WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bobst Mex SA v. Steven Thompson
Case No. D2016-0949
1. The Parties
The Complainant is Bobst Mex SA of Mex, Switzerland, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Steven Thompson of Elkhart, Indiana, United States of America ("US") self-represented.
2. The Domain Name and Registrar
The disputed domain name <bobst.press> is registered with NameCheap, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 12, 2016. On May 12, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 13, 2016, 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.
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 the Respondent of the Complaint, and the proceedings commenced on May 23, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 12, 2016. The Response was filed with the Center on May 26, 2016. The Center acknowledged receipt of the Response on May 26, 2016 and requested the Respondent his confirmation that the communication received shall be regarded as the complete Response. The Respondent sent an email communication to the Center on June 7, 2016, confirming that the communication was his full response.
The Center appointed Adam Taylor as the sole panelist in this matter on June 20, 2016. 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, founded in 1980, is a supplier of equipment and services to packaging and label manufacturers, including printing presses and converting machines. The Complainant has 11 production facilities in eight countries as well as a sales and services network with facilities in more than 50 countries, employing over 4,500 people around the world. In 2015, the Complainant had a consolidated turnover of CHF 1.33 billion.
The Complainant owns many registered trade marks for the term BOBST including US trade mark no. 3382820, filed March 10, 2005 and registered February 12, 2008, in classes 37 and 41.
The disputed domain name was registered on November 20, 2015.
As of March 9, 2016, the disputed domain name resolved to a registrar parking page with links relating to the Complainant and its goods / services, for example "Bobst die cutter", "laminator machine", "carton folder gluer", "printer cutter machine", "flatbed cutter" and "corrugated carton".
As of May 11, 2016, there was a website at the disputed domain name which offered the disputed domain name for sale.
The Complainant's lawyers sent a cease and desist email to the Respondent on March 23, 2016.
On the same day, the Respondent replied to the Complainant by email, stating that the ".press" generic Top-Level Domain ("gTLD") is intended primarily for public relations, the press, and members of the press and that therefore "the idea that someone named Bob may wish to talk about Bobs 'T', that a member of the press with the name and initials Bob S. T. may want the domain, or that I plain old prefer short domain names with the word bob in them is not unreasonable at all". The Respondent further stated that the letters "b-o-b-s-t" when associated with journalism, the media, or the press in general have little to do with a machine manufacturer. The Respondent added that the parking page associated with the disputed domain name was a default registrar parking page, that he left it in place only "until I either found a use for the domain or a buyer" and that he had instructed the registrar to remove it.
The Respondent further asserted that the disputed domain name was listed for sale at a minimum price of USD 1,000 and that "if you want to settle this in amicable way, as you stated, this is how to best go about it". The Respondent threatened to increase the price every 24 hours "in order to compensate for the hassle and wasted time involved in communicating with you". He also stated: "If it hasn't been sold in 7 days it will be given to a third party at no cost, but it won't be your client. After that neither of us will have any control of the domains content. I'm doing this primarily because by skipping personal contact and reasonable offers, then moving directly to threatening sounding legal letters you have engendered my ill will".
5. Parties' Contentions
A summary of the Complainant's contentions is as follows.
The Complainant has acquired considerable reputation and goodwill worldwide in connection with equipment and machines for printing and processing paper, cardboard and corrugated cardboard for the packaging and label industry.
The disputed domain name is identical or confusingly similar to the Complainant's trade mark. It incorporates the Complainant's trade mark in its entirety. The gTLD ".press" is immaterial when assessing similarity. Nevertheless, it reinforces the confusing similarity with the Complainant's trade mark because "press" is a descriptive term that is strongly associated with the Complainant's goods and services.
The Respondent has no rights or legitimate interests in the disputed domain name.
Neither the use as a parking page with links targeting the Complainant and its good and services nor the offer to sell the disputed domain name constitute a bona fide offering.
The Respondent cannot conceivably assert that he is commonly known by the disputed domain name given the notoriety surrounding the Complainant's trade mark and the fact that it is almost exclusively associated with the Complainant in connection with printing presses and machinery
Neither can the Respondent assert noncommercial or fair use of the disputed domain name, given the listing of the disputed domain name for sale and the recent use of a parking page with commercial links targeting the Complainant.
Nothing in the response justifies the Respondent's registration and use of the disputed domain name. It is difficult to conceive of any plausible legitimate use of the disputed domain name given the Complainant's renown in relation to printing presses and the exact match of the Complainant's trade mark under the ".press" gTLD.
