WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mercer Human Resource Consulting, Ltd., Mercer Human Resource Consulting Inc. v. Konstantinos Zournas
Case No. D2007-1425
1. The Parties
The Complainants are Mercer Human Resource Consulting, Ltd., and Mercer Human Resource Consulting Inc., of London, United Kingdom of Great Britain and Northern Ireland, and New York, New York, United States of America, represented by Baker Botts, LLP, United States of America.
The Respondent is Konstantinos Zournas, of Athens, Greece.
2. The Domain Name and Registrar
The disputed domain name is registered with Secura GmbH.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2007. On September 28, 2007, the Center transmitted by email to Secura GmbH a request for registrar verification in connection with the domain name at issue. On October 3, 2007, Secura GmbH 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”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 4, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 24, 2007. The Response was filed with the Center on October 24, 2007.
The Center appointed Ross Carson as the sole panelist in this matter on October 29, 2007. 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 2, 2007 the Complainants submitted a Request for Leave to file a Supplementary Brief. On November 2, 2007 Respondent forwarded an e-mail to the Center objecting to filing of the Supplementary Brief. Respondent filed a supplemental Response on November 6, 2007. The Center advised the Parties that acceptance of the Supplementary Brief was in the discretion of the Panel having due regard to the Rules. Respondent informed the Center that he would require 8 to 9 days to file his Supplemental Filing and requested confirmation from the Center if this was acceptable to which the Center advised that acceptance of Supplemental Filings was in the discretion of the Panel having due regard to the Rules. Respondent filed a Supplemental response on November 6, 2007.
4. Factual Background
Complainants in this administrative proceeding are Mercer Human Resource Consulting, Inc. and Mercer Human Resource Consulting, Ltd., a United Kingdom subsidiary of Mercer Human Resource Consulting, Inc. Complainants and their predecessors have operated under the name “Mercer”, and have used the name and mark MERCER and variants thereof since 1975 to identify and distinguish its employee benefits, actuarial, compensation, communication, personal financial counseling and key human resource consulting services, from those of others. Complainants and their predecessors have grown over the years to employ over 14,000 employees in offices in 140 cities in 40 countries.
Complainant Mercer Human Resource Consulting, Inc. owns numerous U.S. federal trademark registrations consisting of or incorporating MERCER. In addition, it has registered MERCER alone or with other words and devices in many countries around the world. Mercer Human Resource Consulting, Inc.’s United States registrations for MERCER include: Reg. No. 2,907,461 for MERCER registered on December 7, 2004 based on use in commerce since 1975 covering “business management and consultation; business management planning; business marketing consulting; business merger consultation; business research; personnel management and compensation consultation; consultation services for the evaluation and management of employees; human resources consultation”; Reg. Nos. 2,902,605 registered on November 16, 2004 based on first use in commerce since 1975 and 2,945,426 for MERCER registered May 3, 2005 based on first use in commerce since 1975 covering “financial analysis and consultation; financial management; financial planning; financial portfolio management; financial research; insurance consultation and administration; consultation and administration of employee pension plans and employee benefits plans; insurance brokerage services”; Reg. No. 2,993,620 for MERCER BENEFITSMONITOR registered September 13, 2005 based on first use in commerce since June 29, 2002 covering “compiling, organizing and providing to others via electronic means employee benefits plan survey data”; and, Reg. No. 3,113,422 for MERCER EMPLOYEE ENGAGEMENT TOOLKIT registered July 11, 2006 based on first use in commerce since August 2003 covering “business research and surveys, namely, creation, administration, interpretation and evaluation of online surveys to measure employee commitment, satisfaction, professional development and morale.” Additionally, Complainant, Mercer Human Resource Consulting Ltd., owns both United Kingdom Registration No. 2352832 for the mark MERCER registered October 15, 2004 and Community Trademark (CTM) Registration No. 4803251 for the mark MERCER registered October 9, 2006.
Commencing with the first use over 40 years ago, the mark MERCER and variants thereof have been extensively used, advertised and promoted by Complainants to organizations using human resources and other services covered by the trademark registrations. Such names and marks have been prominently presented in advertisements, informational literature, other promotional materials including on the Internet intended for organizations using human resources services and other services offered by Complainants referred to in Complainants trademark registrations. In 2006, the advertising budget for advertising and marketing their services in connection with the mark MERCER again exceeded several million dollars worldwide.
