WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Normani GmbH v. Privacy Administrator, Anonymize, Inc. / Stanley Pace
Case No. D2020-2353
1. The Parties
The Complainant is Normani GmbH, Germany, represented by Lorenz Seidler Gossel Rechtsanwälte Patentanwälte Partnerschaft mbB, Germany.
The Respondent is Privacy Administrator, Anonymize, Inc., United States of America (“United States”) / Stanley Pace, United States, self-represented.
2. The Domain Name and Registrar
The disputed domain name <normani.com> is registered with Epik, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2020. On September 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 10, 2020, 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 this administrative proceeding commenced on September 14, 2020. Delivery of the Written Notice was refused at the address of the Respondent Privacy Administrator, Anonymize, Inc. on September 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 4, 2020.
On October 4, 2020, the Center received an email communication from a Mr. Stanley Pace, who described himself as the owner of the disputed domain name and requested an extension to the period for filing a Response or suspension of the administrative proceeding due to the initiation of a court proceeding. On October 6, 2020, pursuant to paragraph 5(b) of the Rules, the Center extended the Response due date until October 10, 2020, and requested that Mr. Pace identify himself and clarify his relationship to the Respondent, Privacy Administrator, Anonymize, Inc. On October 10, 2020, Mr. Pace provided the Center with proof of his registration of the disputed domain name and a copy of a complaint concerning the disputed domain name that he had recently filed with the United States District Court. He copied this communication to the Complainant’s legal representative.
The Center appointed Matthew Kennedy as the sole panelist in this matter on October 19, 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.
4. Factual Background
The Complainant is a German private limited company established in 2016. It was formerly named “www.normani.de GmbH” but adopted its current name “Normani GmbH” in March 2020. The founder and chief executive officer of the Complainant, Mr. Norman Schneller, is the registered proprietor of the following German trademark registrations:
Classes of goods
July 19, 2004
NORMANI in a fancy script
October 30, 2012
14, 18, 22, 24
NORMANI in a fancy script
August 14, 2013
8, 16, 21, 26, 27, 28
These trademark registrations remain in effect. Mr. Schneller has provided affidavit evidence that he granted the Complainant an exclusive license to use the above trademarks for an unlimited period of time and that the exclusive license remains valid.
A subsidiary of the Complainant, Normani Logistik GmbH, is the registered proprietor of German trademark registration number 302017214992 for NORMANI, registered on May 31, 2017, specifying services in classes 35, 36, and 39.
The Complainant is the registered proprietor of German trademark registration number 302017217020 for NORMANI, registered on July 13, 2017, specifying a very wide range of goods in multiple classes. The Complainant operates a website in German in connection with the domain name <normani.de>. At the time of this proceeding, the homepage of that website prominently displays the trademark NORMANI in a fancy script, with product categories for women, men, children, socks and underwear, accessories, and equipment, and an image of a pallet cushion set. The evidence does not include the other pages of the website or show the products offered for sale on them. The evidence does not indicate when the domain name <normani.de> was registered or how long the associated website has been active.
The Respondent Privacy Administrator, Anonymize, Inc. is the registrant of the disputed domain name identified by the Registrar. Although the Registrar did not disclose the name of the underlying registrant, the Respondent Stanley Pace, an individual, has provided evidence showing that he registered the disputed domain name on August 27, 2013. Mr. Pace informs the Panel that he uses Anonymize, Inc. as his privacy service.
The disputed domain name was registered on August 27, 2013. It was formerly parked at a webpage that displayed the following notice: “BUY THIS DOMAIN The domain normani.com may be for sale by its owner!” Later, the webpage displayed the following notice: “normani.com This domain not actively for sale, but will consider reasonable offers” together with buttons inviting Internet users to make an offer and to seek more details from the owner. Below the buttons appeared the tagline “Why purchase this domain with Epik?” As at July 10, 2020, the disputed domain name resolved to a parking page displaying Pay-Per-Click (“PPC”) links. At the time of this decision, the disputed domain name redirects to a webpage displaying an advertorial for a financial services company. The evidence on the record does not show that the disputed domain name has been offered for a price.
No reason was provided for the seven-year delay in initiating this proceeding under the Policy.
On October 7, 2020, Mr. Pace filed a first amended complaint against Normani GmbH (the Complainant in this administrative proceeding), Normani Logistik GmbH, and Norman Schneller in the United States District Court, Western District of Washington at Seattle (Case No. 2:20-cv-01468-TSZ) (referred to below as “the court proceeding”).
