WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aurelon B.V. v. AbdulBasit Makrani
Case No. D2017-1679
1. The Parties
The Complainant is Aurelon B.V. of Aarle-Rixtel, Netherlands, represented by Leeway Advocaten, Netherlands.
The Respondent is AbdulBasit Makrani of Karachi, Pakistan, represented by Law Office of Howard Neu, P.A., United States of America.
2. The Domain Name and Registrar
The disputed domain name <printfactory.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 August 30, 2017. On August 30, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 1, 2017, 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 September 5, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 25, 2017. The Response was filed with the Center September 21, 2017.
The Center appointed Flip Jan Claude Petillion, Gregor Vos and Tony Willoughby as panelists in this matter on October 19, 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 the holder of the following trademark registrations for the PRINTFACTORY mark:
PRINTFACTORY, word mark registered with the European Union Intellectual Property Office ("EUIPO") under No. 010048957 on November 24, 2011 in class 9 for Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus and instruments: conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Automatic vending machines and mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment and computers; Fire-extinguishing apparatus; Programs; Electronic publications; Electronic databases;
registered with the EUIPO under No. 010048908 on November 24, 2011 in class 9 for the same goods mentioned above.
The Disputed Domain Name was first registered on November 20, 2000. The Respondent claims to have acquired the Disputed Domain Name in December 2016. The Disputed Domain Name was last updated on July 3, 2017.
The Disputed Domain Name resolves to a pay-per-click ("PPC") site, which mentions that the domain name "may be for sale". When the Complainant, via an unknown individual, inquired about a potential purchase of the Disputed Domain Name, the Respondent offered to sell the Disputed Domain Name in exchange of a six-digit figure amount. An earlier request by the Complainant to purchase the Disputed Domain Name resulted in a five-digit figure amount offer.
5. Parties' Contentions
The Complainant considers the Disputed Domain Name to be identical to trademarks in which it claims to have rights. The Complainant claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not used, or prepared to use the Disputed Domain Name in connection with a legitimate noncommercial or fair use. In addition, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. The Complainant considers that the website associated to the Disputed Domain Name features sponsored links to websites that are in competition with the Complainant's activities. According to the Complainant, the underlying purpose of the Respondent's website is merely to park the Disputed Domain Name until it can be sold and, pending that event, obtain some measure of financial compensation through confusion of Internet visitors caused by the sponsored third-party links. The Respondent's offer to sell the Disputed Domain Name exceeds the Respondent's out-of-pocket expenses directly related to the registration of the Disputed Domain Name. Furthermore, the Respondent would have engaged in a pattern of conduct of registering domain names that include third party trademarks. Finally, the Complainant is of the opinion that the Respondent knew or should have known the Complainant's trademarks when acquiring the Disputed Domain Name.
The Respondent submits that the term "Print Factory" is a combination of two common English words and that it has used the Disputed Domain Name for the purpose of PPC advertising relating to the dictionary meaning of the words "print factory". The Respondent argues that it registered the Disputed Domain Name in December 2016. The Respondent would have had no knowledge of the Complainant or its registered trademark at the time of registration.
According to the Respondent, the Respondent did not acquire the domain name solely to sell it to the Complainant, but is willing to sell or lease it to anyone "at the right agreed upon price".
Finally, the Respondent argues that the Complainant knew or should have known that it would be unable to prove bad faith by the Respondent in the registration and use of the Disputed Domain Name. The Complainant is therefore guilty of Reverse Domain Name Hijacking and abuse of the administrative process, according to the Respondent.
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 the 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 the 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 the 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 the Complainant has rights; and
ii. the 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, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has established that there are PRINTFACTORY trademarks in which it has rights.
The Panel notes that the Disputed Domain Name <printfactory.com> incorporates the Complainant's PRINTFACTORY trademark in its entirety.
The Panel is of the opinion that, as a matter of principle, the addition of generic Top-Level Domains ("gTLDs") can be disregarded when comparing a domain name and a trade mark (See Bialetti Industrie S.p.A. v. Onno Brantjes, Stichting Taxaceae, WIPO Case No. D2016-1450; Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck, WIPO Case No. D2014-0206; Zions Bancorporation v. Mohammed Akik Miah, WIPO Case No. D2014-0269). The practice of disregarding the Top-Level Domain ("TLD") in determining identity or confusing similarity is applied irrespective of the particular TLD (including with regard to "new gTLDs"); the ordinary meaning ascribed to a particular TLD would not necessarily impact assessment of the first element (see, e.g., WIPO Overview 3.0, section 1.11). However, in cases where the TLD corresponds to the complainant's area of trade, the TLD may add to the confusion and signal an abusive intent to confuse Internet users, which may be relevant for the assessment under the third element. In the case at hand, there is no such link between the Complainant's area of trade and the TLD. Therefore, the Panel considers the Disputed Domain Name to be identical to the Complainant's PRINTFACTORY trademark.