In addition, Mercer has registered and advertises and conducts business on the Internet through numerous domain names containing the mark MERCER and variants thereof, including , which was registered on January 7, 1992.
The domain name in dispute was registered by Respondent on February 1, 2007.
5 Procedural Arguments
It is timely for the Panel to consider Complainants’ request for leave to file a Supplementary Brief dated November 1, 2007 before setting forth the contentions of the Parties.
Under paragraph 10(a) of the Rules the Panel has the power to conduct these administrative proceedings in such a manner as it considers appropriate in accordance with the Policy and the Rules. Under paragraph 10(b) of the Rules the Panel shall insure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. Pursuant to paragraph 10(c) of the Rules, the Panel shall ensure the administrative hearing takes place with due expedition. It may in exceptional cases extend a period of time fixed by these Rules or by the Panel.
It is now well established by previous panels that supplementary submissions should not be accepted except in exceptional circumstances. A panel may exercise its discretion to permit the filing of a supplemental submission in exceptional circumstances to rebut unexpected factual assertions, see Pacific Fence & Wire Co. v. Pacific Fence and Jim Paradise,WIPO Case No. D2001-0237.
Complainants submit that they are entitled to respond to the following issues which they could not have anticipated:
1. That Respondent registered the domain name in dispute in good faith and without any knowledge of Complainants’ rights in the trademark MERCER.
2. That Respondent registered the domain name in dispute to be used in conjunction with his “www.regions. info” website.
3. That Respondent would challenge Complainants’ claim to rights and fame in the trademark MERCER.
4. That Respondent would allege reverse domain hijacking.
Complainants fully addressed the first issue of whether Respondent registered the domain name in dispute in good faith and without any knowledge of Complainants’ rights in the trademark MERCER in the Complaint. Considering the establishment of Complainants’ rights in the trademark MERCER first. The long and extensive use of the trademark MERCER by Complainants relating to employee benefits, actuarial, compensation, communication, personal financial counseling and key human resource services and the registration of the MERCER trademarks are deposed to in Annex 5 to the Complaint. Copies of the registrations are attached as Annex 3 to the Complaint. Complainants submit throughout the Complaint that Respondent could not have registered the domain name in dispute in good faith without having encountered Complainants’ trademark MERCER. See paragraph 11 of Annex 5. Complainants also provided substantial evidence in the Complaint surrounding the negotiations between their agent and Respondent relating to negotiations leading to the purchase of the domain name in dispute in 2005 and to the negotiations in 2007 between their agent and Respondent to acquire the domain name in dispute. Annex 7 to the Complaint.
With respect to the second issue, Complainants’ could not anticipate that Respondent would allege that he intended to use the domain name in dispute in association with a geographical website associated with Respondent’s domain name. It is not uncommon in domain name disputes for a Respondent to state that they have made demonstrable preparations to use the domain name in dispute in association with a bona fide offering of goods or services. Respondent attached the results of a WhoIs search of as bona fide offering of goods or services. Annex 8 to the Response. The Panel finds that the facts submitted by Complainants are not sufficient to support a finding of exceptional circumstances warranting acceptance of a supplementary submission of this issue.
With respect to the third issue, the Respondent states in the last paragraph on page 4 of the Response in discussing Complainants’ trademark rights in MERCER that “The mark mercer is not in itself exclusive – it covers only certain areas of business.” Previous panels have held that the validity of a trademark registration is not an issue that should be entertained in a UDPR proceeding.
With respect to the fourth issue referred to by Complainants’, the Panel is aware of the provisions relating to reverse domain name high hijacking. The facts relied on by Respondent in support of this issue have been contested by Complainants in the Complaint except for referral to the DRS decision: Mercer Human Resource Consulting Inc. v. IMO International Limited, Case No. DRS 03733. The Panel has studied the DRS Appeal decision and will review the original decision which was appealed.
The Panel finds that Complainants have not established exceptional circumstances warranting acceptance of Complainants’ Supplemental Brief.
6 Parties’ Contentions
A. Complainants
A.1 Identical or Confusingly Similar
Complainants submit that their trademarks for and including MERCER are well-known and famous throughout the world and distinguish Complainants goods and services relating to employee benefits, actuarial, compensation, communication, personal financial consulting and other human resources consulting services and related products.
