WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hopscotch Group v. Perfect Privacy LLC/Joseph William Lee
Case No. D2015-1844
1. The Parties
The Complainant is Hopscotch Group of Paris, France, represented by Cabinet Promark, France.
The Respondents are Perfect Privacy LLC of Jacksonville, Florida, United States of America ("US") and Joseph William Lee of Atherton, California, US, represented by Sheppard, Mullin, Richter & Hampton, US.
2. The Domain Name and Registrar
The disputed domain name <hopscotch.com> (the "Domain Name") is registered with Network Solutions, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 16, 2015. On October 16, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 19, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 28, 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 October 29, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 6, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 26, 2015. On November 4, 2015, the Center received by email a request submitted by the Respondent for the extension of the Response due date in four days, according to paragraph 5(b) of the Rules. The Center notified to the Parties the extension of the Response due date to November 30, 2015 on November 6, 2015. The Response was filed with the Center on November 30, 2015.
The Center appointed Nick J. Gardner, Pierre Olivier Kobel and W. Scott Blackmer as panelists in this matter on December 30, 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.
4. Factual Background
The Complainant is a French public limited company ("société anonyme"). It is the parent company of a group of communication and advertising agencies, and also carries out business in the areas of public relations, events, and developing digital and social web content. It origins were in 2002 and in 2010 it merged with another French company, "Le Public systeme", to form the present group.
The Complainant is the owner of the following word trademarks: Community trademark HOPSCOTCH No. 009607763 registered on December 17, 2010 in Class 42 and Community trademark HOPSCOTCH No. 001588284 registered on March 28, 2000 in Classes 35, 38 and 41 and renewed on March 28, 2010
The Complainant owns the domain name <hopscotchgroupe.com> which is used for its main website "www.hopscotchgroupe.com". It is also the owner of the following domain names:
Note that in relation to at least some of the above domain names attempting to access a website at the relevant address redirects to the Complainant's main website (above). This is the case in relation to <hopscotch.us>.
The filed evidence establishes that in terms of turnover the Complainant is approximately the twentieth largest public relations business in the world. The Respondent does not dispute this evidence.
The Respondent is a private individual based in the US.
The Domain Name was originally registered on February 5, 2004. The Respondent acquired it in April 2010. The Domain Name is not linked to an active website but redirects to an automatically generated parking page.
The Complainant unsuccessfully attempted to purchase the Domain Name from its previous owners in 2005 and in 2008 but never received any response. In 2015 an individual acting on behalf of the Complainant approached the Respondent (but did not identify herself as acting for the Complainant) seeking to buy the Domain Name. The Respondent offered to sell it for USD 250,000. The individual counter offered USD 30,000. No agreement was reached.
5. Parties' Contentions
The Complainant argues that the Domain Name is identical to the HOPSCOTCH trademark, in which the Complainant has rights, given that it incorporates the HOPSCOTCH trademark as a whole.
The Complainant further argues that the Respondent has no rights or legitimate interests in respect of the Domain Name, that it had not licensed or otherwise permitted the Respondent to use its HOPSCOTCH trademark and is not affiliated or otherwise connected to the Respondent.
The Complainant further argues that the Respondent is not generally known by the Domain Name nor has he acquired any trademark rights in the name "Hopscotch".
The Complainant contends that the Respondent has registered and is using the Domain Name in bad faith.
For all of the above reasons, the Complainant requests the transfer of the Domain Name.
The Respondent has produced a very detailed Response and set out numerous authorities in relation to its case. It is not necessary to repeat all of that here. Where appropriate the cases relied upon are addressed by this Panel in its decision below. The salient points the Respondent makes are as follows.
The Respondent accepts that the Domain Name is identical to the Complainant's HOPSCOTCH trademark.
The Respondent says that the Complainant has no reputation within the US (or at best a reputation in the public relations field) and that he had never heard of the Complainant when he acquired the Domain Name.