The disputed domain name was registered and used in bad faith.
Given the Complainant's long-standing reputation in connection with printing presses and machinery, it is inconceivable that the Respondent was unaware of it at the time of registration of the disputed domain name.
There is evidence that the Respondent works for a die maker in Indiana, US, which does business with the Complainant's subsidiary in the US.
The Respondent's explanations for selection of the disputed domain name are not credible.
The Respondent's offer to sell the disputed domain name leaves no doubt that the Respondent sought to exploit the Complainant's rights.
The Respondent registered the disputed domain name for sale to the Complainant in accordance with paragraph 4(b)(i) of the Policy. The Respondent's threat to escalate the price and transfer to a third party after seven days is blackmail and further evidence of bad faith.
The Respondent has used the disputed domain name to create a likelihood of confusion in accordance with paragraph 4(b)(iv) of the Policy. The Respondent's current use of the disputed domain name is designed to create confusion and divert traffic from the Complainant to the Respondent's own site. The Respondent's previous use of the disputed domain name for a parking page also constitutes use in bad faith. The Respondent is responsible for the content of the website and it is irrelevant that the Respondent did not himself profit from the commercial links.
A summary of the Respondent's contentions is as follows.
The Respondent did not acquire the disputed domain name primarily for sale to the Complainant or a competitor. It was registered for resale to the highest bidder without reference to the Complainant's "vague" trade mark.
The combination "b-o-b-s-t" could be used for many things, for example a websites featuring the very common name Bob, or the initials S.T., which are the Respondent's own initials, or perhaps "Bobs T Shirt company". The Respondent had a number of substantial bona fide uses for the disputed domain name.
The fact that the disputed domain name is no longer available for sale to the Complainant at any price is further proof that it was not bought for sale to that company. The Respondent's threats to escalate the price and give away the disputed domain name were intended to show distaste for the Complainant's practice of pursuing litigation instead of conversation. The Respondent abandoned this approach when he realized that giving away the disputed domain name would result in the Complainant causing similar discomfort to the new owner.
If the Complainant had made a reasonable approach, the Respondent would probably have sold the disputed domain name to it at cost.
The Respondent disagrees with the Complainant's practice of leaving the disputed domain name unregistered for a year and then sending threatening legal notices demanding it for free. The Complainant should at least have offered USD 0.99.
The Respondent bought the disputed domain name because no one else seemed to want it and he thought he could make a legitimate profit by auctioning it.
If the Respondent wins, he will not transfer the disputed domain name without receiving an apology from the Complainant.
The disputed domain name was not registered to create a likelihood of confusion with the Complainant's mark or to profit from the Complainant's brand.
The parking page was automatically placed by the registrar. The Respondent removed it as soon as he became aware of it. The Respondent did not profit in any way from the parking page.
The Respondent listed the disputed domain name on an auction site simply to make it easier for potential buyers to find.
The Complainant's name is not a well-known brand. The ".press" gTLD is not intended to refer to a type of machine.
The Complainant has failed to prove its case.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has rights in the mark BOBST by virtue of its registered trade marks as well as unregistered trade mark rights deriving from the extensive and worldwide use of that name.
Under the UDRP, the gTLD suffix has usually been disregarded when comparing disputed domain name and trade mark (except where the suffix forms part of the trade mark) – see paragraph 1.2 the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"). If one were to disregard the suffix in this case, then the disputed domain name is identical to the Complainant's trade mark.
Even if the suffix ".press" is taken into consideration, in the Panel's view this would not serve to distinguish the disputed domain name and trade mark. The term suffix is simply an additional descriptive term (plus a dot) which is far from sufficient to prevent threshold Internet user confusion. See paragraph 1.2 of the WIPO Overview 2.0. The distinctive trade mark remains by far the most dominant part of the disputed domain name.
For the above reasons, the Panel concludes that the disputed domain name is identical or confusingly similar to the Complainant's trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 2.1 of WIPO Overview 2.0 explains the consensus view concerning the burden of proof regarding lack of rights or legitimate interests in UDRP cases:
"While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant."
