WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Adventure SAS v. Mike Robinson, BlackHawk Paramotors USA Inc.
Case No. D2019-2489
1. The Parties
The Complainant is Adventure SAS, France, represented by Fabiano, Franke & MGT, Switzerland.
The Respondent is Mike Robinson, BlackHawk Paramotors USA Inc., United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name, <adventureparamotorsusa.com> (the “Domain Name”), 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 October 10, 2019. On October 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 10, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 3, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 6, 2019.
The Center appointed Tony Willoughby as the sole panelist in this matter on November 18, 2019. 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 November 18, 2019, following Notification of Panel Appointment, the Respondent emailed the Center in the following terms: “To whom it may concern, Your decision, whatever it may be has no jurisdiction in the USA. Your client may resolve this by simply paying us what he owes us.”
4. Factual Background
The Complainant is a company incorporated in France. It manufactures and sells paramotors, paragliders, and trikes, which it promotes and sells under and by reference to the name “Adventure Paramotors”. It is the registered proprietor of French trade mark registration no. 95589830 covering a highly stylized design featuring an illustration of a paramotor in flight, suspended under an open parachute. The word “adventure” is superimposed over the parachute in bold lower case type with the word “paramoteur” appearing below it, also in lower case type, but less prominently. The trade mark registration was applied for on September 25, 1995. It is registered in classes 12, 39, and 41 for goods and services appropriate to its paramotor business.
The Complainant operates websites connected to the domain names <paramoteur.com> (registered on September 11, 1997) and <adventure-paramotors.com> (registered on March 26, 2018). The Complainant’s websites feature prominently a logo comprising the word “adventure” above the word “paramotors” and, to their right, a design of a paramotorist in flight, but excluding the parachute.
The Domain Name was created on March 14, 2018, and is connected to a website of the Respondent, which offers the Complainant’s products for sale, makes prominent use of the Complainant’s name and logo, and represents the Respondent to be a certified re-seller of the Complainant’s products.
On October 26, 2018, the Complainant sent an email to the Respondent commencing “First of all I want you to know that I really appreciate your efforts to promote our products to the end customers as well as within your sales network.” The email referred to a meeting between the parties in March 2018 and to a first order placed by the Respondent with the Complainant in March 2018. The email went on to express the Complainant’s disappointment at the low level of sales being generated by the Respondent and stated “Unless a significant increase in orders volume before the end of the year, our collaboration for 2019 cannot continue at the same conditions.”
Whether or not there was any reply to that email, the Panel does not know. However, the Complainant followed up with a further email on December 11, 2018, stating that the sales had not improved and had not met the minimum quantity target and continued:
“For these reasons I regret to announce the end of our business collaboration. We are taking your contact details out of our dealer lists and we won’t make any more direct sales to you, from December 21st 2018; starting from that date the website <adventureparamotorsusa.com> needs also to be removed.”
A further email exchange ensued on March 8, 2019, in the course of which the Complainant expressed surprise that the Respondent’s website was still online following the termination of the parties’ commercial relationship and sought its removal, stating “You did a good job on that one, this is undeniable, but it properly can’t remain online in that shape.” The Respondent replied by stating that the website would be taken down immediately on payment by the Complainant of USD 10,000, representing the Respondent’s investment in the website.
On March 29, 2019, the Complainant’s representatives sent a letter by email to the Respondent drawing the Respondent’s attention to the Complainant’s trade mark rights and to the Complainant’s concern at the Respondent’s continued use of the Complainant’s trade marks on the website attached to the Domain Name “even after every commercial relationships [sic] with [the Respondent] ended in 2018].” The letter goes on to assert that the Respondent’s use of the Complainant’s trade marks constitutes counterfeiting and requests that the Respondent ceases to represent that it is in any way associated with the Complainant and immediately transfers the Domain Name to the Complainant.
The Respondent replied the same day in the following terms:
“To whom it may concern, Adventure Paramotor in France released us from selling their product with a simple statement that we did not sell enough product. How much product we sold or were required to sell was never in an agreement. The fact that this happened so quickly never allowed us to recoup the money spent relative to representing Adventure honorably. When we were informed of their decision I clearly told them that I would remove the site upon their compensating me the money spent for that website and also they’re [sic] re-purchasing the equipment that we purchased from them to sell here in the US. They have done nothing. We have since sold their product held in Stock at great loss to us.
I’m sure you are aware or can imagine that we had a great deal of expense in representing this company (and not limited to) at various trade shows, purchasing advertising material as well as training our employees to represent this company.
