WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bookker Corporate S.L.U and The Graffter SL v. Domain Admin / This Domain is For Sale, HugeDomains.com
Case No. D2021-4277
1. The Parties
The Complainants are Bookker Corporate S.L.U, Spain, and The Graffter SL, Spain, represented by Margareto IP, Spain.
The Respondent is Domain Admin / This Domain is For Sale, HugeDomains.com, United States of America (“United States”), represented by ESQwire.com PC, United States.
2. The Domain Name and Registrar
The disputed domain name <bookker.com> is registered with TurnCommerce, Inc. DBA NameBright.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2021. On December 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 23, 2021, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on December 28, 2021.
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 January 5, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 25, 2022. On January 26, 2022, the Center sent a Notification of Respondent Default. On the same day, the Respondent requested an extension of Response due date. On January 28, 2022, the Center granted the automatic four calendar day extension and the new due date for Response was January 29, 2022. The Response was filed with the Center on January 29, 2022.
The Center appointed Assen Alexiev, Alejandro Touriño, and Jeffrey Neuman as panelists in this matter on February 24, 2022. 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 two Complainants are affiliates, being managed by one and the same person. As explained in the Complaint, the Complainants provide services that increase the efficiency in the use of office and parking spaces and other similar resources.
The Complainant Bookker Corporate S.L.U is the owner of the following trademark registrations:
− the Spanish trademark BOOKKER with registration No. M3742279, registered on May 10, 2019, for goods and services in International Classes 9 and 36;
− the European Union trademark BOOKKER with registration No. 018084363, registered on September 22, 2020, for goods and services in International Classes 9 and 36; and
− the United Kingdom trademark BOOKKER with registration No. UK00918084363, registered on September 22, 2020, for goods and services in International Classes 9 and 36.
The Complainant The Graffter SL is the owner of the Spanish trademark BOOKKER with registration No. M3655678, registered on September 21, 2017, for goods and services in International Classes 9 and 36.
The four trademark registrations listed above are jointly referred to in this decision as the “BOOKKER trademark”.
The disputed domain name was registered on August 16, 2014. It redirects to a webpage located on the website “www.hugedomains.com”, which offers the disputed domain name for sale for a price of USD 6,095.
5. Parties’ Contentions
The Complainants state that the disputed domain name is confusingly similar to their BOOKKER trademark. In their words, “The domain name at stake (bookker.com), reproduces in its entirety the item BOOKKER which is the most distinctive and dominant element of the earlier rights owned by [the Complainants]”.
According to the Complainants, the Respondent has no rights or legitimate interests in respect of the disputed domain name, because it has offered the disputed domain name for sale for an unreasonable price. The Complainants add that the Respondent has not used the disputed domain name in a bona fide manner and is not known to them.
The Complainants contend that the disputed domain name was registered and is being used in bad faith. According to them, the Respondent sells and provides assistance in the field of domain names under other brands, so it has no connection to the BOOKKER trademark and does not use it. The Complainants note that they contacted the Respondent in an attempt to purchase the disputed domain name, and in reply the Respondent requested the price of USD 6,095. According to the Complainants, the disputed domain name was acquired by the Respondent to sell it to a third party and to obtain an unfair profit out of this.
The Respondent states that it has operated as a domain name investor since 2003 and the disputed domain name is one of more than 1 million similar domain names that it has registered over the years. The disputed domain name was first registered in March 2005 and had two prior owners, before the second of them let the registration lapse. The Respondent then registered it on August 16, 2014, without having the Complainants’ trademark in mind, as the Complainants did not exist until 2018. The Respondent maintains that it registered the disputed domain name because it is a brandable and desirable word and a typographical variation of the dictionary word “booker” with an extra letter “k”, and because the Respondent believed that no party could claim exclusive rights in it. The Respondent adds that “Bookker” is also a family name that is associated with third party profiles on Facebook and Twitter. The Respondent submits that it listed the disputed domain name for sale on August 17, 2014, and adds that it has not used the disputed domain name in bad faith at any time and has never targeted the Complainants in any manner.
The Respondent maintains that it has a legitimate interest in the disputed domain name and that it has neither acted in bad faith nor targeted the Complainants. It notes that the BOOKKER trademark did not exist until three years after the Respondent registered the disputed domain name, and the Complainants’ own domain name <bookkercorp.com> appears to have been first registered in 2018. According to the Respondent, the registration for subsequent resale of independently attractive and memorable domain names, such as the disputed domain name, is permissible on a first-come, first-served basis; it is a legitimate business activity and ipso facto establishes the Respondent’s legitimate interest, provided the domain name was not registered with a trademark in mind.