The Respondent says that he acquired the Domain Name because at the time he thought it was a suitable domain name for use in relation to an online game he was contemplating developing. He says he paid over USD 10,000 to acquire the Domain Name. In the event the game project was not pursued and he has retained (but not used) the Domain Name since then. He says that this establishes that he has a legitimate interest in the Domain Name and that he has not acted in bad faith.
The Respondent also says that this Complaint should never have been brought and asks the Panel to make a finding of Reverse Domain Name Hijacking.
6. Discussion and Findings
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel in respect of each of the Domain Names that:
(i) the Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondents have no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Respondent accepts that the Complainant has rights in the trademark HOPSCOTCH, and the Domain Name is identical to this trademark. The Panel agrees. Accordingly the Complainant has established this element of its case
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that demonstrate a right or legitimate interest in the domain name:
(i) before any notice to you of the dispute, your 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) you (as an individual, business or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent's case in this regard is that sub-paragraph (i) applies. He says that his plans in 2014 when he acquired the Domain Name, to use it in connection with a game he was contemplating developing, establish a legitimate interest. Alternatively he says acquiring a domain name, which comprises an ordinary English word, and which may be suitable for a number of purposes, without knowledge of the Complainant or its trademark, establishes such an interest.
In terms of evidence the Respondent has provided a notarized declaration (the "Respondent's Declaration") in which he states (amongst other things) as follows:
"I acquired the Domain Name in April 2010 from [Ms. Evans]. I emailed [Ms. Evans] on March 30, 2010 to inquire if the Domain Name was available for purchase. I ultimately purchased it for more than USD 10,000. I was interested in the Domain Name because I thought "hopscotch" might serve as a good name for a zombie-oriented online game, the development of which I was involved in at that time. I also wanted to own the Domain Name because, as set forth in my attached email records, I thought it was "a cool name" and could potentially be used for other purposes. The Domain Name reminded me of <foursquare.com>, a domain name, website, and app which, like the Domain Name, bore the name of a popular children's game. Attached hereto as Exhibit A is a true and correct printout of my initial email correspondence with Ms. Evans and subsequent email correspondence with one of my business partners, [Mr. Hedlung], regarding purchase of the Domain Name.
At the time I acquired the Domain Name, I did not know and had never heard of Complainant Hopscotch Group ("Complainant") or its HOPSCOTCH trademark".
The email correspondence attached to the Respondent's Declaration appears to show a discussion about acquiring the Domain Name for use with an online game, but it is only a short exchange and the Respondent has not provided any further information about that project or why it was not pursued. In the circumstances the Panel is somewhat doubtful that the Respondent's possible and undeveloped plans for developing some sort of game were sufficiently developed to amount to "demonstrable plans" and hence establish a legitimate interest. However in view of the Panel's findings in relation to bad faith (see below) the Panel does not need to reach a conclusion on this issue.
The Panel has also considered the wider purpose which the Respondent states he had in acquiring the Domain Name, namely because "I thought it was 'a cool name' and could potentially be used for other purposes". The Respondent has not identified what such "other purposes" might be. However the Respondent's own evidence indicates that he is prepared to sell the Domain Name to a third party, if a suitable price could be agreed. He indicated in response to an unsolicited approach made anonymously on behalf of the Complainant that he would sell it for USD 250,000 and in relation to an approach from a third party he suggested a price of USD 350,000.
The Panel has therefore also considered whether the Respondent's purchase of the Domain Name for indeterminate "other purposes" which purposes include possible resale, establishes a legitimate interest. In this regard the Panel notes the position as set out in paragraph 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), namely
"Does a respondent automatically have rights or legitimate interests in a domain name comprised of a dictionary word(s)? Consensus view: If the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the UDRP, or any other basis for rights or legitimate interests, then the respondent may lack a legitimate interest in the domain name, even if it is a domain name comprised of a dictionary word or phrase. Factors a panel tends to look for when assessing whether there may be rights or legitimate interests would include the status and fame of the trademark, whether the respondent has registered other domain names containing dictionary words or phrases, and whether the domain name is used in connection with a purpose relating to its generic or descriptive meaning (e.g., a respondent may well have a right to a domain name "apple" if it uses it for a genuine site for apples but not if the site is aimed at selling computers or MP3 players, for example, or an inappropriate other purpose). Panels have recognized that mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase (which may be generic with respect to certain goods or services), may not of itself confer rights or legitimate interests in the domain name. Normally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning (and not, for example, to trade off third-party rights in such word or phrase)."