Complainants further submit that the domain name in dispute is identical to Complainants trademark for or including MERCER.
A.2 No Right or Legitimate Interests in respect of the Domain Name
Complainants submit that Respondent has made no use of, nor any demonstrable preparations to use, the domain name in dispute in connection with a bona fide offering of goods or services before any notice to Respondent of the dispute.
Complainants further submit that Respondent has never been commonly known by the domain name in dispute. Complainants submit that Respondent is not making a legitimate noncommercial or fair use of the domain name in dispute.
Complainants state that Respondent is not a licensee of Complainants, and has not received any permission or consent to use the trademark MERCER or apply for the domain name in dispute.
Complainants submit that their trademark and name for or including MERCER are so widely recognized and have been used in connection with high quality employee benefits, actuarial, compensation, communication, personal financial consulting and other human resources consulting services and related products for so many years, there can be no legitimate use of the domain name in dispute by Respondent. See, Nike Inc. v. B.B. de Boer,WIPO Case No. D2000-1397, in which the panel concluded that the respondent had no legitimate rights noting that it was difficult to see how the respondent could not have known about the trademark NIKE.
A.3 Registered and Used in Bad Faith
Complainants submit that Respondent is using the domain name in dispute to host a website, the primary purpose of which is to divert Internet users looking for Complainants’ website. When the domain name is entered into a web browser, the user is taken to a Sedo Parking page featuring numerous links, under various headings, including, but not limited to Mercer, finance, Internet, travel, etc.
Complainants further submit on information and belief, Respondent benefits financially through these offerings by being paid fees for providing customers to those websites. Bad faith is found when “…[it] appears more likely than not from the evidence offered by Complainant that Respondent has registered the domain name in a deliberate attempt to attract users to its planned website for commercial gain due to confusion with Complainant’s mark” InfoS v. Tenenbaum Ofer, WIPO Case No. D2000-0075.
Complainants state that it has been widely held by previous panels that “evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration.” Credit Suisse Group on behalf of Winterthur Insurance v. Pal-Ex Kft, NAF Case No. FA 102971; see also, Victoria’s Secretet. al. v. Sherry Hardin, NAF Case No. FA 96694 (holding that actual or constructive knowledge of a famous mark at the time the disputed domain name was registered constitutes bad faith); Samsonite Corporation v. Colony Holding, NAF Case No. FA 94313 (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).
Complainants submit that long before Respondent registered the domain name in dispute, Complainants had firmly established their rights in the MERCER mark. Respondent cannot claim or show any rights to the domain name in dispute that are superior to Complainants’ rights in Complainants’ MERCER mark, as evidenced by Complainants’ prior and well-known use.
Complainants further submit that even without the actual notice described above, Respondent has had years of constructive notice of Complainants’ registered trademarks under U.S. law 15 U.S.C. � 1072.
Complainants state that on or about July 27, 2005, Complainants, through a third party, contacted Respondent with an offer to purchase the domain name in dispute for 300 EUR. After negotiation between Respondent and Complainants, Respondent agreed to transfer the domain name to Respondent for 4000 EUR. On or about August 22, 2005, a payment of $5,261.85, which represented $4950 to be paid to Respondent (the exchange rate for 4000 EUR at such time) for the domain name and the registrar service fee, was paid through “.” Payment was made to Respondent at such time and the domain name was transferred to Complainants’ through a third party.
Complainants state that after failing to renew the domain name in dispute through an incident with the registrar, the domain name was re-registered by Respondent again on February 1, 2007. Panels have previously found that a respondent’s registration of a domain name after complainant’s registration lapsed is evidence of bad faith. See Athletica, Inc. v. Steven R. Wilson, NAF Case No. FA 2000093764 (bad faith found when respondent registered shortly after complainant’s registration lapsed). In fact, a printout from “” reveals that Respondent is the second highest catcher of dropped .us domain names, registering 7 dropped domain names in the specified period.
Complainants state that the website associated with the domain name in dispute advertised that the domain name in dispute was for sale and invited third parties to bid on the domain name. On or about April 15, 2007, Complainants, through a third party, placed a bid to purchase the domain name in dispute. After bidding back and forth between Respondent and Complainants, and Complainants threatening to file a UDRP complaint against Respondent, Respondent wrote “Do you even know who I am? I sold it to you in the first place. You have no luck at a UDRP. I was prepared to sell it to you for cheap but after these threats the best I can do is 4000 euro.”
