WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
GIGS United S.L. v. SIE MANTIC
Case No. D2014-1689
1. The Parties
The Complainant is GIGS United S.L. of Barcelona, Spain, represented by Sugrañes, S.L., Spain.
The Respondent is SIE MANTIC of Amsterdam, the Netherlands, represented by PLANT Hosting & Colocation BV, the Netherlands.
2. The Domain Name and Registrar
The disputed domain name <trendyhair.com> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 29, 2014. On September 29, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 29, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 10, 2014.
The Center verified that the Complaint together with the amendment to 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 13, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was November 2, 2014. The Response was filed with the Center on October 30, 2014.
The Center appointed Brigitte Joppich as the sole panelist in this matter on November 10, 2014. 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 paragraph 7 of the Rules.
The Center received a supplemental submission from the Complainant on November 12, 2014.
4. Factual Background
The Complainant is specializing in the manufacturing, production, development, design, marketing, export, import, distribution and sale of, amongst others, cosmetic products, grooming, drugstore, perfumery, hygiene, and beauty products.
It owns registered trademark rights in the Community trademark registration no. 12394508 TRENDY HAIR & design, applied for on December 3, 2013 and registered on May 13, 2014 in connection with goods and services in classes 3, 35, 39 and 45, and Spanish trademark registration no. 3062639 TRENDY HAIR & design, applied for on February 8, 2013 and registered on May 31, 2014 in connection with goods in class 3 (hereinafter referred to as the “TRENDY HAIR Marks”). The Complainant promotes its goods and services online at “www.trendyhair.es”.
The disputed domain name was registered on September 7, 1999 und is currently used in connection with a parking website with advertising links promoting third parties’ goods and services.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case.
(1) The disputed domain name is identical to the Complainant’s TRENDY HAIR Marks and its domain name.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name as the Respondent has no registered rights in a trademark containing the term “trendyhair”, as there is no evidence that the Respondent has been commonly known by the trademark TRENDYHAIR, as there is no evidence or a legitimate explanation for the Respondent’s acquisition of the disputed domain name, which is in fact used in connection with a parking website featuring pay-per-click advertising links to hair styles and haircuts, and as the Respondent has not been licensed or authorized by the Complainant to use the TRENDY HAIR Marks and/or to request the registration of the disputed domain name.
(3) The disputed domain name was registered and is being used in bad faith. The Complainant argues that the disputed domain name is offered for sale on the website at “www.trendyhair.com”, that the Respondent was contacted by the Complainant’s registrar, which tried to recover the disputed domain name, and that the Respondent asked for EUR 2,500.00 for the transfer of the disputed domain name, and that the Respondent “gave his contentment” to transfer the disputed domain name against payment of EUR 2,500.00 on September 1, 2014 through Sedo.com. However, the Complainant contends that it received a cancellation email from Sedo.com on September 17, 2014 and that the Respondent informed the Complainant’s registrar that due to a higher bid on the domain name of around EUR 4,500.00, it would continue negotiations with another buyer. Finally, the Complainant states that the Respondent provides advertising links to companies in competition with the Complainant at the website available at the disputed domain name, which constitutes bad faith as well.
In its Supplemental submission, the Complainant argues that the Respondent was not entitled to file the Response as it has not proven its identity, or the capacity in which he represents any of the companies mentioned in the Response, or the connection between them. It argues that the Respondent’s contentions with regard to the disputed domain name being hacked are doubtful and should be disregarded, that the Respondent has not proven that it has rights or legitimate interests in the disputed domain name and that it is related to Sunglitz Benelux BV and that Sunglitz Benelux BV and Trendy Hair Company are related, and that the Respondent has provided invoices which are reproduced in a language other than the language of the proceeding, which could have been manipulated and should therefore be disregarded
The Respondent requests the Administrative Panel to deny the remedies requested by the Complainant. With regard to the three elements specified in paragraph 4(a) of the Policy, the Respondent argues as follows:
(1) The Respondent registered the disputed domain name on September 7, 1999 while the Complainant’s trademark rights were registered only in 2014. The Respondent contends to own rights in the trademark T TRENDY HAIR COMPANY & design through Benelux trademark registration no. 0660274 filed on September 15, 1999. Furthermore, the Respondent states that the Complainant’s TRENDY HAIR Marks are not very strong but descriptive.