The Respondent further notes that by the date the disputed domain name was registered on August 16, 2014, the Respondent had already registered more than 100 similar brandable domain names. According to the Respondent, such pattern of brandable domain name registrations and sales supports an inference that the disputed domain name was not registered with the intent to target the Complainants.
The Respondent maintains that the disputed domain name was not registered and has not been used in bad faith. In this regard, the Respondent points out that the Complainant Bookker Corporate S.L.U was founded on September 24, 2018, so it was not in existence until then. Therefore, it was impossible for the Respondent to have knowledge in 2014 of the then non-existent Complainant, and to have registered the disputed domain name in bad faith. The Respondent notes that between 2017 and 2019 – the time this Complainant chose its company name, registered its company, the BOOKKER trademark and its domain name, had it typed in the disputed domain name into a browser, it would have been redirected to the HugeDomains.com webpage indicating that the disputed domain name was for sale. In the Respondent’s submission, it can therefore be assumed that when this Complainant registered its domain name <bookkercorp.com>, it was aware that the disputed domain name had already been registered and was for sale.
The Respondent maintains that its generic offer to sell the disputed domain name is not evidence of bad faith, because there is no evidence that it has registered it with the intent to sell it to the Complainant or to a competitor. The Respondent’s position is that it registered the disputed domain name along with numerous other domain names with the intent to sell them to willing purchasers because of the inherent value in attractive brandable or generic or descriptive word domain names. According to the Respondent, the public offering to sell the disputed domain name for USD 6,095 does not constitute bad faith under UDRP case law.
The Respondent requests a finding of reverse domain name hijacking against the Complainants. It submits that the Complainants knew or should have known when they filed the Complaint that they were non-existent in 2014, that the Respondent has a legitimate interest in the disputed domain name, which is attractive, brandable, short and pronounceable, and that the registration and ownership of the disputed domain name by the Respondent since 2014 without targeting the Complainants is not in bad faith. Moreover, the Complainants falsely stated in the Complaint that they had earlier rights in the sign BOOKKER, when actually their BOOKKER trademark and trade name were both registered several years after the disputed domain name. The Respondent maintains that the Complaint was filed in bad faith after the Complainants had made multiple unsolicited offers to purchase the disputed domain name, after which they decided not to complete a purchase, and instead filed the Complaint as their “Plan B” to see if they could seize the disputed domain name without paying the Respondent.
6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), the Complainants must prove each of the following to justify the transfer of the disputed domain name:
(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 Respondents have no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainants have provided evidence that each of them is the owner of certain registrations of the BOOKKER trademark. This trademark was first registered in 2017, which is four years after the date of registration of the disputed domain name by the Respondent. As discussed in section 1.1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the first element. The two Complainants have also shown that they are affiliates, being under the control of the same person. In view of the above, the Panel accepts that the Complainants have established their rights in the BOOKKER trademark for the purposes of the present proceeding.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview 3.0. The Panel sees no reason not to follow the same approach here, and will disregard the “.com” gTLD of the disputed domain name.
The disputed domain name incorporates the BOOKKER trademark entirely without the addition of any other elements. This is sufficient for the Panel to conclude that this disputed domain name is identical to the BOOKKER trademark in which the Complainants have rights.
B. Rights or Legitimate Interests
The Complainants base their allegation that the Respondent has no rights or legitimate interests in respect of the disputed domain name on the fact that the Respondent has not used the disputed domain name for a bona fide offering of goods or services, but has offered it for sale for what they describe as an unreasonable price.
The Respondent argues that the disputed domain name is a brandable and desirable word, and that registration of domain names for the purpose of subsequent resale is a legitimate business activity. What is not allowed is the registration and resale of domain names when such activity is engaged in with the Complainant’s trademark in mind. In this case, Respondent argues it is impossible to have registered the domain name with the Complainant in mind since the trademark did not exist at the time of Complainant’s registration of the domain name.
