WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Caviar Petrossian v. Registration Private, Domains By Proxy, LLC / Artin Petrossian
Case No. D2020-1052
1. The Parties
The Complainant is Caviar Petrossian, France, represented by Areopage, France.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / Artin Petrossian, United States.
2. The Domain Name and Registrar
The disputed domain name <artpetrossian.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2020. On April 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 30, 2020, 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 30, 2020 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 May 4, 2020.
On May 8, 2020, the Respondent sent an informal email communication to the Center, to which the Center replied on May 11, 2020.
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 May 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was originally June 8, 2020.
The Respondent sent an informal email communication on May 20, 2020. The Center informed the Parties of the possibility to suspend the proceedings to explore settlement options on May 20, 2020. The Complainant requested the suspension of the proceedings on May 22, 2020. On May 22, 2020, the Center confirmed that the administrative proceeding was suspended until June 21, 2020 for purposes of settlement discussions concerning the disputed domain name. On June 17, 2020, the Center sent a reminder to the Parties regarding the end of the suspension period. On June 17, 2020 and June 19, 2020, the Parties confirmed that they wanted the case to be reinstituted. The Center reinstituted the proceedings as of June 22, 2020 and informed the Parties that the due date for Response was July 9, 1010. The Respondent did not submit any formal response. Accordingly, on July 10, 2020, the Center informed the Parties of the commencement of Panel appointment process.
The Center appointed Luca Barbero as the sole panelist in this matter on July 16, 2020. 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.
On July 16, 2020, the Respondent sent an email to the Center, requesting instructions on how to submit evidence on its part. On July 16, 2020, the Center sent to the Respondent an acknowledgement of receipt of its request and confirmed that it would inform the Panel of the Respondent’s communication. On July 17, 2020, the Respondent sent a further email communication to the Center listing its contentions. On July 17, 2020, the Center sent to the Respondent an acknowledgement of receipt of its request and confirmed that it would inform the Panel of the Respondent’s communication.
On August 5, 2020, the Panel issued an administrative procedural order (Panel Order No. 1), in which it indicated:
“(…) According to paragraph 10 of the Rules, the Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and the Rules, ensuring that the Parties are treated with equality and that each Party is given a fair opportunity to present its case but also that the administrative proceeding takes place with due expedition. Moreover, as stated in paragraph 12 of the Rules, the Panel may request, in its sole discretion, further statements or documents from either of the Parties; The Panel therefore requests the Respondent to provide documentation, if any, to substantiate its allegation that “Art Petrossian” would be its name. Noting that the Respondent’s name in the WhoIs records is “Artin Petrossian”, the Panel also requests the Respondent to clarify why it selected the disputed domain name, that does not include the first name in its entirety. The Respondent is requested to submit its supplemental filing within 5 days from the Center’s notification of this Panel Order to the Parties; Following the Respondent’s submission of its filing, the Complainant is invited to submit any comments it may have as to the Respondent’s filing within additional 5 days”. The due date for the Panel to submit its Decision to the Center was thus extended to at least August 20, 2020.
On August 5, 2020, the Respondent submitted its Supplemental Filing in response to the Panel Order. On August 6, 2020, the Complainant submitted its comments as to the Respondent’s Supplemental Filing. On the same day, the Respondent submitted further comments as to the Complainant’s Supplemental Filing.
4. Factual Background
The Complainant belongs to the PETROSSIAN group, founded in Paris in 1920 by two Armenian brothers Melkoum and Mouchegh Petrossian. The Complainant operates in the sale of caviar, smoked fish, seafood specialties, foie gras, and a large range of fine food (candies, chocolate, truffles, oil and vinegar, tea, soups, vodka, and spices). The Complainant operates several restaurants, boutiques and corner shops under the trademark PETROSSIAN in different cities across the world such as Paris, Nice, Lyon, New York, West Hollywood, Las Vegas, Brussels, and Dubai.
