WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NYLSTAR S.A. v. Domain Administrator, Meryl Blog
Case No. D2016-0561
1. The Parties
Complainant is NYLSTAR S.A. of Blanes, Girona, Spain, represented by Herrero & Asociados, Spain.
Respondent is Domain Administrator, Meryl Blog of St-Nicolas, Quebec, Canada, represented by ESQwire.com, P.C., United States of America.
2. The Domain name and Registrar
The disputed domain name <meryl.com> (the "Domain Name") is registered with Rebel.com Corp. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 22, 2016. On March 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 25, 2016, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced March 31, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was April 20, 2016. The Response was filed with the Center April 20, 2016.
The Center appointed Clive Elliott Q.C., Manuel Moreno-Torres and The Hon Neil Brown Q.C. as panelists in this matter on May 23, 2016. 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
According to WhoIs the Domain Name was registered on June 29, 2003.
5. Parties' Contentions
Complainant was founded in Girona, Spain in 1923. It specializes in the design, production, distribution and retail of clothing and textile products, especially nylon, under the trademarks MERYL and NYLSTAR. It asserts that its MERYL brand is registered in more than 100 countries around the world, and it serves customers in more than 60 countries.
Complainant further asserts that it is the owner of a substantial portfolio of registered trademarks, many of which consist of or include the word "MERYL", as well as the domain name <merylwoman.com>, and that all its MERYL trademarks and products are presented on its websites "http://www.nylstar.com" and "www.merylwoman.com". Complainant adds that it had been unable to register the <meryl.com>domain because it had been registered by Respondent. It also claims it has rights in the "MERYL" marks worldwide, including Canada where Respondent is located. Complainant contends that its use of its MERYL mark predates registration of the Domain Name on September 26, 1997.
Complainant suggests that the word "meryl" is an invented or coined word, without any meaning and that the Domain Name is identical to its trademark MERYL in all respects, with only the addition of the suffix ".com". Complainant asserts that Respondent does not have any legitimate right to use the name "Meryl" as neither it, nor its partners or authorized distributors, who have exclusive rights in the MERYL trademark, have licensed or otherwise authorized Respondent to use the trademark or to apply for any domain name incorporating the trademark. Complainant states that Respondent has no association with Complainant and contends that Respondent is not making a legitimate or fair use of the Domain Name, as the Domain Name is currently being used for domain parking. Complainant goes on to state that it carried out an exhaustive search in the Internet browser Google and found that, other than Complainant, there are no other references of other companies or trademarks with the name meryl. Complainant concludes that on the market and the Internet, the term "meryl" only identifies its Company and its products.
Complainant claims that it sent a cease and desist letter to Respondent on March 3, 2015 and has received no response. It further claims that whilst Respondent is not using the Domain Name in connection with any bona fide offering of goods or services, by having the Domain Name parked, it is preventing third parties lawfully using this Domain Name, which Complainant contends is evidence of bad faith registration by Respondent.
Complainant asserts that it has a widespread reputation with its MERYL trademark, and suggests that Respondent would have had been aware of Complainant's trademark rights at the time of the registration of the Domain Name. It further asserts that Respondent has registered the Domain Name in an attempt to attract commercial gain by creating a likelihood of confusion with Complainant's mark.
Respondent states that it registered the Domain Name in good faith because it incorporates a highly valuable common female first name, similar to hundreds of other domain names it has registered, and it has used the Domain Name both in connection with the bona fide offering of goods and services and for a legitimate purpose.
Respondent notes that Complainant has waited ten years to initiate a claim in an attempt to "recover" a domain it allowed to expire in 2006, which was not disclosed in the Complaint. According to WhoIs, Complainant registered the Domain Name on September 26, 1997 and it lapsed in November 2006. Respondent notes that since 2006 the Domain Name has been registered and used by others unrelated to Complainant.
Respondent submits that the Complaint should be dismissed and a finding of reverse domain hijacking should be issued as no evidence of targeting of Complainant or bad faith can be adduced as Complainant does not have exclusive rights to this common first name.