Complainants further submit that the fact that Respondent has demanded 4000 EUR from Complainants, which is way in excess of Respondent’s out-of-pocket costs associated with the domain name in dispute, clearly evidences bad faith. The Board of Regents of the University of Nebraska v. Bill Saedlo,WIPO Case No. D2000-0154 (bad faith found where complainant offered $200 and Respondent demanded $5,000 and $10,000 respectively).
Complainants state that bad faith can also be found from the mere fact that the domain name in dispute is for sale, which not only demonstrates that Respondent does not have a legitimate interest in the domain name, but that his sole interest in the domain name is to unlawfully profit from it. See Baby Creysi Of America, Inc., et al v. Asesoria en Computo Integral, et al,WIPO Case No. D2000-0237 (bad faith found when Respondent offered subject domain names for sale); Credit Libanais SAL v. Mr. Fadi Skaf, WIPO Case No. D2000-0382 (offer to sell domain name advertised on website found to evidence bad faith).
Complainants further submit that Respondent has registered a domain name which embodies a world-famous trademark. In response to a request from Complainants to transfer the domain name in dispute to the rightful owner, Respondent has not only retained the domain name, without legitimate, or in fact any use thereof, but has tried to extort Complainants for the second time. When viewed as a whole, the circumstances indicate that Respondent has registered the domain name in dispute primarily for the purpose of depriving Complainants of the benefit and use of the domain name with the hope of harassing Complainants and causing them to expend corporate resources to track down the cybersquatter. Respondent’s actions represent conduct directed at Complainants to deprive them of the use of the domain name in dispute. Accordingly, Respondent’s bad faith use and registration of the domain name in dispute is clearly established.
Complainants further submit that Respondent has clearly established a pattern of conduct in registering infringing domain names. A UDRP complaint was recently filed against Respondent for his registration of the domain name , which was ordered to be transferred to complainant on February 17, 2006. Katherine Quinn, The Executrix of the Anthony Rudolfo Quinn Estate v. Konstantinos Zournas, NAF Case No. FA610713. Anthony Quinn was the famous, two-time Academy Award winning actor, painter and writer. See, Diageo p.l.c. v. John Zuccarini,WIPO Case No. D2000-0541 (registration of numerous misspellings of celebrity names and variations of popular products and website names is evidence of bad faith).
Complainants state that in the alternative, if Respondent’s conduct is not deemed to fall under any of the specific heads of paragraph 4(b) of the Policy, those specific provisions are expressed to be without limitation and Complainants allege that the circumstances of this dispute warrant a finding of bad faith. Specifically, Complainants allege that Respondent’s registration of the domain name in dispute without any legitimate right or interest thereto, followed by complete inaction with respect to the domain name and mere passive holding thereof, constitutes bad faith. See Aeroturbine, Inc. v. Domain Leasing Ltd, NAF Case No. FA0093674 (bad faith registration followed by inaction or passive holding constitutes bad faith use of domain name under UDRP).
B. Respondent
B.1 Identical or Confusingly Similar
Respondent submits that the term “mercer” is a geographic indicator which is not included in the scope of UDRP proceedings. Further Respondent submits that the term “mercer” is generic and lacks distinctiveness and is thus open to Respondent to use.
Respondent states that “Mercer” is a common name for cities, towns, counties, streets, islands in the United States and other places around the world. “In the Final Report of the First WIPO Internet Domain Name Process, the Report clearly recommended “that geographical indications should not be included within the scope of the UDRP...” to alleviate the concerns of certain commentators who feared that a broadly scoped UDRP covering also geographical indications would be too powerful a tool in the hands of intellectual property holders. As other panelists have noted, geographical indicators are not, per se, covered under the UDRP”, Brisbane City Council v. Warren Bolton Consulting Pty Ltd,WIPO Case No. D2001-0047.
Respondent further submits that “Mercer” is a common last name in many English and non-English speaking countries around the world including the United States of America, the United Kingdom, Canada and France. Mercer is also the word for an occupation (the original definition of mercer, meaning a merchant or trader, though its current meaning is more specifically a merchant who deals in textiles).
