WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hermex Iberica, S.A. v. HerMeX Dating / BuyBestDomains.com
Case No. D2015-1295
1. The Parties
The Complainant is Hermex Iberica, S.A. of Barcelona, Spain, represented by EMME & PI, Spain.
The Respondent is HerMeX Dating / BuyBestDomains.com of London, United Kingdom of Great Britain and Northern Ireland, internally represented.
2. The Domain Name and Registrar
The disputed domain name <hermex.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 27, 2015. On July 27, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 28, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 29, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 3, 2015.
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 Respondents of the Complaint, and the proceedings commenced on August 7, 2015. On August 8, 2015, BuyBestDomains.com wrote to the Center stating that "we are not owner of that domain name" and requesting not to be included in this case. In accordance with the Rules, paragraph 5(a), the due date for Response was August 27, 2015. The Response was filed by HerMeX Dating with the Center on August 27, 2015.
The Center appointed Alistair Payne as the sole panelist in this matter on September 14, 2015. 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 produces furniture and teaching materials and equips children's nurseries and educational centres. Having commenced operations in 1988, it operates primarily in Spain but has distributors in Latin America, North Africa, and the Middle East. It owns Spanish service mark registration number 2.697.458 dating from 2006 and Spanish trade mark registration number 2.779.142 dating from 2007, which are both combined device and word marks and contain the word mark HERMEX.
The disputed domain name was registered on July 4, 2014. The Respondent BuyBestDomains.com with an address in Middlesex, England was the registrant at the date on which the Complaint was filed on July 27, 2015. At that time, the disputed domain name resolved to a parking page featuring links to both the Complainant's and its competitors' websites. However, by July 28, 2015, following a verification check by the Registrar, the disputed domain name had been transferred to the Respondent HerMeX Dating also with an address in Middlesex, England. The disputed domain name now resolves to a page for the HerMeX Dating website.
5. Parties' Contentions
The Complainant submits that it owns registered trade mark rights in Spain as noted above and that it has been in the market for 27 years and is a welknown brand having in 2014 a turnover of some 5 million EUR from 9,000 customers, of which 8,000 were schools, and a market share of 15% of the Spanish market in this sector. It says that the disputed domain name is at the least confusingly similar to its combined device and word marks which contain the HERMEX word mark.
The Complainant says that the Respondents have not used or made demonstrable preparations to use the disputed domain name, or any name corresponding to the disputed domain name, in connection with a bona fide offering of products or services, before receiving notice of this dispute, and neither are they commonly known by the disputed domain name. The Complainant also says that the Respondents have not made a legitimate fair or noncommercial use of the disputed domain name for the reasons set out below.
The Complainant alleges in summary that the Respondents registered the disputed domain name with the purpose of selling it for a higher price than they paid for it. The Complainant notes that since the first offer for sale was made by Exis Media only two days after the initial registration of the disputed domain name on July 4, 2014, there have been several changes of registrant for the disputed domain name and each time the registrant has sought a higher price for its transfer, starting from a price of 2,999 USD and finally asking 78,500 USD.
These offers and subsequent negotiations generally resulted in the registrant of the disputed domain name seeking to increase the purchase price, and following rejection by the Complainant on the basis that it thought that it had already negotiated a sale, the subsequent transfer of the disputed domain name to a new registrant. It was after such negotiations and the unilateral raising of the purchase price, that Exis Media transferred the disputed domain name to Domains Wow. The latter registrant then made an offer to the Complainant and after negotiations sought to increase the price and then to transfer it to the Respondent BuyBestDomains.com. This Respondent sought 78,500 USD from the Complainant for the transfer of the disputed domain name. When an agreement was not forthcoming and after the Respondent's receipt of the Complaint filed with the Center, the Complainant notes that the Respondent BuyBestDomains.com transferred the disputed domain name on July 29, 2015 to the Respondent HerMeX Dating. The Complainant claims that this latter transfer is an example of cyberflight and is further evidence of the registration and use of the disputed domain name in bad faith.
The Complainant next submits that the use of the disputed domain name by the Respondent, BuyBestDomains.com was not legitimate and that the disputed domain name resolved to a page on which there were links both to the Complainant's site and to those of its competitors. The Complainant also says that the Respondent HerMeX Dating's use of the disputed domain name to resolve to its dating website page is not legitimate and is a ruse in order to prevent the Complainant from registering or owning the disputed domain name. The Complainant notes various indicators suggesting that the site is a fake site, in particular the copyright notice on the bottom of the site that suggests copyright ownership from 2008- 2015, the development of 3,000 users after only two days of the site being in service and the fact that there is no other apparent reference on the Internet to this dating service apart from this page.
As a consequence the Complainant alleges that the disputed domain name was both registered and used in bad faith by the Respondents.
The Respondent BuyBestDomains.com claims that it is not the owner of the disputed domain name. The Respondent HerMeX Dating says that it acquired the disputed domain name on July 26, 2015 from the BuyBestDomains.com domain name selling website and then became a partner with Datingfactory.com. It submits that it does not know the previous owners of the disputed domain name and was not aware of the difficulties experienced by the Complainant with the previous owners.