Respondent denies the allegations that it registered the Domain Name with the intention to sell it to Complainant, to disrupt Complainant's business, to prevent it from registering a domain name reflecting its mark, or to confuse users, and points out that it was simply the first to register an available common first name domain name.
Respondent states that it obtained the Domain Name on June 29, 2013 after its prior owner failed to renew it and it was offered for registration, and at various times over the past three years it has hosted the Domain Name and its other domain names with a number of third-party providers, affiliate programs, and other commerce platforms. Respondent claims it has been registering common word domain names for investment and development since 1999, before the advent of pay-per-click advertising, and before there were domain name parking services. Respondent registers common word domain names because it believes they best fulfill the purpose of a domain name, which is to be easy to remember. Common word domain names serve well, therefore, as online identities and as a result are commercially valuable. Respondent states its goal is to develop its domain names or resell them to other entities looking for easy‑to-remember domain names for Internet addresses for their web sites. In the interim, Respondent has hosted its domain names with various affiliate programs, or domain name parking services that have paid Respondent a share of the advertising revenue they generated, which it says is standard industry practice for hosting otherwise underdeveloped domain names.
Respondent contends that it has never had any links related to Complainant or its business on its webpage, and notes further that from a Google search for "Meryl" it revealed 24,000,000 results and the results on at least the first five pages show only third-party results, all unrelated to Complainant. In fact, Respondent asserts, the actress Meryl Streep is the top return for searches related to "Meryl" and is the first link on Respondent's webpage, which Respondent submits is proof that people do not solely think of Complainant when searching for "Meryl."
Respondent suggests that Complainant cannot provide specific evidence that Respondent targeted Complainant's mark when it registered the Domain Name because Complainant did not exist until many years after registration of the Domain Name.
Respondent points out that Complainant does not have exclusive rights to this common name and has not provided evidence of Respondent's targeting or bad faith registration. It further contends that this is not a case of a cybersquatter looking for trademarks upon which to prey, but that Respondent has purchased many descriptive term domain names that were available or offered for sale by their prior owners. Registration of domain names in this manner Respondent contends, not only fails to support a finding of bad faith registration, but it negates such a finding.
Respondent denies the allegation of bad faith registration or use as there is no direct proof that a common term, generic domain name was registered or acquired solely for the purpose of profiting from Complainant's trademark rights.
Respondent submits that as Complainant did not initiate these proceedings until over ten years following its own decision not to renew the Domain Name, the long delay in taking action would bar the Complaint under the Doctrine of Laches.
6. Discussion and Findings
It is well established that Complainant needs to establish each of the following three grounds in order to succeed in its Complaint. For the reasons set out below the Panel (namely the panel as a whole) concludes that Complainant has established the first ground; but has failed to establish the second and third grounds. Accordingly, notwithstanding the dissent voiced by the panelist, Manuel Moreno-Torres (referred to individually as the "Panelist"), while concurring on the outcome, and expressing a dissenting view on the issue of delay and laches, the Complaint nevertheless fails. On this issue, the views of the other two panelists, are referred to as those of "the Majority".
The reasons for this conclusion are articulated below.
A. Identical or Confusingly Similar
As noted above, Complainant asserts that it has been in business in Spain since 1923. It further asserts that it uses the trademarks MERYL and NYLSTAR and in particular has registered its MERYL brand in more than 100 countries around the world. Finally, it asserts that it is the owner of a substantial portfolio of registered trademarks, many of which consist of or include the word "MERYL" ("Complainant's Trademark"). None of this is disputed by Respondent.
While it is true that Complainant has various trademark registrations, a number of these are in a stylised form and contain words other than "Meryl". Notwithstanding that, Complainant has secured registration for the word MERYL without stylisation. In terms of the present ground, the Panel unanimously accepts that Complainant has rights in Complainant's Trademark and that Complainant's Trademark is for all intents and purposes identical to the Domain Name.
Accordingly, the first ground is made out by Complainant.