(2) The Respondent argues that it owns rights in “Trendy Hair” as The Trendy Hair Company and Sunglitz Benelux BV own the trademark rights since 1999 and as it operates a website at “www.trendyhair.nl”. It states that the disputed domain name was hacked in order to sell the disputed domain name and that the Respondent realized this only through the Complaint. The Respondent argues that the Complainant must have been aware of Trendy Hair Company’s existence.
(3) The Respondent argues that the disputed domain name was first registered in 1999 and could not have possibly been registered in bad faith with regard to the Complainant’s rights. The Respondent requests a finding of Reverse Domain Name Hijacking.
6. Discussion and Findings
The first point to be dealt with is the admissibility of the Complainant’s supplemental submission which refers to the identity of the Respondent. The Rules do not allow the parties to file supplemental submissions on their own volition, and paragraph 12 of the Rules provides that a panel may in its sole discretion request further statements or documents from either of the parties. Thus, no party has the right to insist upon the admission of additional arguments or evidence. Grounds justifying new submissions are generally those regarding the existence of new pertinent facts that did not arise until after the complaint was filed. In the present case, the Respondent relies upon rights in “Trendy Hair” registered in the name of parties which are not listed in the WhoIs entry of the disputed domain name. Therefore, the Complainant was not able to refer to such circumstances in its Complaint. Under these circumstances, the Panel elects to accept the Complainant’s supplemental submission and has relied on it in reaching this decision.
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
It is consensus view that, although a trademark can form a basis for a UDRP action under the first element irrespective of its priority 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 likely not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right (cf. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) at paragraph 3.1). In the present case, the disputed domain name was registered by the Respondent in 1999. The Complainant did not provide any evidence qualified to question this fact. In turn, the Complainant applied for its first trademark registration only in 2013. The Complainant neither provided any evidence with regard to unregistered trademark rights in TRENDY HAIR predating such registration, nor established that the disputed domain name was acquired by the Respondent after the Complainant achieved rights in TRENDY HAIR, nor demonstrated that the Respondent must have been clearly aware of the Complainant when registering the disputed domain name and that the aim of the registration was to take advantage of the confusion between the disputed domain name and any potential Complainant rights. Therefore, in the view of the Panel, the disputed domain name was not registered in bad faith, the requirements of the third element of the Policy have not been met, and the Complaint must be denied.
Under such circumstances, although the Panel must not come to a conclusion as regards the other requirements under the UDRP, the Panel finds both that the disputed domain name is identical to the Complainant’s marks but also that the Respondent’s “www.trendyhair.nl” website referred to above appears to resolve to a bona fide business.
7. Reverse Domain Name Hijacking
The Respondent requests a finding of reverse domain name hijacking. This is defined in the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Moreover, 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.” As highlighted, amongst others, in Ville de Paris v. Salient Properties LLC, WIPO Case No. D2009-1279 (citing Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing, WIPO Case No. D2005-0309) “[a]llegations of reverse domain name hijacking have been upheld in circumstances where a respondent’s use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy” (see also Goldline International, Inc v. Gold Line, WIPO Case No. D2000-1151).
The Respondent’s registration of the disputed domain name predates the Complainant’s claim of rights in the TRENDY HAIR Marks by far, and the Complainant knew this because it produced the WhoIs record for the disputed domain name as evidence attached to its Complaint. Thus, the Complainant, represented by an IP attorney, should have known that it was unable to prove that the Respondent registered the disputed domain name in bad faith. This suffices to establish Reverse Domain Name Hijacking (cf. M/s. Core Diagnostics v. Herr Guenter Keul, WIPO Case No. D2013-1238; Futuris Automotive Interiors (Australia) Pty Ltd v. X9 Interactive LLC, WIPO Case No. D2011-0596; Pick Enterprises, Inc. v. Domains by Proxy, LLC, DomainsByProxy.com / Woman to Woman Healthcare / Just Us Women Health Center f/k/a Woman to Woman Health Center, WIPO Case No. D2012-1555).
For the foregoing reasons, the Complaint is denied. The Panel finds that the Complainant attempted to engage in Reverse Domain Name Hijacking.
Date: November 19, 2014