WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jaber Media Corporation Inc. v. Ahmad Mahameed, a
Case No. D2021-2971
1. The Parties
The Complainant is Jaber Media Corporation Inc., Israel, represented by Amar Reiter Jeanne Shochatovitch & Co., Israel.
The Respondent is Ahmad Mahameed, a, Romania.
2. The Domain Name and Registrar
The disputed domain name <panet.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 September 9, 2021. On September 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 September 16, 2021 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 amendment to the Complaint on September 19, 2021.
The Center verified that the Complaint together with the amendment to 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 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2021. The Respondent issued an email to the Center on October 2, 2021 regarding potential settlement arrangements. The Complainant’s representative replied to such email by email to the Center on October 5, 2021. The Response was filed with the Center on October 6, 2021.
The Center appointed Andrew D. S. Lothian, as the sole panelist in this matter on October 14, 2021. 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 October 25, 2021, the Panel issued Procedural Order No. 1 to the Parties in which it provided a chronology of the email correspondence between the Parties (and/or partially internal to the Complainant) identified within the record together with the Panel’s assumptions arising. The Panel sought the Parties’ comments on said email correspondence and assumptions. The Panel also requested the Respondent to confirm the date on which it acquired the disputed domain name and to provide evidence related to the acquisition, concerning the date and manner thereof. The deadline for response was October 29, 2021 and both of the Parties responded on this date. Their respective responses are noted in the Parties’ contentions below. A copy of Annex A to Procedural Order No. 1, containing the Panel’s chronology of emails and assumptions, with email addresses redacted, is reproduced in the Annex to this Decision.
4. Factual Background
The Complainant is a company incorporated in Israel on May 15, 2002. The Complainant operates a website at “www.panet.co.il” which it says has been online since 2002, is well-known, is viewed by millions of users on a daily basis, and offers services and content such as news, movies, shows, and more. The language of the Complainant’s website is Arabic. The corresponding domain name is owned by the son of the sole shareholder of the Complainant, who also serves as the Complainant’s technical manager and is in charge of operating the said website. The Complainant puts forward a “Google Analytics” page for “www.panet.co.il” in evidence, which appears to suggest that said site has just under 5.4 million users, 77 per cent of whom are based in Israel, with the remainder being from Iraq, France, Germany, Tunisia, Palestine, Algeria, Morocco, Jordan, and the United States of America and varying from 0.8 per cent to 2.37 per cent in per-country volume.
The Complainant is the owner of two Israeli registered trademarks for figurative renderings of the word PANET (in Latin script). No. 236073 features the mark in white letters against a red background and was registered on August 5, 2012. It is currently in force in classes 3, 16, 30, 35, and 38. No. 247484 features the mark in white letters against a grey background and was registered on January 2, 2014. It is currently in force in classes 32 and 39. The owner of these marks is stated to be “Gaber Media Ltd”, which the Panel takes as an alternative phonetic rendering of the Complainant’s name.
The disputed domain name was registered on September 15, 2020. The Complainant asserts that the website associated with the disputed domain name is “currently an empty website”. However, when the Panel visited it, there was an active website, albeit that it consists of a single page. This page matches a screenshot prepared by the Complainant, which features a stylized rocket taking off and (in the Complainant’s translation from Arabic) states “panet.com website / Get ready for a rendezvous with Banit website that will amaze you? We will let the surprise happen for you to taste the excitement. Don’t forget to visit us to be a part of our success”. This statement is followed by a checked list stating, “unconventional news / Crazy series and videos / Recipes and foods that you will not find anywhere else / No annoying ads at all / Songs and Lyrics / Everything is crazy online / Contact [gmail-based email address]”. The Complainant suggests that this message indicates that said website will offer its audience the exact services as are found at the Complainant’s website at “www.panet.co.il”.
In answer to Procedural Order No. 1, the Respondent provided evidence that it was the winner of an auction for the disputed domain name, on September 18, 2020. However, the Respondent also shows that the disputed domain name had a previous history dating back to 2002. Entries from the Internet Archive “Wayback Machine” indicate that the website associated with the disputed domain name over the years displayed a message stating that the disputed domain name was not for sale. All of these circumstances suggest to the Panel that the disputed domain name was allowed to expire by the previous registrant immediately preceding its registration on September 15, 2020. Upon its expiration, it was apparently “drop caught” (i.e., registered immediately it became available for registration) and was put up for auction by the then registrant. The Respondent provides evidence that it won that particular auction on September 18, 2020.