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
As to paragraph 4(c)(i) of the Policy, the disputed domain name has been used for a parking page with links to goods / services, which compete with those supplied by the Complainant. Such use of the disputed domain name could not of itself confer rights or legitimate interests. See paragraph 2.6 of WIPO Overview 2.0, which states:
"Panels have generally recognized that use of a domain name to post parking and landing pages or PPC 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" … 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 PPC 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 UDRP, provided there is no capitalization on trade mark value (a result that PPC page operators can achieve by suppressing PPC advertising related to the trade mark value of the word or phrase). By contrast, where such links are based on trade mark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion."
In this case, the advertising links are clearly related to the trade mark value of the invented word "Bobst".
Nor does use of the disputed domain name for a website offering the disputed domain name for sale in excess of out-of-pocket costs establish rights or legitimate interests in the disputed domain name – see, e.g., Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044.
There is no evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Panel is satisfied that the Respondent registered the disputed domain name with the Complainant's distinctive and well-known trade mark in mind.
First, the Respondent does not deny that he was aware of the Complainant at the time of registration of the disputed domain name.
Second, the Respondent does not deny the Complainant's assertion that he works or worked for a company which traded with the Complainant's subsidiary.
Third, the combination of the word "bobst", reflecting the Complainant's distinctive trade mark, and the suffix ".press", referable to printing press equipment supplied by the distributor, leads to an inference that the disputed domain name was registered with specific reference to the Complainant. The Respondent observes that the ".press" gTLD was intended primarily "for public relations, the press, and members of the press". However, that does not assist the Respondent in the absence of evidence showing that the Respondent had a genuine and legitimate reason to register the disputed domain name in the context of the media industry.
The Panel is not convinced by the Respondent's explanations for registering the disputed domain name put forward both in its Response and in its pre-action correspondence. The Respondent claimed that he intended to re-sell the disputed domain name to a third party with a legitimate reason to want it, for example: "someone named Bob may wish to talk about Bobs 'T'"; "a member of the press with the name and initials Bob S. T. may want the domain"; or the disputed domain name could be used for websites featuring the very common name Bob, or say for "Bobs T Shirt company". To the Panel, these look more like an attempt to retrospectively justify selection of the disputed domain name rather than a genuine account of the Respondent's state of mind at the time of registration.
As to use in bad faith, the disputed domain name has been used for a website with sponsored links referable to the Complainant and its good and services.
In the Panel's view, paragraph 4(b)(iv) of the Policy applies. By using the disputed domain name, comprising the Complainant's distinctive trade mark, in connection with a parking page with links relating to the Complainant's industry, the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant's trade mark.
The Respondent seeks to escape responsibility on the grounds that the website was a registrar parking page. However, paragraph 3.8 of WIPO Overview 2.0 observes that a domain name registrant will normally be deemed responsible for content appearing on a website at the disputed domain name, even if such registrant may not be exercising direct control over such content – for example, in the case of advertising links appearing on an automatically generated basis.
The extent of the Respondent's knowledge of the existence of the page is unclear. In his pre-action email, he said that he left the parking page in place until he found a use or a buyer for the disputed domain name whereas, in the Response, the Respondent says that he removed the parking page as soon as he became aware of it. However, in either case, paragraph 3.8 makes that the advertising links are usually attributed to the registrant unless it can show some good faith attempt toward preventing inclusion of advertising or links which profit from trading on third party trade marks. There is no evidence of any such attempt here.
Paragraph 3.8 adds that it may not be necessary for the registrant itself to have profited directly under such arrangement in order to establish bad faith use under paragraph 4(b)(iv) of the UDRP. It would normally be sufficient to show commercial gain by a third party.
Even if the Respondent had not been considered responsible for the parking page, the Panel could have found that there had been a passive holding in bad faith as explained in paragraph 3.2 of WIPO Overview 2.0.
The Respondent criticizes the Complainant for leaving the disputed domain name unregistered for a year. However, the fact that for whatever reason the Complainant did not register the disputed domain name does not of itself justify the Respondent doing so.
The Respondent is also unhappy that the Complainant corresponded in what the Respondent considered a threatening manner instead of making a "reasonable approach", in which case the Respondent says he would have sold the disputed domain name to the Complainant at cost. The Respondent thereby seeks to justify his behaviour in threatening to increase the price of the disputed domain name daily and to give it to a third party if unsold after seven days. In any event, none of this affects the Panel's conclusions above.
The Panel finds that the Complainant has established the third element of paragraph 4(a) 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 <bobst.press> be transferred to the Complainant.
Date: July 4, 2016