The Complainant is the owner of several trademark registrations for the trademark PETROSSIAN, including the following, as per trademark certificates submitted as annexes to the Complaint:
- French trademark registration No. 1358658 for PETROSSIAN (word mark), filed and registered on June 11, 1986, in classes 8, 14, 18, 21, 22, 29, 30, 31, 32, 33, 40, 42, 43, 44, and 45;
- European Union trademark registration No. 015876667 for PETROSSIAN word mark, filed on September 29, 2016, and registered on February 1, 2017 in classes 3, 8, 14, 18, 21, 29, 30, 31, 32, 33, 35, 39, 43, and 44;
- International trademark registration No. 425498 for PETROSSIAN word mark, filed and registered on October 22, 1976, in classes 18, 22, 29, 30, 31, 32, 33, and 42;
The company PETROSSIAN Inc., affiliated company of the Complainant, is the owner, amongst others, of the following trademark:
- United States trademark registration No. 1191779 for PETROSSIAN (word mark), filed on December 23, 1976, and registered on March 9, 1982 in international class 29.
The Complainant is also the owner of numerous domain names incorporating the trademark PETROSSIAN, including <petrossian.fr>, registered on February 26, 1998. The Complainant’s affiliated company Petrossian Inc. instead, owns the domain names <petrossian.com>, registered on July 31, 1997, and <petrossian.us> registered on April 24, 2002.
The disputed domain name <artpetrossian.com> was registered on July 9, 2018 and is currently pointed to a parking page with sponsored links related, amongst others, to food products.
5. Parties’ Contentions
The Complainant contends that disputed domain name <artpetrossian.com> is confusingly similar to the trademark PETROSSIAN in which the Complainant has rights as it reproduces the trademark in its entirety with the mere addition of the descriptive word “art” and the generic Top Level Domain (“gTLD”) “.com”. The Complainant further highlights that the reproduction of the trademark PETROSSIAN in the disputed domain name will lead the public to believe that the website is in some way associated with the Complainant’s trademark PETROSSIAN.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name because the Respondent is unknown to the Complainant, is in no way affiliated, associated, sponsored by, or connected with the Complainant and has not been authorized, licensed or otherwise permitted by the Complainant or by any subsidiary or affiliated company to register the disputed domain name and to use it.
The Complainant also states that the Respondent was not commonly known through the disputed domain name prior to the adoption and use by the Complainant of the corporate name, business name, and trademark PETROSSIAN.
The Complainant further asserts that the Respondent’s use of the disputed domain name in connection with a parking page with pay-per-click links as well as its alleged offer for sale of the disputed domain name, cannot be considered as a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark.
With reference to the circumstances evidencing bad faith, the Complainant indicates that, due to the well-known character and reputation of the trademark PETROSSIAN, it is highly unlikely that the Respondent registered the disputed domain name without prior having knowledge of the trademark PETROSSIAN, and that the registration may be the result of a mere coincidence. The Complainant emphasizes that the Respondent is using the disputed domain name to attract Internet users to its website and also to misleadingly divert them to linked websites advertising products and services of the Complainant’s competitors, whilst creating a likelihood of confusion with the Complainant’s trademark PETROSSIAN as to source, affiliation and sponsorship of the Complainant’s trademark.
The Complainant underlines that the unauthorized registration and use of the disputed domain name by the Respondent to attract and redirect Internet users to websites of the Complainant’s competitors constitute bad faith registration and use.
Moreover, the Complainant asserts that the disputed domain name is also being offered for sale and states that such circumstance only serves as further evidence that the Respondent was indeed acting in bad faith at the time of registration of the disputed domain name. The Complainant also points out that the Respondent’s bad faith may also be inferred from the fact that the disputed domain name was initially registered anonymously.
The Respondent did not formally reply to the Complainant’s contentions within the deadline for filing a Response.
In an informal email communication that the Respondent addressed to the Center on July 17, 2020, he stated that Art Petrossian is the short form of its name and that it has been using this name for over 10 years not only in his career but also in social media.
It also indicated that, in Google searches for “Art Petrossian”, the first page of results makes reference to many of the Respondent’s professional and social media accounts, that it lists as follows as proof of its good faith:
The Respondent explains that he has no intention to use the disputed domain name for anything related to the Complainant’s business but only for “a personal business/networking website for technical consulting”.