B. Rights or Legitimate Interests
Notwithstanding whatever rights Complainant may have in Complainant's Trademark, Respondent contends that it has no links related to Complainant on its webpage. It points out that a Google search for "Meryl" revealed 24,000,000 results and the results on at least the first five pages show only third-party results, all unrelated to Complainant.
Respondent asserts it has been registering common word domain names for investment and development since 1999. It further asserts that its business model is predicated on the registration of common word domain names, on the basis that they best fulfill the purpose of a domain name, namely a memorable term which in turn creates its own commercial value. Respondent acknowledges that its business purpose is to develop various domain names or resell them to other entities looking for easy-to-remember domain names.
Respondent also accepts that it has hosted its domain names with various affiliate programs, or domain name parking services that have paid Respondent a share of the advertising revenue they generated, which it says is standard industry practice for hosting otherwise underdeveloped domain names.
Accordingly, while Respondent acknowledges that it is using the Domain Name and doing so for commercial purposes it argues that this is a legitimate use which does not depend on any improper registration or use of the Domain Name.
Ultimately, the question comes down to whether Complainant has established that Respondent lacks rights or a legitimate interest in the Domain Name.
The Panel accepts unanimously that pay per click links may be acceptable under certain circumstances. However, the acceptability or otherwise of this practice will depend largely on the manner in which the links are created and used. The Panel considers that Respondent is using the Domain Name in an acceptable manner.
A number of questions have to be weighed up and determined in proper context. The relevant context in this particular case includes that:
1. the Domain Name has been subject to previous registration, transfers and or arrangements;
2. at least on the face of it, there is no evidence of misuse of the Domain Name;
3. the Domain Name is a well-known given name (and therefore has its own inherent value as a domain name); and
4. there was inaction on Complainant's part (in this case arguably in the order of six years and four or five different owners of the Domain Name).
The previous registrations of the Domain Name were as set out in Annexure 2 of the Response as follows:
1. eCommerce Advertising Ownership of the Disputed Domain Nov, 2006 through Oct 2007;
2. BWI Domain Manager Ownership of the Disputed Domain Oct 2007 through June 2009;
3. Terra Serve Ownership of Disputed Domain June 2009 through May 2010;
4. Fei Zhu Ownership of Disputed Domain May 2010 through June 2013; and
5. Meryl blog or Kurt Richter as from or around June 29 2013.
The question is whether the Panel should take into account the above registration history and circumstances or should downplay or even ignore these circumstances and assume for the purposes of its analysis that the purchase of the Domain Name in June 2013 is to be treated in all respects as a new registration.
The Panel accepts that there may well be a strong argument for treating a domain name as a new registration (notwithstanding any prior registration of the said domain name). The Panel asserts that this is the case particularly if the respondent misuses the domain name, as that could lead to a legitimate inference of sharp practice. However, in this case there is no such evidence, which makes the Majority hesitate to apply that rule too rigidly.
While laches may be an equitable concept, the Majority does not accept that it should be precluded entirely from taking delay into account, in weighing up the merits of a complaint and lengthy delay should, in its view, be a factor which either supports a complaint or in the case of relatively lengthy delay (as here) may work in Respondent's favour; particularly given that well-known, short and easily pronounceable words such as Meryl have their own currency in the domain name space. That is, quite apart from any commercial entities which may use that name as a trademark.
In the Majority's view it is not unreasonable that relevant delay can be taken into account. It seems extreme to say as some panels have said that it is irrelevant and cannot even be looked at. Further, the Majority respectfully adopts the position that this is contrary to the Rules which make it clear that the Panel is able to take any relevant consideration into account particularly "principles of law."
The Majority considers that this is the type of case where delay and the overall circumstances can and should be taken into account. This includes that Complainant did not address in its Complaint that Complainant or a predecessor in business used to own the Domain Name and appears to have let it lapse. The Majority considers that it is able to draw an inference that Complainant may have decided, after some years of inactivity, that it should take steps to reassert rights over the Domain Name. It may be entitled to do that. However, if other parties have arranged their own affairs and taken steps to advance their own interest in the meantime, then this is a circumstance which also needs to be taken into account and the respective interests of the parties balanced, as best the Panel can.
