WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TNP Consultants v. Privacydotlink Customer 2290899 / Jan Novak
Case No. D2017-0669
1. The Parties
The Complainant is TNP Consultants of Neuilly-sur-Seine, France, represented by Partenaires PI, France.
The Respondent is Privacydotlink Customer 2290899 of Seven Mile Beach, Grand Cayman, Cayman Islands Overseas Territory of the United Kingdom of Great Britain and Northern Ireland / Jan Novak of Prague, Czechia, represented by John Berryhill, Ph.d. Esq., United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <tnp.com> is registered with Uniregistrar Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2017. On April 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 3, 2017, 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 April 7, 2017 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 April 12, 2017.
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 April 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 11, 2017. On May 9, 2017, the Respondent requested an automatic 4‑day extension of the deadline to file a Response. The Center granted the requested extension and confirmed that the new deadline for Response was May 15, 2017. The Response was filed with the Center May 15, 2017.
The Center appointed Luca Barbero, Christophe Caron and The Hon Neil Brown Q.C. as panelists in this matter on June 13, 2017. 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 consulting firm specialized in company transformations, focusing on operational strategy, information systems and human capital, with specific reference to the fields of banking, insurance, transport, energy and motor vehicle industry.
The Complainant is the owner of the following trademark registrations:
- French trademark No. 3924752 for , filed on June 5, 2012, in class 35;
- French trademark No. 3959797 for TnP Consultants, Accélérateur de Performance, filed on November 9, 2012, in class 35;
- French trademark No. 3565111 for , filed on March 25, 2008, in class 35.
The disputed domain name <tnp.com> was registered on May 19, 1995 and is pointed to a website where it is offered for sale at 500,000 USD. A statement on the website states: “This is an ultra premium 3-letter domain that could be used for a myriad of purposes. It is known in the domain industry as a Chinese Premium because it contains no vowels or the letter V. It is an excellent investment valued in the 5 to 6‑figure range (wholesale). Buying this as a brand to launch your business is a wise idea because not only is the domain itself valuable to re-sale (domain name alone, with no business attached), but it will give your business a professional image during its use. See (http://www.abbreviations.com/TNP) for many abbreviations of the letters TNP. A sample of the abbreviations for TNP include: Technology Network Program, Terrain Navigation Pro, The National Police, The New Paper, among hundreds of others”.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is partially identical or at least confusingly similar to the Complainant’s trademark, as that the wording “tnp” is the only distinctive and dominant element of the Complainant’s trademarks and is entirely encompassed in the disputed domain name.
The Complainant also states that the Complainant is more often referred to as TNP as it would be demonstrated by a Google search, showing the Complainant rated in the second position.
The Complainant concludes that there is a real similarity creating a likelihood of confusion between the disputed domain name and the Complainant’s trademarks, since Internet users will necessarily assimilate the disputed domain name to the Complainant’s trademarks.
The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name because:
- According to its searches on the European Union Intellectual Property Office, the Respondent does not own trademarks identical or similar to the disputed domain name or including the wording “tnp”, and also a Google search for “tnp.com” in association to the Respondent’s name did not reveal any result;
- There is no evidence of the Respondent’s use or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services;
- There is no indication that the Respondent has been commonly known by the disputed domain name;
- The Complainant has no relationship whatsoever with the Respondent and has never granted it the right to reproduce and/or exploit its trademarks;
- The Respondent does not use the disputed domain name, as it automatically redirects to the “www.namerific.com” website where the following message is published: “Buying this as a brand to launch your business is a wise idea because not only is the domain itself valuable to re-sale (domain name alone, with no business attached)”. The fact that the Respondent offers the disputed domain name for sale for 500,000 USD shows that the Respondent does not have a legitimate interest in the disputed domain name;
- The Complainant’s searches revealed that the Respondent is the owner of a large number of domain names, estimated between 300 and 500 domain names;
- The business of buying and selling domain names can be a legitimate enterprise but is does not confer rights to use for that purpose a domain name identical or confusingly similar to another party’s trademark.
