WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
A'Gaci, L.L.C. v. Radio plus, spol. s r.o.
Case No. D2014-2101
1. The Parties
The Complainant is A'Gaci, L.L.C. of San Antonio, Texas, United States of America (the "USA"), represented by Cox Smith Matthews Incorporated, USA.
The Respondent is Radio plus, spol.s r.o. of Praha, Czech Republic, self-represented.
2. The Domain Name and Registrar
The disputed domain name <agaci.com> is registered with Gransy, s.r.o. d/b/a subreg.cz (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 1, 2014. On December 2, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 10, 2014, the Registrar transmitted by email to the Center its verification response containing registrant data that differed from those listed in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on December 14, 2014.
On December 10, 2014, the Center notified the Parties in both English and Czech that the language of the Registration Agreement for the disputed domain name was Czech. The Complainant requested for English to be the language of the proceeding in its Complaint and submitted further evidence with its amended Complaint on December 14, 2014. The Center received emails from the Respondent on December 12, 15, 16, and 17, 2014 requesting Czech to be the language of the proceeding.
The Center verified that the Complaint together with the amended 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 December 16, 2014. With emails dated January 6 and 7, 2015, the Respondent requested an extension of the Response due date. In light of the Respondent's request, the Complainant was requested to comment. On January 8, 2015, the Complainant objected to the Respondent's request for extension of the Response due date. On January 9, 2015, the Center extended the Response due date to January 15, 2015. The Response was filed with the Center on January 15, 2015, partly in Czech and partly in English.
The Center appointed Assen Alexiev, Richard G. Lyon and The Hon Neil Brown Q.C. as panelists in this matter on February 9, 2015. 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 Panel considered the following circumstances in relation to the language of the proceedings. Under paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The language of the Registration Agreement for the disputed domain name is Czech.
The Complaint was filed in English. The Complainant has requested the language of the proceeding to be English and has pointed out that the Respondent understands and can communicate in English. In support of its request, the Complainant has submitted pre-complaint email correspondence in English between the Parties, has noted that the website at the disputed domain name is in English, and has referred to a prior proceeding under the Policy (Les Développements Angelcare Inc. v. Radio plus, spol.s r.o., WIPO Case No. D2012-1210), where the Respondent also participated and filed its Response in English.
The Respondent has communicated with the Center in English, has requested the language of the proceeding to be Czech and has filed its Response partly in English and partly in Czech. The Respondent has confirmed that while it understood English, it insisted the language of the proceeding to be Czech because it would need the documents from this proceeding for a lawsuit in the Czech courts which would follow this proceeding, and which would be in the Czech language.
The members of this Panel (in whose appointment the Respondent has participated) do not understand the Czech language. The only common language, understood by the members of the Panel and the Parties, is English. In these circumstances, the use of the Czech language in this proceeding would not be convenient. At the same time, the use of the English language would be convenient to the Parties and to the Panel, without putting the Respondent into undue disadvantage. Whether the Respondent will initiate subsequent legal proceedings before Czech courts and will use in it documents from this proceeding is a matter that is entirely up to the Respondent, and is a circumstance that is extraneous to this proceeding.
Therefore, and in exercise of its powers under paragraphs 10(a), (b) and (c), and 11(a) of the Rules, the Panel issued its Procedural Order No.1 on February 17, 2015, whereby it decided that the language of this proceeding shall be English, and invited the Respondent to file an English translation of the Czech portions of its Response not later than on February 23, 2015.
On February 18, 2015, the Respondent requested an extension of the deadline for filing of the English translation of its Response. The Panel reviewed the request of the Respondent and decided not to grant it, as it found that the Respondent had been provided with sufficient time to prepare the English translation of its Response and that the Respondent had failed to show any exceptional circumstances supported by good cause that would justify an extension of the deadline for doing so. On February 23, 2015, the Respondent filed with the Center its Response entirely in English.
On March 2, 2015, due to exceptional circumstances, the Panel extended the due date for rendering its Decision until March 9, 2015.
4. Factual Background
The Complainant operates retail stores featuring clothing, footwear and accessories. It started its business in November 1987, and now operates 52 stores in the USA. In 2013, the Complainant's net sales amounted to approximately 144.7 million US Dollars, and its net sales in the two preceding years also exceeded 100 million US Dollars. The record contains no evidence of sales in Europe or anywhere else outside the USA.