The Panelist Manuel Moreno-Torres, while concurring on the outcome, does however wish to express a dissenting view on the issue of delay and laches. The individual Panelist's view is that the concept of laches is a common law concept which has no application generally, or in this case. Nor is the doctrine of laches applicable under the UDRP according to the consensus opinion among of the Panelists. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.10. Therefore, having considered the purchase of the Domain Name as a new registration, the Panelist is of the opinion that there is no lengthy delay in two years and eight months. Thus, the Panelist considers that Panel should not draw inferences against Complainant. See Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011: "the Panel observes that lengthy delays in seeking legal or administrative remedies can often have the effect of eroding or undermining the complainant's arguments with respect to the respondent's rights or legitimate interests in the disputed domain name, or the respondent's alleged bad faith in registering and using the domain name. The Panel considers it more appropriate to address such issues squarely within the terms of paragraphs 4(a)(ii) and (iii) of the Policy, rather than analyzing them under the equitable doctrine of laches."
Having considered all of the above and on balance the Panel considers that Respondent has provided a sufficient explanation and justification for its use of the Domain Name. For these reasons the Panel considers that Complainant has failed to satisfy this ground.
C. Registered and Used in Bad Faith
A finding of bad faith requires a complainant to show by a preponderance of evidence that it is more likely than not that Respondent acted in bad faith. The Panel finds here that such a showing has not been made. A deliberate intent to associate with a well-known woman's name is not sufficient to show bad faith in this instance.
Complainant relies on its Google search results to show that the MERYL mark is well known and that that meaning trumps the otherwise well-known female name Meryl. However, the Google search relied upon is for the "Meryl brand". This provides a weighted response in favour of the brand or trademark as opposed to the word per se and the results need to be viewed in light of this.
Dictionary.com defines Meryl as a female given name, form of Merle. It is also apparent that the well-known American actress Meryl Streep completely dominates the results of a generic Google search for "Meryl", followed by a number of other women who have made their name in other fields but who all have the same first name. This suggests that the primary meaning of the word Meryl is as a woman's first name, rather than as a trademark or trade name of any particular commercial entity.
Respondent has not been shown to be using the MERYL Trademark as part of the Domain Name so as to knowingly divert or attract sales of goods or services normally associated with Complainant. Instead, it appears to be simply monetising the word Meryl. The Panel concludes that it is doing so because of the inherent value of the word Meryl, rather than to trade off Complainant's Trademark or name.
Ultimately, the Panel concludes that Respondent was entitled to register the Domain Name, as it has done and that there is insufficient evidence to make out an allegation of bad faith registration or use.
The consensus view of panels on this subject is that "the panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith (See paragraph 3.2 of the WIPO Overview 2.0). Here, the Panel concludes that the relevant circumstances include the fact that Meryl is a well-known woman's name and that Respondent has not used the Domain Name in a manner which would necessarily associate it with Complainant. In this case, the Panel finds that Complainant has failed to demonstrate by a preponderance of evidence a deliberate intent by Respondent to create a likelihood of confusion with Complainant or Complainant's Trademark in order to attract, for commercial gain, Internet users.
For these reasons the Panel is not satisfied that bad faith registration and use has been established.
Reverse Domain Name Hijacking
In the Panel's view, Respondent's reverse domain name hijacking allegations are not made out. Without wishing to suggest that it will always be necessary for a party to respond to letters sent by potential complainant's, the Panel observes that in this case Respondent did not answer Complainant's cease and desist letter. Accordingly, it did not confront Complainant's allegations. Although Complainant has not succeeded in its complaint, there is insufficient on the record to suggest that its conduct amounted to reverse domain name hijacking.
For the foregoing reasons, the Complaint is denied.
Clive Elliott Q.C.
The Hon Neil Brown Q.C.
Date: June 13, 2016