Respondent submits that “Mercer” is a term used in many marks and websites without any particular connotation with the Complainants such as Mercer County, Mercer University, Mercer hotel, Mercer Transportation, Mercer Trucking, Ray Mercer, mercer staph infection, Mercer Insurance etc. The term “mercer” is very common. There are 30,900,000 listings on “” for this term, and the vast majority of these listings can be seen to relate it’s use to an area name or a surname. Furthermore, there are 270 domain names containing the term “mercer” that relate to commercial, non-commercial, geographical, educational, personal websites, etc.
Respondent states that Complainants do not have any trade or service mark rights for “mercer” in Greece were the Respondent resides. Complainants do not have an office and never had an office in Greece. Various UDRP decisions have shown that one cannot infer that just because a mark is well-known in its home country, the mark is well-known in another country where the domain name registrant resides (See VZ Verm�gensZentrum AG v. A,WIPO Case No. D2000-0527; KCTS Television Inc. v. Get-on-the-Web Ltd,WIPO Case No. D2001-0154 and Village Resorts Ltd v. LiebermanWIPO Case No. D2001-0814 as examples).
Respondent also submits that Complainants can not plead for common law trademark rights as “common law trademark rights” are subject to geographical constraints. There is no common law trademark in this case since common law rights extend only to the geographical areas that the party is known by that mark. The Complainant is completely unknown in Greece.
Respondent states that all service marks presented in the Complaint were registered after the original registration date of the domain name in dispute that was the 15th of November 2003. The service marks presented in the Complaint were registered on December 7, 2004, November 16, 2004, May 3, 2005, September 13, 2005, July 11, 2006, October 15 2004 and October 9, 2006 according to Annex 1 of the Complaint. The re-registration of the domain name in dispute is strongly joined with the original registration as the re- registration was simply a succession of the original registration.
Respondent submits that Complainants registration of the MERCER trademark does not give Complainants unfettered rights to use the name. Trademark ownership confers no absolute monopoly on a word or symbol. Complainant must be aware of this as the USPTO database reflects at least 91 live registrations that include the mark “mercer”, 10 of which contain solely the mark “mercer”. The mark “mercer” is not of itself exclusive – it covers only certain areas of business. So whilst the Complainants may be able to demonstrate that it has some relation to the name that forms the domain name in dispute, so too can countless other parties due to its generic and descriptive nature and its highly common occurrence as an area name and a surname.
B.2. Rights or Legitimate Interests in respect of the Domain Name
Respondent states that the domain name in dispute was registered in order to be used as a website in conjunction with Respondent’s website “www.” that is under development. Respondent’s “www.” network will consist of the most intuitive and compelling regions online. Every website linked to Respondent’s “www.” city/area website will offer targeted local content and functionality for travelers and residents. Respondent’s “www.” network will include many major areas, cities, counties and towns in Greece, Europe, USA and all over the world. Respondent has acquired many domain names with geographical terms since 2001. Domain names include , , , , , , , etc. Respondent notes, that many of the above geographical names were registered during the month of November 2003 which is the original registration date of the domain name in dispute.
Respondent submits that there is no requirement that the Respondent who is the user of the domain name must offer goods or services bearing a trademark which matches the domain name. This is particularly so when the mark is a generic word, as is the case here. While the Respondent has not yet developed the geographical website, he will do so when he has raised funds to develop and operate this business.
B.3 Registered and Used In Bad Faith
Respondent states that the original registration date of the domain name in dispute was November 15, 2003. The domain was re-registered after the Complainant/buyer failed to renew the domain name and the name expired. The domain was re-registered on February 1, 2007. Parties are free to register domain names that have been allowed to lapse by their owners and this procedure is not evidence of bad faith under the UDRP unless the selection of the domain name and the manner in which it is used are related to the willful exploitation of another’s trademark. See Mutineer Restaurant. v. Ultimate Search, Inc., NAF Case No. FA 114434; GLB Servi�os Interativos S.A. v. Ultimate Search Inc (aka Ult. Search Inc),WIPO Case No. D2002-0189; Canned Foods Inc. v. Ult. Search Inc, NAF Case No. FA 96320.