5. Parties’ Contentions
The disputed domain name is identical to the Complainant’s NORMANI trademark. The NORMANI trademarks have all been extensively and constantly used for the claimed goods and services. Further, the company name “Normani” has been used for over twenty years, first by Mr. Schneller as a merchant and since 2016 by the Complainant.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. Neither the Complainant nor Mr. Schneller has authorized or given any license or consent to the Respondent to use the NORMANI trademark in the disputed domain name. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name resolves to a page that invites offers to purchase the disputed domain name. Prior to that, it resolved to a webpage hosting advertising links and a button that led to an aftermarket site on which the disputed domain name was offered for sale for a minimum price of USD 888. The affiliate links advertised goods belonging to the core business of the Complainant and which are protected by its trademark rights, for example, shoes and equipment for outdoor and holiday experiences. The Respondent has never been known under the trademark NORMANI. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
The disputed domain name was registered and is being used in bad faith. The Respondent registered the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name to the Complainant or another entity using the company name Normani. The Respondent was offering the disputed domain name for sale on an aftermarket site for a minimum offer price of USD 888. There is no evidence that the Respondent uses or intends to use the disputed domain name in good faith. The Respondent [Anonymize, Inc.] has engaged in a pattern of exploiting domain names as a large number of panels under the Policy have ordered the transfer of domain names registered in its name. The Respondent has not offered to sell the disputed domain name to the Complainant for a reasonable price. This proves that the Respondent is seeking a disproportionately high profit and commercial gain only.
The Respondent Stanley Pace filed proof that he registered the disputed domain name. He also provided a copy of his first amended complaint in the court proceeding, which includes the following allegations.
This case [before the court] involves reverse domain name hijacking. Mr. Pace registers domain names that he believes are generic and clever or marketable. He rarely sells these domain names and primarily offers them for lease. He never tried to sell the disputed domain name. The Defendants [Normani GmbH, Normani Logistik GmbH, and Norman Schneller] sell clothing and clothing accessories via a German-language website. They do not own any United States trademark registrations, nor any United States trademark rights to the name “Normani”. “Normani” is primarily merely a surname. It is also a female first name, recently brought to prominence by the singer Normani Kordei Hamilton. The term “Normani” is descriptive of a person. Upon information and belief, the Defendants have not advertised in the United States. United States consumers have no association of the word “Normani” with the Defendants or their business selling clothes in Germany. The Defendants have not made sales to the United States. There has been no unsolicited media coverage of any of the Defendants or their business in the United States. Other businesses use the term “Normani” to sell clothing. Mr. Pace did not copy the term “Normani” from the Defendants. The Defendants have not established secondary meaning for the term “Normani.” At all times, Mr. Pace utilized the disputed domain name in a bona fide manner for bona fide purposes, as it has consistently been “parked” at Above.com, a recognized company that parks domain names. Through Above.com, the disputed domain name’s website has displayed links to various other web sites not owned by Mr. Pace. None of these third-party web sites refers to or uses in any manner the Defendants’ trademark. Mr. Pace’s use of the disputed domain name as his chosen domain name is a fair or otherwise lawful use of the term. At no time did Mr. Pace register or use the disputed domain name in bad faith. On September 9, 2020, the Defendants filed a complaint with WIPO. WIPO accepted the UDRP complaint and the Registrar of the disputed domain name locked it. Due to the impending UDRP complaint, Mr. Pace is now forced to bring this action to protect his rights in the disputed domain name.
6. Discussion and Findings
6.1 Effect of Court Proceeding
The Respondent Stanley Pace has initiated a court proceeding against the Complainant in this administrative proceeding (Normani GmbH), Normani Logistik GmbH, and Norman Schneller. In that court proceeding, Mr. Pace seeks a declaratory judgment under 28 U.S.C. § 2201 that his registration and use of the disputed domain name does not violate any rights of Normani GmbH, Normani Logistik GmbH, and Norman Schneller under the Anticybersquatting Consumer Protection Act (“ACPA”), 15 U.S.C. § 1125(d), or otherwise under the Lanham Act, 15 U.S.C. § 1114, and alleges reverse domain name hijacking under 15 U.S.C. § 1114(2)(D)(v). Mr. Pace also seeks an order directing the Registrar to take all action necessary to enable the disputed domain name; to reactivate the disputed domain name; to discontinue any suspension of the disputed domain name; and to refrain from transferring the disputed domain name from Mr. Pace to Normani GmbH, Normani Logistik GmbH and Norman Schneller. Nothing on the record of this administrative proceeding indicates that a decision has been made in the court proceeding.
Paragraph 4(k) of the Policy provides that the mandatory administrative proceeding requirements set forth in paragraph 4 shall not prevent either the Respondent or the Complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before this mandatory administrative proceeding is commenced or after it is concluded. Paragraph 18(a) of the Rules provides that, in the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain name dispute that is the subject of the complaint, the Panel has the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.
The Respondent initiated the court proceeding after this administrative proceeding was commenced but prior to the appointment of the Panel. He notified the Center of the initiation of the court proceeding in accordance with paragraph 18(b) of the Rules. He requests that the Panel suspend this administrative proceeding pending the resolution of the lawsuit.
The Complainant did not comment on the Respondent’s request for suspension.
The Panel notes that this dispute is properly within the scope of the Policy and that the Panel has jurisdiction to decide the dispute. The Registration Agreement pursuant to which the disputed domain name was registered incorporates the Policy. Although there are gaps in the evidence on the record of this proceeding (as highlighted in section 4 above), and the Respondent has not filed a Response, these gaps are not such as to cause this proceeding to fall outside the scope of the Policy or, in the circumstances of this case, to impede reaching a decision on the merits.