On September 27, 2020, the Complainant received an email from an administrative email address associated with the disputed domain name which stated that the disputed domain name was being offered for sale. The Panel considers that this email emanated from the Respondent, which had configured the email address after it won the auction. On that day and the following day, the Parties discussed a possible purchase of the disputed domain name by the Complainant but the Parties were unable to agree a price. Between around October 6, 2020 and October 18, 2020, the disputed domain name was allegedly the subject of a further auction operated by or on behalf of the Respondent. The Respondent communicated with the Complainant about said alleged auction via the said administrative email address. The Respondent invited bids and reported on the apparent progress. The Complainant appears to have participated in such auction but was ultimately told by the Respondent’s email to the Complainant of October 18, 2020 that its bids were unsuccessful. The Respondent reported by email that it was beginning to deal with the winner. However, there is no evidence before the Panel that the disputed domain name changed hands to any new registrant thereafter.
5. Parties’ Contentions
The Complainant contends as follows:
Identical or confusingly similar
The Complainant owns two trademark designs with the mark PANET and owns the <panet.co.il> domain name, used for an active website for many years. Based on the message which appeared on the website associated with the disputed domain name in about January 2020 [sic], the Respondent stated that it would start running soon and it would offer its audience the same exact services as <panet.co.il> and in the same language. Therefore, the Respondent is threatening to become identical and confusingly similar to a trademark, and the provision of a service, in which the Complainant has rights. The Respondent threatens to mislead users and create unjust commercial gain from the Complainant’s reputation.
Rights and legitimate interests
The disputed domain name was created in 2020 while the Complainant’s domain name has operated since 2002 and is widely known in Arabic-speaking communities across the globe. The disputed domain name is inactive but since the website shows a message according to which it intends to imitate the Complainant’s website, there is evidence of demonstrable preparations by the Respondent to use the disputed domain name in bad faith in connection with an apparent offering of goods and services. The Respondent is making a non-legitimate and unfair use of the disputed domain name for commercial gain, intending to mislead consumers and tarnish the trademark at issue.
Registered and used in bad faith
The disputed domain name has been used to extort funds from the Complainant. The Complainant contacted the Respondent on September 27, 2020 to negotiate an acquisition of the disputed domain name. The Respondent stated that it was operating an auction and that the highest bidder would receive the disputed domain name. The Complainant made an analysis of the fair market value of the disputed domain name using multiple estimation tools and estimated that the value of the disputed domain name was USD 10,626. The Complainant offered USD 35,000 for the disputed domain name. The Respondent rejected such offer, stating that multiple sources offered to pay double, and requested that the Complainant pay an undefined minimum amount. The Complainant contacted the Respondent again on October 6, 2020 at which point the Respondent asserted that the latest bid for the disputed domain name was USD 259,500. This does not reflect the true offer received by the Respondent and is not close to a fair value of the disputed domain name. The Respondent provided no evidence supporting such offer other than a list of different names and prices allegedly offered. The disputed domain name was registered or acquired primarily for the purpose of selling, renting or otherwise transferring the disputed domain name to the owner of the trademark for valuable consideration in excess of the Respondent’s out of pocket costs directly related to the disputed domain name.
Comments regarding Procedural Order No. 1
There are no other email communications arising between the Parties. The Panel’s assumptions regarding the Parties’ email correspondence are all correct, noting however that the internal email of September 27, 2020 at 15:07 is relevant because it was forwarded to the Respondent for its response, which led to the remainder of the correspondence between the Parties. It also supports the Complainant’s attempt to purchase the disputed domain name for a fair price and demonstrates the Complainant’s existing PANET brand globally.
The Respondent contends as follows:
The Respondent legally purchased the disputed domain name in 2020 to develop a new concept of social media network. A historic screenshot of the home page associated with the disputed domain name dating from May 30, 2002, shows that the disputed domain name was registered before the Complainant’s “www.panet.co.il” site was launched. A further historic screenshot of said homepage dated September 26, 2010 states that the disputed domain name is in use and is not for sale.
The Complainant approached the previous owner over several years to buy the disputed domain name but its offers had been rejected. The Complainant also admits that it approached the Respondent to purchase the disputed domain name yet calls for the proposal it received to be considered an extortion attempt because it feels that the price was not appropriate. The dispute is a matter of business considerations and has no legal basis. It violates the principle of freedom of business competition and the unrestricted right to register domain names.