The Respondent also states that, following the notification of the Complaint, he requested the concerned Registrar to remove the links available on the parking page at the disputed domain name related to caviar but it refused to make the requested change because the disputed domain name is locked due to the present dispute.
The Respondent concludes that it was never its intention to have anything other than a blank placeholder page until its website was ready to go live.
C. Parties’ Supplemental Filings
In response to the Panel Order No. 1, the Respondent clarifies that Art is a diminutive form of his name Artin and provides a photograph of a credit card issued by a major financial institution showing the name Art Petrossian in order to substantiate its claim that it is officially recognized as Art, and that it uses the name Art interchangeably with its full name for account identification purposes.
The Respondent informs the Panel that it also owns the domain name <artinpetrossian.com> and specifies that it is known by the diminutive form of its name, Art, exclusively in the professional setting, as evidenced also by its professional email address art.petrossian@[...]. Therefore, the Respondent claims that, having the disputed domain name <artpetrossian.com>, aligns with the name it is recognized by its colleagues in the professional setting.
In its reply to the Respondent’s Supplemental Filing, the Complainant states that the Respondent’s assertions are not sufficient to substantiate the Respondent’s claim that Art Petrossian would be the Respondent’s name or nickname and that the Respondent should have provided at least a birth certificate, an identity card, or a passport to prove such circumstance without any ambiguity.
The Complainant submits that the Respondent’s contention that it registered the disputed domain name as being its professional nickname is not persuasive at all since the use made of the disputed domain name is not a professional one but clearly a commercial use for a parking page containing different click-through advertising, in some cases promoting companies that compete with the Complainant’s business.
The Complainant also points out that the Respondent’s choice of “art” rather than “Artin” for the registration of its domain name is intentional because “art” is very likely not perceived by the public as the diminutive form of the first name Artin, which seems to be unusual, but is more probably perceived as the common word “art”. The Complainant further contents that, since the word “art” is associated to the famous mark PETROSSIAN in the disputed domain name, the disputed domain name can evoke for consumers a particular know-how or products of excellence and is thus intended to divert or mislead Internet users who could reasonably expect to find a website maintained by the Complainant.
Upon receipt of the Complainant’s comments to its Supplemental Filing, the Respondent sent a new email communication submitting copies of its passport and birth certificate showing that its name is actually Artin Petrossian. It also reiterated that it parked the disputed domain name to reserve it for future development and that the sponsored links available on the website at the disputed domain name were displayed by the concerned Registrar without the Respondent’s consent, indicating that it would be available to remove them after the end of this dispute once the disputed domain name has been unlocked. The Respondent also stresses that its nickname Art Petrossian is a common abbreviation with the last two letters dropped from its original name and points out that Art is both a common name as well as a common nickname used also by other Armenian-Americans as a short form of their name.
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 and 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 has provided evidence of ownership of numerous trademark registrations for PETROSSIAN in several countries of the world, as mentioned under Section 4 above.
As highlighted in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the first element functions primarily as a standing requirement, and the threshold test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
In the case at hand, the Panel finds that the disputed domain name is confusingly similar to the trademark PETROSSIAN as it reproduces the trademark in its entirety within the gTLD “.com”, which can be disregarded when comparing the similarities between a domain name and a trademark, and the addition of the word “art”, which does not prevent a finding of confusing similarity.
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademark in which the Complainant has established rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
It is well established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the domain name according to paragraph 4(a)(ii) of the Policy is potentially onerous, since proving a negative can be difficult considering such information is often primarily within the knowledge or control of the respondent.
Accordingly, in line with previous UDRP decisions, it is sufficient that the Complainant show a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,
In the case at hand, it is clear that there is no relationship between the Complainant and the Respondent and that the Complainant has not authorized the Respondent to register or use its trademark or the disputed domain name.
The Complainant stated that the Respondent has not been commonly known by the disputed domain name prior to the adoption and use by the Complainant of the trademark PETROSSIAN and that the Respondent did not use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use since the disputed domain name has been pointed to a pay-per-click landing page.