This Respondent says that many websites incorporate the word "hermex" including the websites "www.hermexfx.com" and "www.hermex.mx" and that the Complainant is trying to steal the disputed domain name from it by using the Policy.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns Spanish service mark registration number 2.697.458 dating from 2006 and Spanish trade mark registration number 2.779.142 dating from 2007, which are both combined device and word marks and contain the word mark HERMEX. The Panel finds that the dominant element of each of these combined marks is the word mark HERMEX and therefore the Complainant has demonstrated that it has rights in this name or mark for the purposes of the Policy. As the substantive part of the disputed domain name is identical to HERMEX, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant's mark and the Complaint succeeds under this element of the Policy.
B. Rights or Legitimate Interests
The Panel finds that the Complainant has made out a prima facie case that the Respondents have no rights or legitimate interests in the disputed domain name. There is no evidence that before the filing of the Complaint the Respondents had made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of products or services or that they were commonly known by the disputed domain name at that date. Neither is there any evidence to suggest that the Respondents have made a legitimate, fair, or noncommercial use of the disputed domain name.
Although the Respondent HerMeX Dating, says that it acquired the disputed domain name for the purposes of its legitimate dating business, for the reasons set out below under bad faith, the Panel does not accept this explanation or find that it rebuts the prima facie case made out by the Complainant under this head.
As a result, the Panel finds that the Complaint succeeds under this element of the Policy.
C. Registered and Used in Bad Faith
The disputed domain name was first registered on July 4, 2014 by a predecessor of the Respondents and many years after the Complainant's commencement of its business in 1988 and Spanish trade mark registration in 2006. For the purposes of the Policy, the relevant date of registration by the Respondent BuyBestDomains.com was around October 7, 2014, being the date on which the previous owner, Domains Wow, terminated negotiations with the Complainant and on which the Complainant commenced negotiations with BuybestDomains.com. Certainly, at the date of filing of these proceedings, being July 27, 2015, BuyBestDomains.com was listed as the Registrant. After receiving notice of the dispute it appears that BuyBestDomains.com transferred the disputed domain name to HerMeX Dating over the course of the next two days. By July 28, 2015 HerMeX Dating was the listed registrant.
Cyberflight is well recognized by previous panels. In Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696, the panel found as follows:
"'Cyberflying' is the term used to describe an attempt to avoid or delay judicial or UDRP proceedings by changing domain registration details or registrars after learning of a complaint…. The Panel finds evidence of cyberflying in this case, where a flurry of de-registration and re-registration immediately followed the Complainant's cease-and-desist email. Although the conduct here may not technically violate Paragraph 8(a) of the Policy (prohibiting domain transfers during a pending administrative, court, or arbitration proceeding), it does support a conclusion of bad faith…."
It is clear to the Panel that the transfer to HerMeX Dating was made after filing of the Complaint and communication to BuyBestDomains.com. The overwhelming inference is that there is some relationship between the two Respondents and that the transfer was made in an effort to avoid the proceedings and to legitimize the ownership and use of the disputed domain name by setting up a dating website and business. The Panel notes, as the Complainant points out, that it seems highly unlikely that the dating business is bona fide when it ostensibly has 3,000 subscribers and a copyright notice dating from 2008 in circumstances that there appears to be no other history of the site noted and by the Respondent's own admission, the website is in any event only two days old.
It seems to the Panel that this is a clear case of cyberflight and supports a conclusion of registration and use of the disputed domain name in bad faith by both the Respondents. The Panel's findings are reinforced by the repeated history through two previous registrants of the disputed domain name, whereby the Complainant was led down a garden path of negotiation only to find that the disputed domain name had been transferred on at the moment that it thought that it had successfully agreed a sale. In particular the Panel notes the manner in which the sale price from the outset of negotiations with the first registrant began just below 3,000 USD and ended up alarmingly in the negotiations with BuyBestDomains.com at approximately 78,000 USD. This pattern of conduct is not typical of bona fide negotiations and the only reasonable inference is that the registrants, or at the least the two Respondents to these proceedings, were manipulated by the same moving spirit or were all somehow connected and acted in a concerted effort to extort the greatest amount possible from the Complainant.
Paragraph 4(b)(i) of the Policy sets out the following circumstance that is deemed to be evidence of registration and use of a disputed 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"
It appears that just as the Complainant thought it had reached an agreement as to a sale price for the disputed domain name, the then registrant transferred it without notice or any other reason to the Respondent BuyBestDomains.com who then offered the disputed domain name for sale to the Complainant at a hugely inflated price and well in excess of the documented out-of-pocket costs attributable to the disputed domain name. This conduct by the Respondent BuyBestDomains.com fulfills the requirements of this section of the Policy and provides further evidence of the registration and use of the disputed domain name in bad faith. This Respondent's use of the disputed domain name to divert Internet users to a place keeper page featuring links to the Complainant's competitors only serves to reinforce the inference of registration and use in bad faith.
As a result the Panel finds that the Respondents both registered and used the disputed domain name in bad faith and therefore the Complaint succeeds under this element of the Policy.
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 name <hermex.com> be transferred to the Complainant.
Date: September 20, 2015