The Respondent has no interest in the Complainant’s target audience specifically other than as part of an international audience. The planned content of the Respondent’s site is multilingual news content and not only content in Arabic. The Respondent asks whether the Complainant plans to make claims against the many registrants of other similar domain names using “panet” in the Second-Level.
The temporary page on the website associated with the disputed domain name does not represent the language or content of the site but is a quick landing page with dynamic content which does not represent the ultimate content to be displayed.
The Complainant strongly demands the disputed domain name for a website dedicated to Arabic speakers. This is strange as there is no letter “p” in the Arabic alphabet. The logo for <panet.co.il> is written as “banet” which means that, if rights exist, these are for “banet” and not “panet”.
The Respondent has repeatedly offered to end the dispute for a fee of USD 110,000, which the Complainant has declined, offering USD 35,000 instead. The Complainant must solve the problem at a business, rather than a legal level. It is a matter of price for the Complainant and not legal rights. If the dispute develops, the Respondent is ready to defend itself with United States counsel.
Comments regarding Procedural Order No. 1
The Respondent won an auction for the disputed domain name on September 18, 2020 (evidence of auction win provided), after which it published its temporary landing page and configured the email address a[xxxx]@panet.com. After the initial landing page was uploaded, several inquiries were received, including from the Complainant, regarding the possibility of purchasing the disputed domain name. The main purpose for which the Respondent acquired the disputed domain name was to build an international social networking website. However, with “tempting offers” received, the Respondent agreed to offer the disputed domain name for sale to several parties. Such communications were discontinued in mid-October 2020 when the Respondent moved on to developing its web system. This required a move to a more powerful server and all former emails no longer exist. The chronology of the correspondence shows that the Complainant made proposals which did not meet the Respondent’s expectation and were therefore rejected. The Respondent did not proceed with any of the offers for the disputed domain name for administrative reasons and due to the unreliability of the applicants.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(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
There are two parts to the first element inquiry under the Policy. The Complainant must first demonstrate that it has UDRP-relevant rights in a trademark. Secondly, the Complainant must demonstrate that the disputed domain name is identical or confusingly similar to such mark. This second aspect involves a comparison between the disputed domain name and such mark, typically on a straightforward side-by-side basis in order to determine whether the mark is recognizable in the disputed domain name. In such comparison, the generic Top-Level Domain (“gTLD”), in this case “.com”, is typically disregarded as being required for technical reasons only.
The Panel finds that the Complainant has rights in its PANET registered trademark as described in the factual background section above. The Panel notes that this mark is figurative in nature and contains both a word and a design element. As is noted in section 1.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), design elements are largely disregarded for the purpose of assessing identity or confusing similarity under the Policy. However, where the design elements comprise the dominant portion of the relevant mark, such that they effectively overtake the textual elements in prominence, the trademark registration may be held to be insufficient by itself to support standing under the Policy. In the present case, the Panel finds that the word element is easily severable from the underlying design and that the latter does not overtake the textual elements. In the comparison process as outlined above, it may be seen that the Second-Level of the disputed domain name is alphanumerically identical to the Complainant’s PANET trademark.
The Respondent does not raise a substantive challenge on this particular topic. However, it notes that an Arabic version of the Complainant’s logo transliterates as “banet” and that there is no letter “p” in the Arabic alphabet. Even if this is so, the Panel notes that the Complainant has chosen to register and use the word PANET, in Latin and not Arabic script, for its trademark. That is the mark which is relevant in this particular case. It may also be worthy of note that the Complainant’s domain name, which is used for its popular website, is <panet.co.il>. As with other non-internationalized domain names, this is not in Arabic script, and the Third-Level of this domain name matches the Complainant’s trademark. In all of these circumstances, the Panel considers that the Respondent’s submissions regarding the transliteration of the Complainant’s logo from Arabic are of no material value to its deliberations.
The Panel finds that the Complainant has UDRP-relevant rights in a mark and that the disputed domain name is confusingly similar to such mark. The Complainant has carried its burden with regard to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. In the present case, the Panel finds that the Complainant has established the requisite prima facie case based on its submissions and related evidence that the Complainant operates a popular website established since 2002 and that the disputed domain name was created in 2020 to inter alia imitate this with a view to misleading consumers for commercial gain. The email correspondence produced with the Complaint (importantly, as clarified by the Parties’ responses to Procedural Order No. 1 and not as originally described in the Complaint) discloses the fact that the disputed domain name was offered for sale to the Complainant by the Respondent very shortly after it was acquired by the Respondent in an auction, from which it is reasonable to infer that a targeted sale to the Complainant was the Respondent’s motivation for registering the disputed domain name. Any such activity would not confer rights or legitimate interests upon the Respondent.