With the receipt of USD10,000 I will gladly remove the site. This amount is certainly a fraction of what litigation would cost and I feel just as we are only asking for what it cost us to build the site at this time.”
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to the Complainant’s trade mark; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Domain Name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Moreover, in writing the decision, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence namely:
“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.”
Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.
B. Identical or Confusingly Similar
There is scope for argument as to whether or not the Domain Name is confusingly similar to the Complainant’s highly stylized trade mark, but it was clearly intended to identify the Complainant and, in any event, in light of the Panel’s finding under section D below, it is unnecessary for the Panel to address this topic further.
C. Rights or Legitimate Interests
In light of the Panel’s finding under section D below, it is unnecessary for the Panel to address this topic.
D. Registered and Used in Bad Faith
As can be seen from the email exchanges set out in section 4 above, the Respondent was appointed in March 2018 as the Complainant’s certified reseller for the United States. By October of that year, sales to the United States were not progressing to the Complainant’s satisfaction. The Complainant gave warning that unless sales improved by the end of the year, the commercial arrangement between the parties would have to change. It appears from the March 2019 email exchanges that there was no improvement and the Respondent’s dealership was terminated as from December 21, 2018. Nonetheless, despite the Complainant’s demands, the website remains online and continues to represent that the Respondent is the Complainant’s certified re-seller and has the Complainant’s products for sale. The Respondent refuses to take the website down until the Complainant has paid to the Respondent the USD 10,000, which the Respondent claims to represent the level of the Complainant’s investment in the website.
The Respondent’s website is plainly, as claimed by the Complainant, a false representation as to the Respondent’s association with the Complainant and as such cannot be said to be a good faith use of the Domain Name.
However, to succeed under this element of the Policy the Complainant must prove not only that the Domain Name is being used in bad faith, but also that it was originally registered in bad faith. The Complainant asserts in the Complaint:
“The website corresponding to the disputed Domain Name has been created by the Respondent, without informing, and without any authorization by, the legitimate owner of the mark ADVENTURE PARAMOTEUR …. “
The Panel was surprised by that assertion. The Domain Name was registered on March 14, 2018, the very same month in which the commercial arrangement between the parties commenced. It was also the month in which the parties met to discuss the arrangement and the Respondent gave the Complainant estimates as to his monthly sales. The Panel would have expected the parties to have discussed at their meeting in March 2018 the means by which the Respondent planned to market the Complainant’s products in the United States and the support to be provided by the Complainant in the creation of the Respondent’s website. After all, the Complainant must have known that the Respondent would have an online presence and brand owners are normally concerned to ensure that a distributor’s marketing materials (including their websites) are appropriate and consistent with the image of the brand.
However, if the above quote from the Complaint is to be believed, none of that happened; the Complainant showed no interest in such matters and left the Respondent to his own devices.
Even if it is correct, as asserted by the Complainant, that the Respondent registered the Domain Name without the Complainant’s knowledge, that does not necessarily mean that the Domain Name was registered in bad faith. The natural inference in the absence of any evidence to the contrary would be that the Respondent registered the Domain Name in good faith with a view to promoting and selling the Complainant’s products in the Respondent’s capacity as a certified reseller for the United States (or in anticipation of his impending appointment as an authorized reseller).
Were it otherwise, the Panel would have expected the Complainant to have registered a complaint with the Respondent over registration of the Domain Name as soon as the website came to the attention of the Complainant. The Panel has not been informed as to when the website first came to the Complainant’s attention, but, at the very latest, it will have been in advance of the Complainant’s email to the Respondent on October 26, 2018. That email commences: “First of all I want you to know that I really appreciate your efforts to promote our products to the end customers as well as within your sales network.” That comment makes clear that by then the Complainant had reviewed the Respondent’s promotional efforts and appreciated them.
In neither that email nor any of the succeeding emails between the parties during the life of the distributorship does the Complainant raise any complaint about the Respondent’s registration of the Domain Name.
The email exchanges upon which the Complainant relies to support the allegation of bad faith registration and use do not criticize the Respondent for having registered the Domain Name. They only complain of the Respondent’s continued use of it following termination of the dealership on December 21, 2018. Indeed, the email exchanges demonstrate that prior to December 21, 2018, the Complainant acknowledges the Respondent’s work on the website. In its email of December 11, 2018, the Complainant expressly acknowledges that the website can remain in place until termination of the dealership. In its email of March 8, 2019, it stated with reference to the website “You did a good job on that one, this is undeniable, but it can’t remain online in that shape.”