The facts in this case support the Respondent’s position. The Complainant BOOKKER CORPORATE SL was established on September 24, 2018. Thus, trademark rights for the Complainant could not have begun accruing prior to that point in time. There is evidence in the record, however, that the first registration of the BOOKKER trademark took place on September 21, 2017, and the Complainants’ domain name <bookkercorp.com> was registered on July 9, 2018. Therefore, there could not have been any website of the Complainants prior to that date. The other Complainant, THE GRAFFTER SL claims it was indeed established earlier – on October 15, 2012, but there is no evidence that it has carried out any activity under the BOOKKER trademark prior to the date of registration of the Complainants’ domain name in 2018. All this supports the conclusion that the Respondent could not have known of the Complainants and their BOOKKER trademark and could not have targeted them when it registered the disputed domain name.
The Respondent’s explanation of the reasons why it chose and register the disputed domain name find support in the fact that it has also registered a number of other domain names that are similar to it, such as the domain names <bookerr.com>, <bookkers.com>, <shokker.com>, <wokker.com>, <mokker.com>, <hokker.com>. They all show a similar pattern, and this supports a conclusion that the disputed domain name is more likely to have been registered not with the intent to target the Complainants, but rather as part of a legitimate domain name investing business.
Considering the above, there is no basis to regard the offering for sale of the disputed domain name to the general public for the price of USD 6,095 as an illegitimate activity. The Panel therefore finds that the Complainant has failed to establish that the Respondent does not have rights or legitimate interests in the disputed domain name. In fact, the Panel is more inclined to find that according to the facts presented here, the Respondent does have rights and legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Section 3.8.2 of the WIPO Overview 3.0 summarizes the consistent case law under the UDRP that where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent. Here, as discussed in section 6.B above, the timing of the company registration of the Complainants and of the registration of the BOOKKER trademark and the Complainants’ domain name shows that the Respondent could not have known of them and could not have targeted them with the registration of the disputed domain name. There is no evidence in the case file that may provide basis for the opposite conclusion. The obvious conclusion therefore is that the registration of the disputed domain name was not made in bad faith.
The Respondent offers the disputed domain name for sale to the general public for USD 6,095. The registration and resale of domain names in and of itself is a legitimate activity provided that such activity does not trade off of the goodwill of trademark owners. Given the lack of any evidence of targeting of the Complainants or of their BOOKKER trademark, the Panel cannot find that the domain name was registered and used in bad faith.
Therefore, the Panel finds that the Complainant has failed to establish that the disputed domain name was registered and is being used in bad faith.
7. Reverse Domain Name Hijacking (“RDNH”)
Paragraph 15(e) of the UDRP 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 Reverse Domain Name Hijacking 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”. RDNH is furthermore defined under the UDRP Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
As discussed in section 4.16 of the WIPO Overview 3.0, reasons articulated by panels for finding RDNH include: (i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant’s lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith, such as registration of the disputed domain name well before the complainant acquired trademark rights, (ii) facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint, including relevant facts on the website at the disputed domain name or readily available public sources such as the WhoIs database, (iii) unreasonably ignoring established Policy precedent notably as captured in this WIPO Overview – except in limited circumstances which prima facie justify advancing an alternative legal argument, (iv) the provision of false evidence, or otherwise attempting to mislead the panel, (v) the provision of intentionally incomplete material evidence – often clarified by the respondent, (vi) the complainant’s failure to disclose that a case is a UDRP refiling, (vii) filing the complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis, (viii) basing a complaint on only the barest of allegations without any supporting evidence.
Here, the Complainants’ actions fall under several of these scenarios. Nobody knows better than the Complainants that they do not have earlier rights than the Respondent – and yet, this is what they stated in the Complaint, and certified their statements under Rules, Paragraph 3(b)(xiv). The Panel regards this conduct of the Complainant as an attempt to mislead it. The only logical conclusion from the fact that the Respondent could not have known of the non-existent business of the Complainants at the time of registration of the disputed domain name is that it has not registered it in bad faith. The Complainants must have appreciated this, but nevertheless, they proceeded with the Complaint after an unsuccessful attempt to acquire the disputed domain name from the Respondent, without a plausible legal basis, and basing it on only the barest of allegations without any supporting evidence. In addition, this is another example of a “Plan B” scenario where the Complainants only filed this case after attempting to negotiate the price of the domain name. The UDRP should not be considered a back-up plan to go after Registrants after unsuccessfully trying to negotiate the price of a domain name. This is especially egregious given the fact that the Complainants’ rights did not accrue until well after the disputed domain name was registered.
Considering the above, the Panel declares that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
For the foregoing reasons, the Complaint is denied.
Date: March 10, 2022