As highlighted above, the Respondent claimed that the disputed domain name corresponds to the abbreviated form of its name and that it kept the disputed domain name parked for future development.
As stated in Section 2.3 of the WIPO Overview 3.0, “For a respondent to demonstrate that it (as an individual, business, or other organization) has been commonly known by the domain name or a name corresponding to the domain name, it is not necessary for the respondent to have acquired corresponding trademark or service mark rights. The respondent must however be “commonly known” (as opposed to merely incidentally being known) by the relevant moniker (e.g., a personal name, nickname, corporate identifier), apart from the domain name. Such rights, where legitimately held/obtained, would prima facie support a finding of rights or legitimate interests under the UDRP. Insofar as a respondent’s being commonly known by a domain name would give rise to a legitimate interest under the Policy, panels will carefully consider whether a respondent’s claim to be commonly known by the domain name – independent of the domain name – is legitimate. Mere assertions that a respondent is commonly known by the domain name will not suffice; respondents are expected to produce concrete credible evidence. Absent genuine trademark or service mark rights, evidence showing that a respondent is commonly known by the domain name may include: a birth certificate, driver’s license, or other government-issued ID; independent and sustained examples of secondary material such as websites or blogs, news articles, correspondence with independent third parties; sports or hobby club publications referring to the respondent being commonly known by the relevant name; bills/invoices; or articles of incorporation. Panels will additionally typically assess whether there is a general lack of other indicia of cybersquatting. In appropriate cases panels may refer to the respondent’s domain name-related track record more generally”.
Based on the documents and information submitted by the Respondent, namely copies of the Respondent’s government-issued IDs, a copy of documentation issued by a financial institution, and links to the Respondent’s social media profiles, the Panel is persuaded that the Respondent’s name is Artin Petrossian – as indicated in the Registrar’s WhoIs records for the disputed domain name – and that the Respondent is also known by the abbreviated form of its name.
As to the redirection of the disputed domain name to a parking page with sponsored links also related to the Complainant’s products, the Panel finds, in line prior panel decisions and as stated in Section 2.9 of the WIPO Overview, that the use of a domain name “to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”.
Although the Respondent disclaimed responsibility for the pay-per-click links displayed on the website at the disputed domain name stating that they were published by the concerned Registrar, the Panel notes that the Respondent is indeed responsible for such content and that it should have ensured that it did not infringe any third-party trademark rights. However, the Panel also considers that, according to the records, the Complainant has not sent a cease and desist letter to the Respondent before the filing of the Complaint in order to put it on notice of the infringing use of the disputed domain name. The Panel also notes the Respondent’s statement that it would be available to modify the content of its website should the disputed domain name be unlocked after the end of this proceeding.
In view of the above and since the Respondent has provided plausible explanations and evidence to substantiate its claims that he is known by the name Art Petrossian encompassed in the disputed domain name, the Panel finds that the Respondent has demonstrated that, on balance, has legitimate interests in the disputed domain name since he is commonly known by a name corresponding to the disputed domain name, even if it has acquired no trademark or service mark rights in the same pursuant to paragraph 4(c)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and is being used by the Respondent in bad faith.
As indicated in Section 6.B of this Decision, the Panel finds that the Respondent demonstrated that he is commonly known by the disputed domain name in light of the correspondence of the same with the abbreviated form of its name.
The Panel also finds that, although the Respondent could have been aware of the Complainant and its well-known trademark PETROSSIAN at the time of registration, most likely registered the disputed domain name to reflect his personal name in a corresponding domain name without intending to trade-off the Complainant’s trademark. Such conclusion is supported, amongst others, by the fact that, prior to receiving notice of this dispute, the Respondent registered also the additional domain name <artinpetrossian.com>, which corresponds to the Respondent’s full name Artin Petrossian as well as various social media accounts relating to said name.
In view of the above, the Panel finds that the Complainant has failed to demonstrate that the Respondent has registered and is using the disputed domain name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Complaint is denied.
Date: August 20, 2020