Although this administrative proceeding overlaps with the court proceeding, the Panel does not consider suspension to be appropriate. Suspension could lead to extensive delays, depending on the course of the court proceeding, something for which provision is not made in the Policy, the Rules or the Supplemental Rules. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.14.1; DNA (Housemarks) Limited v. Tucows.com Co, WIPO Case No. D2009-0367. Given the relative expediency of the Policy as compared to a court proceeding, and that the court proceeding initiated by the Respondent covers additional issues, the Panel declines to exercise its discretion to suspend or terminate this administrative proceeding. See WIPO Overview 3.0, section 4.14.2.
Therefore, the Panel will proceed to decide the dispute under the Policy. The Panel finds the record of this administrative proceeding adequate to reach its decision without reference to the pleading in the court proceeding. This decision is without prejudice to any action that the United States District Court may deem appropriate or necessary in furtherance of the proceeding in that forum.
6.2 Substantive Issues
Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements:
(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.
A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Complainant has rights in the NORMANI trademark. The evidence shows that Mr. Norman Schneller is the proprietor of a German trademark registration for NORMANI, among other trademarks, and that he has granted an exclusive license to the Complainant to use that trademark. An exclusive licensee is considered to have rights in a trademark for the purposes of standing to file a complaint under the first element of the Policy. See WIPO Overview 3.0, section 1.4.
The disputed domain name wholly incorporates the NORMANI trademark. Its only additional element is a generic Top-Level Domain (“gTLD”) suffix (“.com”), which is a technical requirement of registration. A gTLD suffix is generally disregarded in the comparison between a domain name and a trademark for the purposes of the first element of the Policy. See WIPO Overview 3.0, section 1.11.
Therefore, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has not filed a Response in this administrative proceeding. However, it is unnecessary for the Panel to reach a view on this element of paragraph 4(a) of the Policy, due to the Panel’s findings regarding bad faith below.
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires the Complainant to prove that the disputed domain name has been registered and is being used in bad faith. A finding in a complainant’s favour on this element normally requires a finding that the respondent targeted a complainant’s mark. Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. These circumstances are not exhaustive and the fourth circumstance is as follows:
“(iv) by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] web site or location or of a product or service on [the Respondent’s] web site or location.”
The disputed domain name was registered in 2013, before the Complainant was formed in 2016 but long after the NORMANI trademark was registered in Germany in 2004. However, the Complainant provides no evidence that the NORMANI mark was used or promoted prior to the registration of the disputed domain name in 2013. The Complainant’s own domain name incorporates the NORMANI mark (i.e. <normani.de>) but the Complainant provides no evidence that its domain name was registered or resolved to an active website prior to the registration of the disputed domain name. While the Complainant provides screenshots from the Internet archive of the webpage to which the disputed domain name resolved from 2014 onwards, it provides no archived screenshots of its own website, only a copy of the homepage as it appears now. There is no evidence of the other pages of the website and no evidence of third parties ever using the NORMANI mark to refer to the Complainant’s goods or services. The homepage is in German and the Respondent is a resident of the United States. The Complainant has not provided evidence of the renown of its trademark outside Germany nor at the time of the registration of the disputed domain name. The Complainant does not allege, and the Panel does not find, that “Normani” is a coined word with no other meaning besides the Complainant’s trademark. This evidence does not give the Panel any basis to find that the Respondent was, or should have been, aware of the NORMANI mark prior to receiving notice of this dispute or that he registered the disputed domain name in bad faith.
The disputed domain name has been used in connection with a webpage inviting offers to purchase the disputed domain name. That in itself does not demonstrate bad faith. The Complainant asserts that the disputed domain name formerly resolved to a webpage hosting advertising links and a button that led to the Sedo aftermarket site on which the disputed domain name was offered for sale for a minimum price of USD 888. However, while the evidence shows that the disputed domain name was parked at a webpage hosted by Sedo, the Complainant failed to provide any evidence to substantiate its assertion that the disputed domain name was offered for USD 888 or any other price.
While arguably there was some loose connection between the generated PPC links on the landing page to which the disputed domain name resolved and the Complainant’s business, i in the Panel’s view, that is not sufficient to show that the Respondent registered the disputed domain name to take advantage of the Complainant’s rights in the NORMANI trademark.
The Complainant points out that the Respondent, Anonymize, Inc., has been respondent in many other proceedings under the Policy. However, Anonymize, Inc. is a privacy service. The evidence provides no reason to find that the actions of the underlying registrants behind the privacy service in those previous proceedings support a finding of bad faith in the registration or use of the disputed domain name in this proceeding.
Therefore, the Panel is unable to find that the disputed domain name was registered and is being used in bad faith. The Complainant has failed to satisfy the third element in paragraph 4(a) of the Policy.
For the foregoing reasons, the Complaint is denied.
Date: November 3, 2020