The Complainant is the owner of the following trademark registrations for the sign A'GACI (the "A'GACI trademark"):
- The word trademark A'GACI with registration No. 1,504,380, registered in the USA on September 13, 1988 for services in International Class 42;
- The word trademark A'GACI with registration No. 3,172,981, registered in the USA on November 21, 2006 for goods in International Class 25; and
- The word trademark A'GACI with registration No. 3,172,994, registered in the USA on November 21, 2006 for services in International Class 35.
The Complainant registered the domain name <agacistore.com> on September 24, 2003 and uses it for its corporate website.
According to the parties' submissions, the Respondent registered the disputed domain name in 1997. The only use to which the disputed domain name has been put has been pages of hyperlinks in various languages (including Chinese, Czech, and English), some but not all of which include references to the Complainant or other clothing companies. At some point, the disputed domain name was used to generate click-through revenue by initially directing consumers to the Complainant's website at "www.agacistore.com" and then redirecting them to other sites related to the Complainant or the Complainant's competitors.
5. Parties' Contentions
The Complainant asserts that it has spent significant time, money, and efforts to promote the A'GACI trademark and has continuously used it since 1987. As a result of these efforts, there is substantial customer recognition of the A'GACI trademark.
The Complainant contends that the disputed domain name is identical to the AGACI trademark except for punctuation that cannot be included in a domain name.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name. The Complainant has never had a business relationship of any kind with the Respondent, and the Complainant has never granted a license to the Respondent to use the A'GACI trademark.
The Complainant points out that the Respondent is not making a fair use of the disputed domain name and is not using it as part of a legitimate business or in connection with a bona fide offering of goods or services. The Respondent's use as described above is an attempt to mislead Internet users that the use of the disputed domain name takes them to the Complainant's website. In this process, a cookie is placed on the consumer's computer, so subsequent visits take the consumer to the Respondent's website which features links to "Agaci Clothing" and "Agaci". Upon clicking these links, the consumer is redirected to separate parked websites that feature sponsored links, including references to various clothing products unrelated to the Complainant.
The Complainant asserts that the disputed domain name was registered and is being used in bad faith.
The Complainant states that the Respondent has not made good faith efforts to avoid registering a domain name that is confusingly similar to marks held by others. The Respondent has registered the disputed domain name approximately ten years after the date of first use of the A'GACI trademark, and approximately nine years after its first registration as a trademark. The term "agaci" is not a generic or descriptive term, and the Respondent was on notice of the Complainant's A'GACI trademark prior to registering the disputed domain name.
In the Complainant's submission, the Respondent uses the A'GACI trademark in the disputed domain name in an intentional attempt to attract, for commercial gain, consumers to the Respondent's website to obtain financial gain from the goodwill of the Complainant by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent's website. Since the Respondent's site has links to various retail clothing services, some of which mention or include "Agaci", the Complainant's customers are likely to be confused as to the source of the website and services. In an email correspondence with the Complainant's counsel, the Respondent indicated that it had earned from the disputed domain name between 9,000 and 12,000 US Dollars for each of the last two years.
According to the Complainant, the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant, and by registering the disputed domain name, the Respondent has prevented the Complainant from reflecting the A'GACI trademark in a corresponding domain name.
The Complainant submits that it has contacted the Respondent and has requested an amount for which the Respondent would sell the disputed domain name. The Respondent replied "$175K" (presumably 175,000 US Dollars), which is an amount that clearly exceeds the typical cost of acquiring and maintaining the disputed domain name.
The Respondent submits that the Complainant does not have registered trademarks for the territory of the Czech Republic or for any other country in the European Union. The Complainant is unknown in Europe; it is active only in the USA and has only recently started to expand to other countries, but not in the European Union, as evident from the information submitted by the Complainant for its trademark applications. The Respondent points out that the Complainant has started its online business in 2004, after it registered the domain name <agacistore.com>, and any business of the Complainant prior to 2004 was not carried out online. The disputed domain name was registered in 1997, when the Complainant did not have an online presence.
The Respondent asserts that it did not know about the Complainant or its A'GACI trademark before the submission of the Complaint in this proceeding. The Complainant has never contacted the Respondent with a request not to use the disputed domain name in conflict with the Complainant's trademark. It is not realistically possible for the Respondent to search databases of trademarks of all countries in the world for every domain name it has acquired in order to check if someone had a trademark.
The Respondent alleges that its company was established in 1991. It has started acquiring domain names long ago, because it realized that it might use them in the future. The Respondent has acquired many valuable domain names, mostly containing generic or descriptive words or nicely sounding acronyms that it may use for some future and yet unknown business. Whenever the Respondent decides to start a new business, it knows that it can use for it one of the domain names that it has registered. The Respondent contends that for these reasons it has a legitimate interest in owning domain names that are generic or descriptive words or words from other languages for possible future use.