Respondent states that the homepage associated with the domain name in dispute is a generic search page provided by S that is a partner of G. This homepage wasn’t used to divert Internet users from looking at the Complainant’s website. Even if Respondent had constructive knowledge of the Complainant’s registered trademark rights, the use by the Respondent of the disputed domain name negates any presumption of intent to deceive the public or to derive benefit from the Complainant’s mark. As referred in Annex 6 of the Complaint a “mercer” search, made by the Complainants, provided results related to health (mercer staph infection). The homepage was used as a holding or under construction page during the time the geographical website “www.” was designed and implemented. There are thousands of domain names in the same “inactive/coming soon” state, e.g. “” (Annex 10 to Complaint). Complainant is using a similar homepage for the domain “” that they own. (Annex 11 to Complaint).
Respondent submits that other Policy panels have concluded that the use of domain names for paid advertising links can be a legitimate commercial activity. See, e.g., Sweeps Vaccum & Repair Center, Inc. v. Nett Corp.,WIPO Case No. D2001-0031 (legitimate use of the domain name to describe “the types of businesses . . . listed on the directory page”); Kis v. A Ltd.,WIPO Case No. D2000-0770 (the evidence suggests that the name was chosen because of its intrinsic value, not because it corresponds to a trademark); Admiral Insurance Services Limited v. Mr. Adam Dicker,WIPO Case No. D2005-0241 (“[The] use of a generic domain name to provide information about the genus satisfies the requirements of paragraph 4(c)(i) of the Policy.” The domain name was used as a genus search term to display Google Adsense advertising links, much as the domain name in dispute was used in the present case). Mariah Media Inc. v. First Place� Internet Inc.,WIPO Case No. D2006- 1275 (The advertising links are served automatically by a third-party advertising feed provider using keyword search techniques rather than human selection. “In short, the Panel is unwilling to attribute bad faith to this search software. And it does not feel warranted in presuming bad faith on the part of a company using such software when the “keywords” it provides are merely dictionary words”). Respondent submits that contrary to Complainant’s assertions, pay-per -click websites are not in and of themselves unlawful or illegitimate, e.g., Terana, S.A. v. RareNames, WebReg,WIPO Case No. D2007-0489; Fratelli Carli S.p.A. v. Linda Norcross,WIPO Case No. D2006-0988; McMullen Argus Publishing Inc. v. Moniker Privacy Services/Jay Bean, MDNH, Inc.,WIPO Case No. D2007-0676.
Respondent further submits that there is no evidence of bad faith that includes actual or constructive knowledge of Complainants’ mark at the time of registration. Complainants do not have any trademark or service mark rights in Greece were the Respondent resides. Complainants do not have an office and never had an office in Greece.
Respondent denies having been aware of the Complainants prior to the launching of this administrative proceeding. When the domain name in dispute was first sold, it was sold to some Mr. Woods. Mr. Woods never revealed who his customer was. So even after the domain was sold Respondent didn’t know the buyer’s true details. During the first sale of the domain name in dispute the name used in the negotiations was Mr. Woods and the email address used was [email address]@. In the emails exchanged between Respondent and Mr. Woods, the latter mentions that he is buying the domain on behalf of a “web customer”, named Larry and implies that Larry’s last name is Mercer. The name used in the “” domain name transaction was “[Mr.] Woods” and the email used was “[email address]@. The domain name purchase agreement was set-up by Mr. Woods and was signed by Respondent “Konstantinos Zournas” and “[Mr.] Woods for UBC Ltd.”. Following the sale, Respondent submits that the domain name was never used by Complainant as a main website or a redirection to some other website. There was never an active or inactive website associated with the domain name in dispute while the domain was in Complainants’ possession. The nameservers were never changed from the Respondent’s main nameservers: and . Whois details were never changed to Complainant’s true details. Registrant shown in whois was Domain Admin, PO Box 420, Lindenhurst, NY, 11757, US. During the second attempt of purchase the domain name in dispute the anonymous bidder at “www.s” never revealed their name or who they worked for, so it was not possible for Respondent to know that the buyer of the domain name in dispute were Complainants as the Complainants actively tried and succeeded to hide their true and correct details by using a third party in all negotiations and the purchase.