In the above circumstances, the burden of production shifts to the Respondent to bring forward evidence of its rights or legitimate interests in the disputed domain name. The Respondent’s case is that, before notice to it of the dispute, it planned to use the disputed domain name in connection with a bona fide offering of goods or services, namely publication of a website featuring an independent, multilingual news and social media network. This is effectively a case in terms of paragraph 4(c)(i) of the Policy. The problem for the Respondent in its attempt to make out a case of this nature on the present record is that, beyond the holding page published after it acquired the disputed domain name, which itself described forthcoming similarities to the Complainant’s site sufficient to call into question whether it could be said to be bona fide and noninfringing, it has provided no evidence whatsoever of preparations to operate a bona fide noninfringing site.
In the Panel’s opinion, the use of the phrase “demonstrable preparations” in paragraph 4(c)(i) of the Policy requires that the Respondent’s preparations to use the disputed domain name must be capable of demonstration, and such a demonstration should have been made in the Response. Here, the Panel has nothing to go on beyond the Respondent’s assertions of the proposed nature of the site and the allegation that the Respondent has allegedly moved to a more powerful server. There is no evidence before the Panel of any preparations for the use contended by the Respondent, such as for example, business plans, website mock-ups or designs, market research, agreements for licensing of content, hosting agreements, or technical development/coding materials. In the Panel’s view, the Respondent’s holding page itself is not sufficient evidence on its own of demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
Even had suitable evidence of the Respondent’s preparations to use the disputed domain name been forthcoming, the Panel would not necessarily have accepted this as fulfilling the requirements of paragraph 4(c)(i) of the Policy without an adequate explanation from the Respondent as to how and why it had selected the name “panet” for its proposed international social networking site. There is no such explanation on the present record. The word “panet” is not a dictionary word, at least in English, and it is not descriptive in any sense of the Respondent’s alleged site. Neither of the Parties asserts that the word has any particular meaning in another language. Why would the Respondent be planning to build such a site under the name “panet” therefore, unless because of an association with the Complainant’s mark? Why, in particular, would the Respondent have chosen the Arabic language for its holding page advertising an allegedly multi-lingual website? There is no concluding evidence on the case file that would answer these questions in favor of the Respondent.
In the absence of a suitable explanation from the Respondent, the Panel concludes that the Respondent was seeking to benefit unfairly from an association with the Complainant’s trademark and website rather than that it had chosen the “panet” name independently and/or for any unrelated reason. The evidence before the Panel, not contradicted by the Respondent, is that the Complainant’s site is in the Arabic language, is of an established nature and is extremely popular with visitors. It is likely that the Respondent’s proposed site would have caused substantial confusion to those visitors. The Respondent’s claim that the Complainant’s use of Arabic in its logo actually transliterates as “banet” is nothing to the point. The Complainant’s trademark is PANET and its domain name is <panet.co.il>. In the absence of suitable evidence to the contrary, the Panel considers that it is the PANET mark that the Respondent would have been targeting by its alleged proposed use of the disputed domain name, had such use been demonstrated, and this is in no way undermined or contradicted by the Respondent’s assertions relative to the possible transliterations of the Complainant’s logo.
In these circumstances, the Panel finds that the Respondent has not rebutted the Complainant’s prima facie case and therefore that the Complainant has carried its burden with regard to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
The first question which the Panel must answer here is the appropriate date for the assessment of registration in bad faith. The registration date of the disputed domain name is September 15, 2020. According to the Respondent’s evidence, its acquisition date, following a post-registration auction, was September 18, 2020. In the Panel’s opinion, this latter date is the appropriate date for assessment of registration in bad faith in this particular case. The fact that a previous incarnation of the disputed domain name might originally have been registered before the Complainant’s rights arose or accrued, and that the corresponding website had stated that it was not for sale, as asserted by the Respondent, are not relevant to this proceeding. It cannot be denied that the Respondent acquired the disputed domain name long after the Complainant’s rights came into being. Equally, it is of no significance to this proceeding whether the Complainant might or might not have had discussions with any previous registrant of the disputed domain name, as the Respondent asserts. What matters for the present topic is what took place on or after September 18, 2020, once the disputed domain name had passed to the Respondent.