The Respondent explains that it offers "for rent" the domain names that it has not started using yet. This "rent" generates revenues that enable the Respondent to pay the renewal fees for all domain names registered by it and provides a surplus amount that is used for the registration of additional domain names. According to the Respondent, this activity is legitimate.
The Respondent submits that the situation is the same with the disputed domain name. The word "agaci" means "tree" in Turkish and in "other languages", and the disputed domain name is being rented out to a parking company.
The Respondent contends that it is a legitimate activity to sell domain names. If someone shows an interest in acquiring one of the Respondent's domain names, the Respondent is willing to sell it or swap it for another domain name, if it is not being used for one of the Respondent's projects. The selling price offered by the Respondent to the Complainant's counsel was only a starting price to be negotiated and reflected a level of 15-20 years' worth of the current profit of the Respondent from the renting out of the disputed domain name.
The Respondent requests the Panel to declare that the Complaint was brought in bad faith, because the Complainant has made untrue statements and has distorted the facts.
6. Discussion and Findings
Pursuant to Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(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 Respondent has registered and is using the disputed domain name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
A. Identical or Confusingly Similar
The Complainant has demonstrated that it has trademark rights in the A'GACI trademark. The Respondent has referred to fact that the Complainant does not have trademark rights in the Respondent's jurisdiction. In the Panel's view, the location of the Complainant's trademark rights is irrelevant for the purpose of the finding under the first element of the Policy. As discussed in Paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), if the Complainant owns a trademark, then it generally satisfies the threshold requirement of having rights in a trademark under the first element of the Policy, regardless of the territory for which the trademark is registered.
The Panel notes that there is a common practice under the Policy to disregard in appropriate circumstances the generic Top-Level Domains ("gTLD") such as ".com" for the purposes of the comparison under the Policy, paragraph 4(a)(i). Therefore, the relevant part of the disputed domain name that has to be analyzed is its "agaci" section. The only difference between this section and the A'GACI trademark is the omission in the disputed domain name of the apostrophe included in the A'GACI trademark. This omission does not appreciably change the appearance of the disputed domain name or distinguish it for the A'GACI trademark, and can be attributed by Internet users to the technical impossibility for inclusion of apostrophes in domain names. In view of this, Internet users may regard the disputed domain name as related to the Complainant and to its A'GACI trademark.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant's A'GACI trademark.
B. Rights or Legitimate Interests
The Complainant is required to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant makes such a showing, the Respondent may provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain name. The burden of proof, however, always remains on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. WIPO Overview 2.0, paragraph 2.1.
The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent is using the disputed domain name to generate click-through revenue by initially directing consumers to the Complainant's website at "www.agacistore.com" and then redirecting them through several other websites in an attempt to mislead them that the use of the disputed domain name takes them to the Complainant's website. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent contends that it has a legitimate interest in owning the disputed domain name, as it is a generic word that means "tree" in Turkish and in other languages, and that it is legitimate to "rent" the disputed domain name to a third party. The Respondent confirms that this "rent" generates revenues for the Respondent that exceeds its expenses. The Respondent has not denied the contentions of the Complainant as to how the disputed domain name is currently being used.
The Panel has reviewed the evidence in the case file and has reached the following conclusions. As contended by the Complainant and not denied by the Respondent, the website at the disputed domain name offers a landing page that contains links to "Agaci" and to "Agaci Clothing", and advertises clothing and related products which are competitive to the products of the Complainant. It thus appears that the party using the disputed domain name is seeking to confuse Internet users so that those searching for the Complainant's product could mistakenly reach the website at the disputed domain name and be diverted to websites of third parties that offer products in competition with the Complainant. The party using the disputed domain name in this way is likely profiting from this conduct in the form of click-through revenues, as does the Respondent from the rent it charges. The website at the disputed domain name does not refer in any way to the alleged generic meaning of the word "agaci" in Turkish and does not contain links to subjects related to such generic meaning.
The Respondent alleges that it has "rented" the disputed domain name to a third party, so the question arises whether the Respondent should be held responsible for the way the disputed domain name is being used. As discussed in paragraph 3.8 of the WIPO Overview 2.0, a domain name registrant will normally be deemed responsible for the content appearing on the website at its domain name, even if such registrant may not be exercising direct control over such content. This Panel subscribes to this view and finds that the Respondent is responsible for the way the disputed domain name is being used and takes this use into account in evaluating the issue of whether the Respondent has rights or legitimate interests in the disputed domain name.