Adopting this approach the Panel is again somewhat doubtful that the Respondent's other purposes would suffice to establish a legitimate interest. Once again however, in view of the Panel's findings in relation to bad faith (see below) the Panel does not need to reach a conclusion on this issue.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
Subparagraph 4(b) of the Policy states that any of the following circumstances in particular (but without limitation) shall be considered evidence that the registration or use of the Disputed Domain Name is in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The Complainant has not demonstrated any of these indicators of bad faith listed at paragraph 4(b) of the Policy. The Panel's view on each is explained below.
As to (i) the Respondent says he had never heard of the Complainant when he registered the Domain Name. The Respondent has provided plausible reasons for acquiring the Domain Name, namely its intrinsic value as a dictionary word, and he has denied actual knowledge of the Complainant or its HOPSCOTCH trademark. That denial is credible in the case of an individual in an unrelated line of business particularly when the Complainant has not produced evidence suggesting that its reputation (at least outside the public relations field) was such as to cast doubt on the Respondent's statement. If the Respondent had not heard of the Complainant he cannot have registered the Domain Name for the purposes of selling it to the Complainant. It is true that the Respondent has offered to sell the Domain Name but that was only in response to an approach made by a private individual via a gmail address, who did not identify she was representing the Complainant. At no time has the Respondent approached the Complainant. It is also true that in this exchange the Respondent indicated he would sell the Domain Name for a sum very much more than his acquisition costs, namely USD 250,000. However there is nothing wrong per se with this. The Panel regards the following comments in Barlow Lyde & Gilbert v. The Business Law Group, WIPO Case No. D2005-0493, as applicable to this proceeding:
"Standing alone, there is nothing wrong with offering to sell a domain name at a high price. It is a very common business practice. Respondent did not initiate contact with Complainant. It responded to contact from Complainant concerning the domain name. There is nothing here to show that Respondent took any interest in Complainant prior to being contacted by it. The Panel finds that Complainant has failed to establish that Respondent registered the disputed domain name with the intention to sell it to Complainant."
As to (ii) there is no evidence that the Respondent was seeking to prevent the Complainant from reflecting the HOPSCOTCH trademark in a domain name, nor could there be if the Respondent had never heard of the Complainant. Further there is no evidence nor does the Complainant suggest that the Respondent has engaged in a pattern of such behaviour.
As to (iii) and (iv) there is no evidence of either of these, nor are they alleged.
The above criteria are a non-exhaustive list and the Panel has considered the Respondent's conduct more generally. Although the Respondent has clearly stated that he had not heard of the Complainant when he purchased the Domain Name, he has not said what searches and enquiries he did make, before, on his own evidence, spending over USD 10,000 to purchase the Domain Name. The Panel infers he must have carried out some enquiries, if only some basic Internet searches, to establish whether there was likely to be any difficulties with using the Domain Name. The Panel does not know what results any such searches or enquiries produced but infers that most likely they would have revealed a multiplicity of businesses in different fields using the term HOPSCOTCH in different ways or indeed uses corresponding to its dictionary meaning. The Panel makes this inference because (a) the Respondent points out in his Response that there were at least 17 registered US trademarks comprising or including the word HOPSCOTCH at the date the Respondent acquired the Domain Name and (b) the Respondent has exhibited a current Google search, presumably carried out in the US, for the word "hopscotch" which shows as well as various entries relating to the children's game called "hopscotch" numerous businesses and organisations using the word "hopscotch" (for example in relation to computer software, opera, restaurants and bars, records, children's stores, air-taxi services, confectionery sales and music festivals). The Complaint does not appear in this search until the fourth page.