Accordingly, the Complainant has made out the first of the three elements that it must establish.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The onus of proving this requirement, like each element, falls on the Complainant. Given the difficulty in proving a negative, however, it is usually sufficient for a complainant to make out a prima facie case that the respondent lacks rights or legitimate interests. If the complainant does establish a prima facie case, the burden of production shifts to the respondent. See, e.g., WIPO Overview 3.0, section 2.1.
The Complainant considers that the Respondent aims at selling the Disputed Domain Name and that the Respondent is only parking the Disputed Domain Name on a page comprising PPC links to websites that are in competition with the Complainant's activities. In response, the Respondent submits that the Disputed Domain Name refers to PPC advertising relating to the dictionary meaning of the words "print factory" only. The Respondent considers such use a legitimate business use.
Under paragraph 4(c)(i) of the Policy, the Respondent will have rights to or legitimate interests in the Disputed Domain Name if, before any notice of the dispute, he had used or made demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services.
Using a domain name to host a page comprising PPC links surely constitutes a very minimal use of the domain name. Nevertheless, panels have recognised that "the use of a domain name to host a page comprising PPC links would be permissible – and therefore consistent with respondent rights or legitimate interests under the UDRP – where the domain name consists of an actual dictionary word(s) or phrase and is used to host PPC links genuinely related to the dictionary meaning of the word(s) or phrase comprising the domain name, and not to trade off the complainant's (or its competitor's) trademark." (See WIPO Overview 3.0, section 2.9).
In the case at hand, there is no evidence that the Respondent is trying to trade off the Complainant's (or any of its competitors') trademarks. The PPC links on the website associated with the Disputed Domain Name appear to be genuinely related to the dictionary meaning of the words comprising the Disputed Domain Name. The PPC links are not related to the goods for which the Complainant has registered trademark rights.
The Panel therefore concludes that, on the basis of the evidentiary record in this proceeding, the Complainant has failed to prove the absence of rights or legitimate interests on the part of the Respondent.
Accordingly, the Complainant has not established the second requirement under the Policy and the Complaint must be dismissed.
C. Registered and Used in Bad Faith
In view of the Panel's findings under the second limb of the Policy, there is no need for the Panel to consider the third requirement under the Policy as all three requirements of paragraph 4(a) of the Policy must be met for a complainant to prevail.
In any event, the Panel considers that the Complainant has not shown, on the balance of probabilities, that the Disputed Domain Name was registered and is being used in bad faith. Surely, the Disputed Domain Name appears to be registered primarily for the purpose of selling, renting, or otherwise transferring the domain name for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name. However, no evidence suggests that the Respondent had the Complainant or its trademark in mind when registering the Disputed Domain Name. The value the Respondent attaches to the Disputed Domain Name appears to be inspired by the dictionary meaning of the Disputed Domain Name, and not by the identity of parties that may be interested in acquiring the Disputed Domain Name.
D. Reverse Domain Name Hijacking
The Respondent requests that the Complainant be found guilty of reverse domain name hijacking ("RDNH").
Paragraph 15(e) of the 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 RDNH 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."
For this purpose, paragraph 1 of the Rules defines "Reverse Domain Name Hijacking" to be "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name". Panels have consistently found that the mere lack of success of a complaint is not itself sufficient for a finding of RDNH.
In the case at hand, the Panel finds no evidence that the Complaint was brought in bad faith. The Complainant seems to have been convinced that, while it has registered trademark rights in the PRINTFACTORY sign, the Respondent is only using the disputed domain name for PPC purposes, and is offering it for sale at an amount which is clearly in excess of the Respondent's out-of-pocket costs directly related to the domain name.
The Complainant may have erroneously believed that the use of the Disputed Domain Name for a PPC website was an unconditionally strong argument in support of bad faith together with the fact that the Respondent acts as a domainer.
The file does not show that the Complainant knew or should have clearly known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the Complaint. The Complainant is not unreasonably ignoring established Policy precedent. In many cases, the use for PPC purposes of a domain name which is identical to a trademark, combined with an offer to sell the domain name for valuable consideration will satisfy the requirements of the Policy. Those precedents might have led the Complainant to believe that domaining is not admissible under any circumstances. We should be reminded that the domaining business was not an activity which was intended when the Domain Name System was created. Admittedly, the domaining business is less known in Europe than in other parts of the world, and trademark holders keep being surprised by speculative business models that are developed around the scarce resource that domain names are. As a result, the Panel finds there to be no evidence of RDNH.
For the foregoing reasons, the Complaint is denied.
Flip Jan Claude Petillion
Date: October 30, 2017