WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Harow v. Future Media Architects, Inc.
Case No. D2017-0134
1. The Parties
Complainant is Harow of Paris, France, represented by Lexando & Caracteq, France.
Respondent is Future Media Architects, Inc. of Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <harow.com> (the “Disputed Domain Name”) is registered with Uniregistrar Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 25, 2017, 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 on January 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 16, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 17, 2017.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on February 23, 2017. 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
Complainant is a French design studio. Complainant shows to be the owner of:
French figurative mark filed on March 17, 2016 and registered with the Institut national de la propriété industrielle (“INPI”) on July 8, 2016 under No. 4257557 in classes 6, 14, 16, 19, 20 and 21.
Complainant also claims to be the owner by assignment of:
, French combined mark, filed on October 15, 2015 and registered with the INPI on February 2, 2014 under No. 4040069 in classes 20 and 27.
The Disputed Domain Name, <harow.com>, was registered on February 1, 2004, and resolves to a website of the Registrar, displaying an inquiry form to obtain the Disputed Domain Name.
5. Parties’ Contentions
Complainant considers the Disputed Domain Name to be identical or at least confusingly similar to the trademarks in which it claims to have rights. Complainant further claims that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to Complainant, Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, according to Complainant, Respondent has not been commonly known by the Disputed Domain Name. Complainant asserts that the anteriority of the first registration of the Disputed Domain Name to its trademark rights is irrelevant in light of Respondent's failure to justify any right, use or legitimate interest before the filing of the trademarks. Finally, Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. Complainant considers that Respondent renewed the Disputed Domain Name, after an attempt by Complainant to amicably acquire the Disputed Domain Name, for the purpose to sell, rent, or transfer the Disputed Domain Name to Complainant for an amount higher than proven expenditures directly related to the Domain Name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are administrative, the standard of proof is the balance of probabilities.
Thus for Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
i). The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii). Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
iii). The Disputed Domain Name has been registered and is being used in bad faith.
The Panel will deal with each of these requirements in turn.
A. Identical or Confusingly Similar
To prove this element, Complainant must first establish that there is a trademark or service mark in which it has rights.
According to paragraph 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) figurative, stylized or design elements in a trademark are generally incapable of representation in a domain name and, therefore, are typically disregarded for the purpose of assessing identity or confusing similarity. In this regard, although Complainant’s trademark is highly stylized, “harrow” is the dominant and predominant feature of its trademark. Consequently, Complainant has established that there indeed is a trademark in which it has rights, which consists of figurative elements corresponding to the word “harow”. The location of the trademark, its date of registration and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP (see paragraph 1.1 of the WIPO Overview 2.0).
Regarding the trademark HAROW HAROLD SANGOUARD however, Complainant fails to substantiate its claim that it is the rightful assignee of said trademark. The French trademark registration notice only refers to “HARROW” as being the beneficiary of the transfer of rights. The Panel is not in a position to determine that Complainant effectively is the beneficiary of the transfer of rights. In such event, the Panel need not consider whether the Disputed Domain Name, <harow.com>, is identical or confusingly similar with the HAROW HAROLD SANGOUARD trademark.
The Panel considers the Disputed Domain Name, <harow.com>, to incorporate Complainant’s HAROW trademark in its entirety. According to the Panel, the abovementioned stylized elements are insufficient to remove the confusing similarity between Complainant’s figurative trademark and the Disputed Domain Name (see Bilfinger Berger AG v. eService Finance Dept., WIPO Case No. D2003-0827, where it was considered that in comparing the domain name and the complainant’s trademark, particular attention must be given to the verbal elements of the mark; Société Nationale des Chemins de Fer Français, SNCF v. April Schroeder, WIPO Case No. D2014-1243).
Accordingly, Complainant has made out the first of the three elements that it must establish.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
It is established case law under the Policy that it is sufficient for Complainant to make a prima facie showing that Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of rebuttal on Respondent. (See Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
The Panel notes that Respondent has not apparently been commonly known by the Disputed Domain Name and that Respondent does not seem to have acquired trademark or service mark rights. There are no indications that a connection between Complainant and Respondent existed.
Complainant provides evidence in the annexes to its Complaint regarding the present and historic use of a website linked to the domain name <harrow.com>, which is unrelated to the current dispute. This domain name does not correspond to the Disputed Domain Name in the present proceedings, and is therefore disregarded.
However, based on its own findings, the Panel is of the opinion that Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. In fact, Respondent is not making any use of the Disputed Domain Name at all. According to the Panel, the passive holding or non-use of domain names is, in appropriate circumstances, evidence of a lack of rights or legitimate interests in the domain names (see Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO CaseNo. D2011-2209; American Home Products Corporation vs. Ben Malgioglio, WIPO Case No. D2000-1602; Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci, WIPO Case No. D2000-1244).
Finally, the Panel notes that Respondent did not respond to the Complaint.
In view of the foregoing, the Panel considers that Complainant has also made out the second of the three elements that it must establish.
C. Registered and Used in Bad Faith
Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).
In the instant case, it is apparent that Respondent’s registration of the Disputed Domain Name predates Complainant’s first trademark registration by twelve years. Furthermore, Complainant has not provided any details about the history of its business, nor any evidence that demonstrates that Respondent, at the time of registration, could have been aware of Complainant or the HAROW trademark.
Except in highly-limited circumstances, when a domain name is registered by Respondent before Complainant’s relied-upon right is shown to have been first established, the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right (see paragraph 3.1 of the WIPO Overview 2.0). This is clearly the case in the present proceeding.
Further, Complainant argues that Respondent has presented bad faith in renewing the registration of the Disputed Domain Name for the sole purpose of obtaining financial gain. It is well established that a mere renewal of a domain name is not generally treated as a new registration for the purpose of assessing bad faith, especially since Complainant provided no evidence indicating a change in use of the Disputed Domain Name prior to the renewal (see paragraph 3.7 of the WIPO Overview 2.0).
It seems that the Disputed Domain Name has been registered and used for speculative purposes. However, there is no evidence that Respondent had Complainant’s trademark in mind when registering the Disputed Domain Name. The single email provided by Complainant indicating that there was a previous inquiry to the acquisition of the Disputed Domain Name does not indicate that Respondent registered the Disputed Domain Name for the sole purpose as to sell, rent or otherwise transfer it to Complainant specifically.
Accordingly, this Panel finds that Complainant has not shown, on the balance of probabilities, that the Disputed Domain Name was registered and is being used in bad faith.
For the foregoing reasons, the Complaint is denied.
Flip Jan Claude Petillion
Date: March 6, 2017