge. The former, while pertinent under paragraph 4(a)(i), has evidentiary force under paragraph 4(a)(iii) only when the mark in question is so distinctive that identity implies knowledge. A registrant of, say, <bzzaget.com> would have a difficult time credibly denying knowledge and imitation, see BzzAgent, Inc. v. bzzaget.com c/o Nameview Inc. Whois IDentity Shield and Vertical Axis, WIPO Case No. D2010-1187, while a registrant of a domain that is a common word would not, see Virgin Enterprises Limited v. Domain Administrator, WIPO Case No. D2013-1678. Here the mark and disputed domain names are a common phrase in Spanish and Portuguese and could just as likely (far more likely in my opinion) have been chosen by Respondent for its value as a common phrase.
Respondent’s failure to deny knowledge in the circumstances of this proceeding similarly carries no evidentiary weight in my view.5 First of all, Respondent doesn’t have to prove or deny anything; the Complainant, at least according to the Policy and Rules, bears the burden of proof on registration and use in bad faith. Second, perhaps Respondent, a corporate entity, lacks access to what its responsible individuals had in mind a decade ago. And what constitutes a corporation’s knowledge? Given the passage of time I deem no statement at all far more credible than a self-serving denial that would fly in the face of the automatic registration procedures employed by domainers. Compare CVS Pharmacy, Inc. v. Top Investments, LLLP, WIPO Case No. D2011-0379; see also Salt River Community Gaming Enterprises (d/b/a Casino Arizona) v. Fort McDowell Casino, WIPO Case No. D2007-0416 (respondent’s denial of complainant’s mark long after registration found “internally inconsistent and defies common sense.”) But the critical point is simply that neither Complainant nor the Panel majority cites any proof of actual knowledge or of sufficient facts from which knowledge can fairly be inferred.
The only other basis for the Panel majority’s inference of actual knowledge is Respondent’s sometime use of the disputed domain name for a website in the Portuguese language that includes hyperlinks to Complainant’s competitors. Such use, the extent and timing of which the Complainant does not allege and as to which there is no proof, might be deemed use in bad faith. Had that conduct been continuous since immediately after registration an inference of registration in bad faith might be appropriate.6 But there is no allegation and certainly no proof of that.
Paragraph 2 of the Policy and Policy precedent may place upon Respondent, a domainer, some duty to investigate similarity with existing trademarks prior to registration of any domain name, even one consisting of a common word or phrase. WIPO Overview 2.0, paragraph 3.4; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304. No case I know of, however, has required inquiry beyond the domainer’s home country or occasionally other major jurisdiction such as the US or European Union. Especially is that so when as here the domain name is a common phrase. Had Respondent searched the database of the (USPTO) prior to registration of the two disputed domain names here it would have found no reference to Complainant or its mark, only the USPTO’s denial of a third party’s comparable application on the ground that the phrase was descriptive. Complainant does not allege and the record contains no proof of common law rights in the US at those times.7 In such circumstances Respondent was entitled to rely on the first come, first served principle of domain name registration. In such circumstances the Panel majority’s finding of registration in bad faith is, with respect, wholly unjustified.
I suppose that Respondent’s actual knowledge is possible, but UDRP panels should act on proof, not supposition or possibilities. Sun International (IP) Limited v. NameSentinel Admin and Sun Ventures Development Limited, Arthur Tsang, WIPO Case No. D2014-1190 (“It is of course possible that the Respondent only . . . after it became aware of the Complainant's [mark], but while there may be room for doubt there is nothing before the Panel to justify a finding to that effect.”) One simple and undisputed fact should determine the outcome of this proceeding: As in Phones4U Limited and Mobileserv Limited v. Marchex Sales Inc., WIPO Case No. D2011-1656, “no evidence has been adduced by the Complainant in support of [its] contentions [that Complainant’s marks were very well-known at the time that the Disputed Domain Name was registered], insofar as they extend beyond the [Complainant’s home country].” Ten years ago Respondent registered a domain name incorporating a common phrase, one prima facie apparently incapable of trademark registration. Any reasonable inquiry at that time would not have disclosed the existence of the Complainant or the Brazilian trademarks upon which the Complaint is based. I therefore would deny the Complaint for failure to prove registration in bad faith.