It might be argued (although the Complainant does not appear to put its case this way) that bad faith can be established in the purchase of a domain name knowing that there are likely to be multiple possible businesses with an interest in the name and one or other of them will sooner or later, be prepared to buy the Domain Name because of its value to that business. The Panel does not consider that such an argument would be correct – in this respect the Panel adopts the view expressed in Investone Retirement Specialists, Inc. v. Motohisa Ohno, WIPO Case No. D2005-0643 as follows:
"The Respondent's general intent is to register attractive domain names that could be of interest to someone else, to the point where that person is willing to purchase the domain name from the Respondent, at a mutually agreeable price. In this Panel's view a finding of bad faith under the Policy, in general, requires some evidence that the Respondent knowingly registered and used a domain name which was identical or similar to the Complainant's mark. In other words, it will not be sufficient to demonstrate that the Respondent's conduct was directed to a mark in the abstract; rather, there must be a nexus between the mark and the Complainant, which is known to the Respondent, before a finding of intentional misappropriation of the rights of that brand owner can be made. Where there are many users of a mark, none of whom is notably more prominent than another, the onus on the Complainant to demonstrate intentional targeting of its mark and business will be difficult to satisfy. Paragraph 4(b) of the policy focuses primarily on the Respondent's intent or purpose in adopting a particular domain name. For example, when paragraph 4(b)(ii) refers to the trademark owner, it contemplates that the trademark owner must be the Complainant, and the bad faith must be specifically targeted against the Complainant".
The Panel also adopts the approach of the experienced three member panel in Foundation Fitness LLC v. Jiang Zhou, WIPO Case No. D2015-1054, which was a case with facts similar in many respects to the present case. The Panel in that case also adopted the approach in the above referenced cases of Investone Retirement Specialists, Inc. v. Motohisa Ohno, WIPO Case No. D2005-0643 and Barlow Lyde & Gilbert v. The Business Law Group, WIPO Case No. D2005-0493 and went on to state:
"There is no indication that the Respondent was aware of or interested in the Complainant at the time of registration, or later, prior to the contact initiated by the Complainant. The Respondent has provided plausible reasons for choosing and using the Disputed Domain Name, namely, its intrinsic value as a dictionary word, his Internet businesses and family interests, and his denial of actual knowledge of the STAGES Marks. That denial is credible in the case of an individual in New Zealand in an unrelated line of business, particularly given the Complainant's recent establishment."
"The evidence supplied by the Complainant in this proceeding does not support the conclusion that the word "Stages" alone, used by thousands of varied businesses, had by 2014 acquired distinctiveness as associated with the Complainant's products. The Complainant has not provided evidence in support of the claim that it distributes its products in New Zealand. As to the media article provided to support the Complainant's products have been featured in various media outlets, it mentions the Complainant's "Stages Power Meter" product in small font, along with seven competitors' bike gear products. The Respondent's denial of knowledge of the Complainant is therefore not discredited".
Thus, the Panel finds that the Complainant has not established that the Domain Name has been registered, or is being used in bad faith.
D. Reverse Domain Name Hijacking
Paragraph 15(e) of the UDRP Rules provides that, "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". Reverse Domain Name Hijacking is defined under the UDRP Rules as "using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name".
The Panel declines to find this complaint was brought in bad faith. The Panel considers the Complainant's case to be relatively weak, insofar as it was based on an ordinary dictionary word. However the fact that the Complainant was a very substantial organisation, the Domain Name corresponded to its name, the Domain Name was not being used by the Respondent and that he asked for a substantial sum for it when approached are all factors which mean that, in the Panel's view the Complainant could genuinely form a view that its Complaint might have had some prospect of success, depending on the evidence and what the Respondent said.
For the foregoing reasons, the Complaint is denied.
Pierre Olivier Kobel
W. Scott Blackmer
Date: January 20, 2016