It should be noted that although the Complaint originally stated, erroneously, that the Complainant had made the first approach to the Respondent to discuss a purchase of the disputed domain name, the email correspondence appeared to the Panel to tell a different story. Accordingly, in Procedural Order No. 1, the Panel asked both of the Parties to comment upon the chronology, and related assumptions, which it had prepared from the emails presented along with the Complaint. Only the Complainant commented substantively, and its principal comment was to acknowledge the fact that the first approach was made to it by the Respondent, by way of the first email between the Parties in the chronology dated September 27, 2020. The Respondent did not comment on the correspondence other than stating that the Complainant made an approach to it after it published its landing page on the website associated with the disputed domain name. That fact, even if it were to be proved, which it is not, is not inconsistent with the fact that the evidence shows the Respondent making the initial approach. In the absence of evidence to the contrary, which both of the Parties have been invited to produce, the Panel proceeds on this basis.
Accordingly, it may be seen that less than ten days after winning an auction for the disputed domain name, the Respondent approached the Complainant stating that the disputed domain name was for sale. This does not appear to be consistent with the behavior of a new registrant of a domain name with plans to develop it into its own commercial website, as the Respondent asserts. Based upon the Panel’s chronology, after the initial approach by the Respondent there followed an alleged auction for the disputed domain name, which was ultimately discontinued by the Respondent. Finally, on October 18, 2020, the chronology shows the Respondent stating that the auction is over and that it is processing a deal with the winner. No evidence of this deal has been produced. In any event, the disputed domain name did not change hands following this process.
The Panel concludes from the circumstances on the record that the Respondent most probably did not acquire the disputed domain name for any purpose other than to sell it to the Complainant for an amount in excess of its out-of-pocket costs. The proximity between the Respondent’s acquisition date and the date of its first approach to the Complainant is significant. This suggests to the Panel in the absence of evidence to the contrary, that the intention to sell to the Complainant was the Respondent’s primary purpose and that the Respondent has effectively violated paragraph 4(b)(i) of the Policy.
It is significant that the Respondent has produced neither any evidence whatsoever of its alleged preparations to use the disputed domain name for any alternative purpose other than a sale to the Complainant, nor an explanation for its selection of a domain name containing this particular name. Even had it done so, the Panel might not have been persuaded that any alleged website development was anything other than an attempt to target the goodwill which the Complainant has built up in its PANET mark and corresponding domain name/web presence. In particular, it cannot be overlooked that although the Respondent claims its purpose in registering the disputed domain name is to launch a multi-lingual social media site, the sole language which it chose for its landing page was Arabic, which happens to be the same language as that of the Complainant’s popular website operating under the PANET mark.
The Respondent appears to suggest that the Panel should find against the Complainant on the basis that it made proposals to purchase the disputed domain name for an amount which did not meet the Respondent’s expectations. On the contrary, the Panel considers that the fact that the Complainant explored the prospect of purchasing the disputed domain name following the Respondent’s initial approach to it is no impediment to a successful Complaint under the Policy in the specific circumstances of the present case. It is evident that throughout the correspondence between September 27, 2020 and October 18, 2020, the Complainant was unaware that it was probably being targeted directly. The suggestion in the Respondent’s emails was that it was selling the disputed domain name on the open market to multiple parties. It did not make it clear that it had only acquired the disputed domain name just days before. Unless the Complainant had consulted the WhoIs record, it may even have appeared to the Complainant that the Respondent was the original registrant of the disputed domain name of longstanding, potentially dating back to 2002. That it was not will only have become clear to the Complainant when it viewed the Respondent’s landing page, which suggested that the Respondent was planning to build a portal in competition to that of the Complainant.
The Panel notes that in its answer to Procedural Order No. 1, the Respondent chose to withhold details of the amount which it paid in respect of the auction by way of which it acquired the disputed domain name. The Panel considers it reasonable to infer from the whole circumstances of the case that in its approach to the Complainant, the Respondent was seeking a price which was greater than its out of pocket costs incurred in connection with the disputed domain name.