The scant content of the Complaint, coupled with the fact that Complainant is represented by counsel (see IUNO Advokatpartnerselskab v. Angela Croom, WIPO Case No. D2011-0806 (“a represented complainant… should be taken to have known and understood the Policy and should be taken to have known and desired the natural and probable consequences of its actions.”), in my opinion justifies a finding of abuse of this administrative proceeding. Rules, paragraph 1, 15. Any of the following circumstances supports such a finding. That all are present in this case makes such a finding as close to mandatory as the Policy allows.
“[T]he complainant… misled the panel” (WIPO Overview 2.0, paragraph 4.17; see also Chuan Sin Sdn. Bhd. v. Internet Admin (not for sale), Reflex Publishing Inc., WIPO Case No. D2014-0557; Coöperatie Univé U.A. v. Ashantiplc Ltd / c/o Domain Name Privacy LLC, WIPO Case No. D2011-0636), by not bothering to disclose its unsuccessful attempt at USPTO registration. Though sloughed off by the Panel majority, this action by a national trademark registry is surely relevant to the circumstances of any basis for Respondent’s actual knowledge when registering the disputed domain names (or belief as to a right to register). Even more is it pertinent to Complainant’s argument, rejected by the USPTO and contrary to common sense, that its mark is not descriptive. And falsus in uno, falsus in omnibus – it leads me to question what other relevant facts the Complainant may have intentionally omitted.
Complainant has flouted two express provisions of the Rules. Paragraph 3(b)(xv) requires that a complainant “Annex any documentary or other evidence, including a copy of the Policy applicable to the domain name(s) in dispute and any trademark or service mark registration upon which the complaint relies.” (emphasis supplied). In this proceeding the Complainant only refers to its marks, offering to provide the Panel with copies upon request.8 Paragraph 12 of the Rules provides that “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.” Complainant not only submitted a reply brief solely on its own authority, without seeking the Panel’s permission, it did so under guise of providing its Panel nominees.9 It is now a Consensus View (WIPO Overview, paragraph 4.2) that “The party submitting its filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response.” Here Complainant did not bother to ask permission or provide such an explanation and submitted nothing more than reargument of matters in the Complaint. Ignoring these Rules is inexcusable conduct for a represented complainant.
Finally and most importantly, this Complaint is frivolous and a complainant, particularly a represented complainant, should have known it. WIPO Overview 2.0, paragraph 4.17: “the complainant in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP.” Complainant has advanced an argument that depends upon distinctiveness of its marks, something the USPTO has twice found not to be the case. All Complainant has alleged is ownership of trademarks and an active business in Brazil. Nothing in the Complaint states or suggests any logical reason why Respondent should have any knowledge of a Brazilian bank or its trademarks. A finding of abuse of this proceeding and an attempt at Reverse Domain Name Hijacking is richly deserved.
Richard G. Lyon
Date: September 24, 2014
1 Complainant pleads “must have known.”
2 As discussed below, no trademarks are annexed to the Complaint, in spite of the Rules’ clear command that they be included.
3 Serial abusive registrations are dealt with under paragraph 4(b)(ii) of the Policy, another matter neither proven by Complainant nor relied upon by the Panel majority.
4 The Panel Majority is of course permitted to investigate and refer to public information in reaching its determination, see WIPO Overview 2.0, paragraph 4.5. I quarrel not with the Panel majority’s referring to material outside the Complaint but with the conclusions it draws from the facts found.
5 When a Respondent defaults the general rule is that a pleaded but unsupported allegation is not deemed admitted. See WIPO Overview 2.0, paragraph 4.6 ("There are many examples of cases (typically involving complaints based on wholly unsupported assertions or mere conclusory statements) to which there has been no response where (not withstanding such respondent default) the decision has nonetheless gone in favor of the respondent on grounds that the complainant has failed to prove its case.") I fail to see why things should be different when a response is filed.
6 Then again it might not be, given that Respondent had no reason to know of the existence of Complainant or its marks.
7 Complainant did not seek US registration of its marks until 2012, and its application met the same fate as the earlier third party application – denial for descriptiveness. And the Complaint relies only on Complainant’s rights in Brazil and its unsupported assertion that Respondent “must have known” of them.
9 The three-member panel in The Teaching Company, LLC d/b/a The Great Courses v. Worldwide Media Inc, WIPO Case No. D2014-0457, and The Teaching Company, LLC, d/b/a The Great Courses v. Brendhan Hight, Marchex Sales, LLC, WIPO Case No. D2014-0448, reprimanded the complainant in those cases for this tactic.