Those emails, combined with the fact that the Respondent was (or was imminently to become) an authorized dealer of the Complainant when he registered the Domain Name, satisfy the Panel on the balance of probabilities that the Respondent registered the Domain Name in good faith with a view to promoting and selling the Complainant’s products in the performance of his agreement with the Complainant. The Complainant has failed to prove that the Domain Name was registered in bad faith.
E. Reverse Domain Name Hijacking (“RDNH”)
The mere fact that the Complaint has failed is not of itself a basis for criticising the Complainant for having filed the Complaint.
The Complainant has a legitimate reason for wanting to deprive the Respondent of the Domain Name. The Respondent is maintaining a website connected to the Domain Name, which since termination of the dealership agreement in December 2018 has falsely represented that it remains an authorised re-seller of the Complainant’s products. Indeed, the Domain Name itself conveys the same false representation.
However, seeking to use the Policy to deprive the Respondent of the Domain Name in circumstances outside the scope of the Policy is a different matter. The Policy was formulated to deal solely with bad faith registration and use of a disputed domain name.
For those familiar with the terms of the Policy and the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) it is well established that to succeed under the Policy a complainant must prove not only that the disputed domain name is being used in bad faith, but also that it has been registered in bad faith. That the Complainant’s representatives are familiar with both the Policy and WIPO Overview 3.0 is apparent from the citation in the Complaint of the WIPO Overview 3.0 and the several references to previous decisions under the Policy.
In this case, the issue is not the current use of the Domain Name, but the motive of the Respondent at the date of registration of the Domain Name.
It is inconceivable to the Panel, in the absence of any evidence to the contrary, that anyone reading the email exchanges referred to above could come to any conclusion other than that (a) the Respondent registered the Domain Name in good faith in his capacity as an authorized re-seller (or in anticipation of his impending appointment as an authorized reseller) of the Complainant’s products; and (b) the Complainant was impressed with the Respondent’s website (“you did a good job on that one”); and (c) the Complainant’s only concern towards the end of the dealership agreement was that “the website <adventureparamotorsusa.com> needs also to be removed.” There is nothing before the Panel to demonstrate that during the life of the dealership agreement the Complainant was anything other than happy with the Respondent’s website and the Respondent’s use of it.
The Complainant is a substantial company. The main body of the Complaint commences:
“The Complainant, Adventure Sas, is a leading company in the production and selling of paramotors, paraglides and trikes, very well-known worldwide in this very specific field, especially for the high quality of its products. The main Internet sites of the Complainant are www.paramoteur.com (registered since 1997, Annex 3) and www.adventure-paramotors.com, in which the main trademark ADVENTURE PARAMOTORS (with figurative elements) is used and where the goods can be purchased by the consumers.”
It is clear from the email exchanges that the Complainant was monitoring the performance of the Respondent. Is it possible that the Complainant cannot have been aware of the existence of the Respondent’s website? The Panel does not believe in this day and age that a company of the size and reputation of the Complainant would not have appreciated that the Respondent was advertising and promoting the Complainant’s products online. Certainly by October 26, 2018, when the Complainant emailed the Respondent stating: “First of all I want you to know that I really appreciate your efforts to promote our products to the end customers as well as within your sales network”, the Complainant will have known of the existence of the Domain Name and the Respondent’s website. If, as the Complainant now contends, the Respondent’s registration and use of the Domain Name was unauthorized, the Complainant would have said so then. But it did not. Instead, it expressed appreciation for the Respondent’s efforts in promoting its products. The Panel notes that the Complainant makes no attempt to explain this anomaly, but simply asserts bad faith registration and use.
Section 4.16 of WIPO Overview 3.0 sets out examples of reasons articulated by panels for making findings of RDNH. They include: (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.
The Panel finds that those responsible for the drafting of the Complaint and/or the person who authorised the filing of the Complaint knew that the Complaint should not succeed because on any fair reading of the available facts the Respondent registered the Domain Name in good faith. If there is any evidence to support the contention that the Domain Name was registered in bad faith, the Complainant has not seen fit to produce it to the Panel. The Complainant is professionally represented and, as is clear from the Complaint, its representatives are familiar with WIPO Overview 3.0 and the relevant case law. In the Panel’s view, the allegation of bad faith registration was included for no reason other than to bring the case within the terms of the Policy.
That the Respondent’s continued use of the Domain Name is reprehensible is no answer. Paragraph 15(e) of the Rules addresses the behaviour of the Complainant, not that of the Respondent.
For the foregoing reasons, the Complaint is denied and the Panel declares that the Complaint was brought in bad faith and constitutes an abuse of the Administrative Proceeding.
Date: December 12, 2019