In all of these circumstances, the Panel finds that there are circumstances indicating that the Respondent has acquired the disputed domain name primarily for the purpose of selling it to the complainant, who is the owner of the trademark, for valuable consideration in excess of the Respondent’s documented out of pocket costs directly related to the domain name. This constitutes evidence of registration and use in bad faith in terms of paragraph 4(b)(i) of the Policy, and the Panel so finds. The Complainant has therefore carried its burden in terms of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <panet.com> be transferred to the Complainant.
Andrew D. S. Lothian
Date: November 5, 2021
[Chronology and assumptions supplied to the Parties in Procedural Order No. 1]:
Based on the correspondence in the Complainant’s Annex I, the Panel has prepared the following chronology of communications, mainly between the Parties, and the Panel’s assumptions thereon:
September 27, 2020, 14:25; a[xxxx]@panet.com to undisclosed recipients – “The Domain “Panet.com” is offered for Sale / More details / Panet.com. The Panel presumes that this is the first contact between the Parties and notes that, contrary to the suggestion in the Complaint and Response, contact appears to have been initiated by the Respondent, given that it is presumed to be the operator of a[xxxx]@panet.com.
September 27, 2020, 15:07; T[xxxxx] Y[xxxxxxx] to B[xxxxx] J[xxxx] – “[…] we don’t really need the .com as before since we own the domain in every relevant country to us […]”. The Panel presumes that this email is internal to the Complainant and not relevant to the communications between the Parties.
September 27, 2020, 15:57; a[xxxx]@panet.com to b[xxxxx]@panet.co.il – “You may send us your offer officially, if it’s higher than the minimum required. / The best offer wins. / We already received a higher offers [sic] than the minimum offer required. / Thank you”. The Panel questions whether there is an intervening email as the person using a[xxxx]@panet.com did not originally have the Complainant’s email address b[xxxxx]@panet.co.il.
September 27, 2020, 16:41; s[xxx]@panet.co.il to unspecified recipient - “Thank you for getting in touch with us, / We can’t match your minimum offer, however we are serious about purchasing the domain […]”. The Panel presumes this email was issued to a[xxxx]@panet.com.
September 27, 2020, 17:42; a[xxxx]@panet.com to unspecified recipient - “Dear S[xxx], / Your offer is not clear. / Please send us a formal bid mentioning the total amount you are offering. / Your offer should match the minimum required amount. / In case you send us an offer matching the minumum [sic] offer. then we will announce you if your bid is winning or not. / Please take in consideration that we have already received many bids higher than the required minimum. / Unfortunately any bid with less than the minimum offer, cannot be considered. / Thanks & Regards”. The Panel presumes this email was issued to s[xxx]@panet.co.il.
September 28, 2020, 13:13; s[xxx]@panet.co.il to unspecified recipient - “I’ve checked the domain panet.com value in multiple estimation tools online. […] That’s the max we can offer”. The Panel presumes that this email was issued to a[xxxx]@panet.com.
September 28, 2020, 21:55; a[xxxx]@panet.com to s[xxx]@panet.co.il - “[…] Our client, the domain's name owner, [sic] is very aware about the value of panet.com. thats why we are already in an advanced negotiation with several groups who offered a double price than the minimum offer so far”.
October 6, 2020, 12:20; a[xxxx]@panet.com to undisclosed recipients – “Dear All, / Attached the current status for the bids: / Panet.com is in Auction. Place a Bid By Email. / Current Bid: $259,500. [List of 45 other domain names follows in email]”. The Panel assumes that this email was sent to (at least) an email address of the Complainant.
October 18, 2020, 14:33; s[xxx]@panet.co.il to unspecified recipient – “[…] Anything new regarding the status of bids? […]”. The Panel assumes that this email was sent to a[xxxx]@panet.com.
October 18, 2020, 12:20; [note: the Panel’s transcription of the time of this email was erroneous – the correct time was 20:04; however, the email’s position in the chronology was correct] a[xxxx]@panet.com to unspecified recipient – “[…] The auction is over. / we are now processing the deal with the winner.” The Panel assumes that this email was sent to s[xxx]@panet.co.il.
October 18, 2020, 20:20; s[xxx]@panet.co.il to unspecified recipient – “[…] Interesting to know, howmuch [sic] was the final offer? […]”. The Panel assumes that this email was sent to a[xxxx]@panet.com.
October 18, 2020, 21:13; a[xxxx]@panet.com to s[xxx]@panet.co.il – “[…] it exceeded a bit the higher offer appeared in the list that has been sent to the contacts. […]”