With reference to the bad faith requirements, the Complainant contends that:
- Although the disputed domain name was initially registered as anonymous, the Respondent registered it not before April 2016, after the date of registration of the Complainant’s trademarks;
- Following the disclosure of the Respondent’s identity, the Respondent voluntarily put the disputed domain name on sale for a consideration of 500,000 USD, in excess of the documented out-of-pocket costs directly related to the disputed domain name;
- The registration of the disputed domain name for the sole purpose of commercial gain is clearly stated on the website to which the disputed domain name is redirected;
- The Respondent advertises the disputed domain name as an “ultra premium 3-letter domain”, a “Chinese Premium” and “an excellent investment valued in the 5 to 6-figure range (wholesale). However, the Complainant asserts that, despite these assertions and even where the acquisition process is automated, there is a degree of human review and evaluation of some or all of the domain names, and it is “entirely fair to expect that such transaction at the cost of 500,000 USD would entail some effort to avoid illegality, trademark infringement and violation of the Policy according to paragraph 2 of the Policy”;
- The Complainant points out that the Respondent does not seem to have verified whether or not the disputed domain name was infringing someone else’s trademark by conducting trademark searches or quick search engine searches, which support an apparent lack of good faith. It also claims that, if it had done so, the Respondent would have “undoubtedly found the website of the Complainant which appear in second position” of Google search results searching for “TNP”;
- The Complainant points out that the Respondent does not seem to have verified whether or not the disputed domain name was infringing someone else’s trademark by conducting trademark searches or quick search engine searches, which support an apparent lack of good faith. It also claims that, if it had done so, the Respondent would have “undoubtedly found the website of the Complainant which appear in second position” of Google search results searching for “TNP”. Therefore, the Complainant claims that the Respondent, which seems to be involved in the business of buying and selling domain names as it owns a large amount of domain names, when it registered the disputed domain name, was willfully blind to whether the disputed domain name may violate trademark rights;
- The Complainant ascertained that the Respondent was already involved as respondent in a prior UDRP proceedings which led to the transfer of the disputed domain name to the complainant;
- The Respondent’s website includes at the top a general offer to sell the disputed domain name and, even if the Respondent did not have in mind the sale of the disputed domain name to the Complainant, the Respondent’s general offer for sale shows that the Respondent knew of should have known that someone has with rights in the TNP name would have had an interest in the disputed domain name;
- The Respondent hid its identity behind a privacy service with no apparent reason for doing so;
- The Respondent hid its identity behind a privacy service with no apparent reason for doing so and its contact information as disclosed by the concerned Registrar is incomplete and does not permit to properly contact the Respondent. In particular, the Complainant submits that the address provided does not include the street number and the postal code, preventing any third party to send a formal letter to the Respondent; that the phone number does not appear to be valid, and that searches conducted for the Respondent’s email address guided towards different persons, including the previously named registrant of the disputed domain name. The Respondent concludes that these elements support the bad faith of the Respondent, which gives the impression of disguising its identity and preventing third parties from contacting it.
The Respondent submits that the disputed domain name is not confusingly similar to the registered trademarks asserted by the Complainant, and that the Complainant’s unsupported argument that the letters “tnp” may be isolated from such marks and remain distinctive of the Complainant is contradicted by the evidence. The Respondent in particular notes that:
- The Complainant’s use of its trademark composed of many words and letters on its website does not demonstrate a trade or service mark right;
- The Complainant’s expansive claim of distinctiveness in the letters “tnp” is not true, not even in France;
- The Complainant’s local search optimization does not confer a trade or service mark right, and the claim ignores the over 9 million Google results obtained in a general Google search in which the Complainant is by no means prominent;
- The Complainant has not established rights over the mark TNP based on its French trademark registrations since: i) in the Complainant’s French trademark No. 3565111 the wording “tnp” is not recognizable; ii) in the Complainant’s French trademark No. 3924752, the textual component “tnp” constitutes 10% of the textual component of the mark. The disputed domain name would thus not resemble either figurative marks, either relative to the literal textual elements, or their figurative presentations.
The Respondent highlights that “tnp” could have a number of meanings, being for example the New York Exchange symbol for Tsakos Energy Navigation, and that the Respondent cannot find any reference to the Complainant within the first 100 results on Google from its own geographic location.
The Respondent states that it purchased the disputed domain name in 2016, prior to the Complainant’s apparently more recent name change, as part of a transaction involving two and three-letter domain names, and notes that, as a combination of three letters, the letters “tnp” constitutes an acronym for a wide variety of things.
With respect to the use of the disputed domain name, the Respondent indicates that the Respondent has pointed the disputed domain name to a web page referring to a wide variety of potential acronymic uses of the disputed domain name, and that such use does not infringe the Complainant’s claimed mark in business management or consultancy services.
The Respondent states that it is a founder of a business enterprise which relates to monetization of generic domain names, and that it is the registrant of some 15 other three-letter domain names in particular, such as <doe.com>, <let.com> and others.
It also states that the mere registration and offer for sale of the disputed domain name, along with a description of its value as a non-distinctive acronym with substantial value, cannot be understood as in any manner trading on the Complainant’s limited goodwill in its claimed mark.
The Respondent submits that it is legitimate to use a domain name to resolve to a web page which includes a considerable statement of indisputably true facts having to do with the domain name and its value as a generic acronym.
The Respondent also states that it had no duty of notice in relation to the asserted trademark registrations, one of which cannot even be found among French registrations searching for “tnp”. In addition, the Respondent asserts that, even if the Respondent had conducted a search on French trademark registrations, it would not have concluded that the Complainant’s figurative and compound trademark registrations presented any bar to the registration of the disputed domain name, and to the general offer of sale of the domain name to any party that may desire to use it for purposes having nothing to do with the Complainant.
The Respondent underlines that the disputed domain name cannot be understood to be inherently associated with the Complainant’s asserted mark, nor has it been used in any way suggesting a predatory intent in relation to the Complainant’s mark. As noted in the Respondent’s declaration submitted as annex to the Response, the Respondent had never heard of the Complainant prior to this dispute, and purchased the disputed domain name at substantial cost in the belief that it has yet higher value as a generic three-letter domain name.