It is generally recognized that the use of a domain name to post parking and landing pages or pay-per-click links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a "bona fide offering of goods or services" or from "legitimate noncommercial or fair use" of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder. As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted pay-per-click links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the Policy, provided there is no capitalization on trademark value (a result that pay-per-click page operators can achieve by suppressing pay-per-click advertising related to the trademark value of the word or phrase). By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion. WIPO Overview 2.0, paragraph 2.6.
In the present case, the website at the disputed domain name contains pay-per-click links that are not related to the alleged generic meaning of the word "agaci", but to the goods and services of the Complainant, for which the A'GACI trademark is registered. In the Panel's view, this use of the disputed domain name unfairly exploits the popularity of the A'GACI trademark and is not a legitimate use under the Policy.
Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant's proof as described in the preceding section amply demonstrates that the Respondent has used the disputed domain name in bad faith. Pay-per-click pages featuring the products or services of the Complainant or its competitors make a textbook example of taking advantage of the value of a complainant's mark. Policy, paragraph 4(b)(iv). Particularly is that so when as here the mark at issue is a coined, distinctive term, of no demonstrated meaning in any language used by the Respondent. Linking to the Complainant's own website demonstrates the Respondent's knowledge of the Complainant and its mark. The Respondent remains responsible under the Policy for use undertaken by those to whom it has "rented" the disputed domain name. WIPO Overview 2.0, paragraph 3.8.
The Complainant must separately prove that the Respondent's registration of the disputed domain name was also made in bad faith, Id., paragraph 3.1; see also, e.g., Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011, and here the evidence is less persuasive. While the Complainant registered and used its mark years prior to the Respondent's registration of the disputed domain name, its only trademark rights demonstrated in the record occurred in the USA. The Respondent has operated only in the Czech Republic, and nothing in the record suggests why it should have had any knowledge of the Complainant or its mark at its registration in 1997.
According to the Internet archive at "www.archive.org", the Respondent's first use for pay-per-click links occurred in 2000, three years after registration. While immediate use of a domain name for hyperlinks that refer to or invoke the trademark owner or its products may allow a panel to infer actual knowledge; a three-year gap makes that inference more difficult, and this Panel is not willing to make it on the present record.
The Respondent is a domain name aggregator, and domainers may have some obligation to use good faith efforts to avoid registering others' marks, even inadvertently. WIPO Overview 2.0, paragraph 3.4; Media General Communications, Inc. v. Rarenames, WIPO Case No. D2006-0964. But this Panel cannot discern a reason why a Czech respondent, not shown to have international operations, should be required to search abroad when at the registration date of the disputed domain name the mark at issue was not (at least so far as the evidence shows) internationally known, was not used by the Complainant outside the USA, and was not obviously famous in the trademark sense. Compare Intesa Sanpaolo S.p.A. v. Gordon Bewick, WIPO Case No. D2014-1907 (Hungarian mark, US respondent).
Publicly available records indicate that the registration information for the disputed domain name may have changed many times since its initial registration. The Panel cannot ascertain the registration history, though the Complainant could have done so by payment of a modest fee. Such information might have supported a claim that bad faith in registration should be evaluated at a date subsequent to 1997 and the Respondent's pay-per-click use, either because the Respondent renewed its registration (see Eastman Sporto LLC v. Jim and Kenny, WIPO Case No. D2009-1688), or transferred ownership among different registrants (see WIPO Overview 2.0, paragraph 3.7; BMEzine.com, LLC. v. Gregory Ricks / Gee Whiz Domains Privacy Service, WIPO Case No. D2008-0882). This Panel does not share the view that a registrant who originally registered a domain name in good faith and retains ownership of it is necessarily free continuously and flagrantly to exploit the trademark of another person without fear of a Policy proceeding. Nevertheless, the Panel does not consider it within its brief to make either party's case for it, and must make its determinations based upon the record before it and, to a lesser extent, the parties' pleadings. On that basis, the Panel finds that the Complainant has not proven that the Respondent registered the disputed domain name in bad faith.
D. Abuse of the Administrative Proceeding.
The Panel sees no basis for a finding that the Complainant brought this case in bad faith, engaged in reverse domain name hijacking, or otherwise abused the UDRP process. See Rules, paragraph 1 and 15. The Complaint fails for insufficiency of its evidence of registration in bad faith, not any misleading information or argument advanced by the Complainant. At worst the Complainant is guilty only of overrating the renown of its mark in 1997. That does not establish bad faith. The Respondent's request for a finding of abuse is therefore denied.
For the foregoing reasons, the Complaint is denied.
Richard G. Lyon
The Hon Neil Brown Q.C.
Date: March 10, 2015