The Respondent alleges that it used a privacy service since it travels between Prague and Pennsylvania on a regular basis, and thus used it for the purpose of discouraging postal mail which may or may not reach it depending on where it might be at any given time. It also claims that it was not aware that a staff member of its Prague office had not configured the underlying registrant information properly, and that the Respondent has not evaded notice of this proceeding and desires to be identified as the legitimate registrant of the disputed domain name, but the locking of the disputed domain name is, at present, prevents correction of the WhoIs data.
The Respondent also indicates that the disputed domain name has been registered by a series of parties since 1995 and that, therefore, the Complainant was perfectly aware when it chose its TNP-formative marks that the disputed domain name was registered by another party, and has been for nearly a decade since the Complainant’s earliest asserted registration. Therefore, the Respondent concludes that it cannot be said as a general proposition that registration of the disputed domain name to someone other than the Complainant has been disruptive of the Complainant’s business all these years.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant relies on its three registered trademarks in France cited in section 4, and contends that the disputed domain name is confusingly similar to its trademarks.
The Panel notes that two of the trademarks cited by the Complainant are figurative marks, consisting of the textual and design elements.
As stated in prior UDRP panel decisions and recognized in paragraph 1.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), trademark registrations with design elements satisfy the requirement that the complainant show “rights in a mark” for further assessment as to confusing similarity, provided that said design elements do not constitute the dominant portion of the relevant mark such that they effectively overtake the textual elements in prominence, and that the textual elements are not disclaimed.
The Panel finds that the Complainant has not established rights in the mark TNP based on the French trademark No. 3565111, as the textual element “tnp” is hardly recognizable therein and the trademark registration is not even highlighted from a search for “tnp” on the French trademarks online database.
As to the French trademark No. 3924752, the Panel notes that the textual element “TnP” is reproduced in larger fonts than the underneath writing “Transformation ‘n Performance”, although also this additional wording can be clearly recognized in the trademark.
The Complainant also relies on a word mark (French trademark No. 3959797) consisting in the wording “TnP” in association with the generic terms “Consultants, Accélérateur de Performance”.
The Panel finds it difficult to consider that the disputed domain name is confusingly similar to the Complainant’s figurative trademark No. 3924752 and to the word trademark No. 3959797, as they both mainly consist of words which are not encompassed in the disputed domain name.
The Panel also notes that the Complainant has failed to provide evidence to demonstrate that TNP is distinctive of its company or activity.
Therefore, the Panel finds that the Complainant has not discharged its burden of proving that the disputed domain name is confusingly similar to a registered trademark in which it has established rights as prescribed by paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
In light of the Panel’s findings under sections 6.A and 6.C, it is not necessary for the Panel to address this issue at any length. However, the Panel notes that in the section of its decision dealing with bad faith, it concludes that the Respondent “registered the disputed domain name for its inherent value as a three-letter domain name with numerous potential meanings without targeting the Complainant and its trademarks …” one of the indicia of a right or legitimate interest.
C. Registered and Used in Bad Faith
As highlighted above, the disputed domain name was registered in 1995 and was acquired by the Respondent in April 2016, as shown in the historical WhoIs records of the disputed domain name submitted by the Complainant and as confirmed in the Response.
Although the disputed domain name was registered after the filing of the Complainant’s trademarks in France, the Panel finds that, based on the evidence on record, the Complainant has failed to prove that the Respondent registered the disputed domain name being aware of the Complainant’s trademark rights and with the intention to trade on the same. Indeed, the Complainant has failed to demonstrate that the three‑letter term TNP has become distinctive of the Complainant’s business consultancy services and that the Respondent was or ought to be aware of the existence of the Complainant and its trademarks when it acquired the disputed domain name.
The Panel acknowledges that there are a number of trademarks, registered in France and in other countries, which are constituted of the textual element “tnp”, alone or in combination with other words or design elements.
There is also no evidence on record that the Respondent might have purchased the disputed domain name with the intention to sell it to the Complainant or its competitors, or that the Respondent, by using the disputed domain name, attempted to attract for commercial gain Internet users to its website by causing a likelihood of confusion with the Complainant’s marks.
The circumstances of the case suggest that the Respondent, which appears to trade mainly domain names with generic meanings, registered the disputed domain name for its inherent value as a three-letter domain name with numerous potential meanings without targeting the Complainant and its trademarks. The Respondent’s purchase of other domain names consisting of three-letter terms appears to be consistent with the Respondent’s business model.
In view of the above, the Respondent’s offer for sale of the disputed domain name to the public for a substantial amount of money and the use of a privacy service with the indication of incomplete registrant contact details in the underlying WhoIs records are not considered by the Panel as sufficient elements to demonstrate that the Respondent registered and used the disputed domain name in bad faith.
Therefore, the Panel finds that the Complainant has also failed to demonstrate that the Respondent registered and used the disputed domain name in bad faith.
For the foregoing reasons, the Complaint is denied.
The Hon Neil Brown Q.C.
Date: June 27, 2017