Respondent states that Complainants offer no evidence that Respondent knew of Complainants’ trademark, either actually or constructively, nor that Respondent had ever heard of Complainants prior to the notification of the Complaint. Complainants are far from well-known in Europe and completely unknown in Greece, where Respondent resides. “In these circumstances and having regard to the fact that, however well-known the name may be in the human resources business, the name is not in the Coca-Cola category of famous names, the Panel is more than ready to accept that prior to receiving complaining communications from the Complainant’s representatives, the Respondent was unaware of the existence of the Complainant or its business.” Mercer Human Resource Consulting Inc., supra. Furthermore Complainant can not plead for constructive notice of Complainant’s registered trademarks as these trademarks are subject to geographical constraints. United States law and trademarks have no effect in Greece where Respondent resides.
Respondent submits that the fact that when approached by someone you are in principle willing to discuss sale of a domain name does not in itself constitute bad faith. Open Systems Computing AS v. Alberto degli Alessandri,WIPO Case No. D2000-1393. The fact that, when approached by someone you offer to sell a domain name is not in itself conclusive evidence of bad faith. See, Puky GmbH v. Ignatius Agnello,WIPO Case No. D2001-1345. Respondent contends there is growing precedent within United States law and within the UDRP that resale of domain names per se is not evidence of actionable bad faith. (See, Avery Dennison Corp. v. Jerry Sumpton, D.C. Case No. CV-97- 00407-JSL, Appeal No. 98-558 10; General Machine Products Co., Inc v. Prime Domains, NAF Case No. NAF 92531, and Allocation Network GbmH v. Steve Gregory, WIPO Case No. D2000-0016.
Complainants submit that Respondent’s offer to sell the domain name as evidence of bad faith use of the domain name in dispute. Respondent states that some of the largest sums of money paid for domain names have been for generic names and it is clear to anyone who follows reports of domain name sales that geographic registrations are extremely prized. Respondent states speculation within open domain name spaces is perfectly permissible within the boundaries set by the UDRP. A speculator might register perfectly innocent names with the address “Domain for Sale” to indicate that it is happy to contemplate sale of the name at some point in the future. Within the trademark system of countries, and within the UDRP, it is permissible to sell ones legitimate interest to a mark or name, if another party with a legitimate interest is prepared to offer a price that is acceptable. Respondent contends that in some sense it is true to say that all domain names are implicitly registered with the notation that the “name is for sale”. Coca-Cola’s brand, marks and domain name are for sale at the right price; it is just that the price is so incalculably high that we assume that the brand is “not for sale”. Moreover, buying and selling domain names is not, in and of itself, evidence of bad faith, a principle now firmly entrenched in many decisions rendered made under the UDRP: see e.g. Apple Computer, Inc. v. DomainH, Inc.,WIPO Case No. D2000-0341; N.C.P. Marketing Group v. Entredomains,WIPO Case No. D2000-0387. Offering the domain name at a price higher than the out-of-pocket expenses of registration is not a sign of bad faith. Respondent submits this is not a problem with the UDRP; this is a feature of a market. Complainants assert that Respondent requested 4000 Euro, which exceeds out-of-pocket costs directly related to the domain name in dispute. However, since the domain name in dispute is considered a generic name it would not lead to a conclusion that Respondent registered and is using the domain name in bad faith only because Respondent requested money exceeding out-of-pocket expenses when contacted by Complainants. As far as the Respondent’s offer to sell the domain name in dispute for 4000 Euro is concerned, the evidence establishes that Complainants approached the Respondent offering to purchase the domain name and that the Respondent replied by asking for a price that was the same offered by the Complainants during the first sale. Respondent’s offer to sell the domain name for 4000 Euro following the repeat approach by Complainants does not indicate bad faith registration or use, 4000 Euro was exactly the same price that the Complainants paid the Respondent during the first sale, on August 2005. Respondent contends it is the legitimate owner of the domain name and is entitled to seek whatever price he considers appropriate. See Chemical Products Technologies, LLC v. Christopher Shadbolt,WIPO Case No. D2003-0373. The indication on the Respondent’s website that the Respondent was willing to sell the Domain Name for a sum in excess of its registration expenses is of itself of no assistance to the Complainant. Trading in domain names for profit is a well-established business and unexceptionable. To get off first base the Complainant must ordinarily at the very least produce something to show that the Respondent had (or is likely to have had) Complainant in mind at the relevant time. Even then, that may not be enough in all cases to demonstrate an abusive intent, but it will ordinarily be an essential pre-requisite. Mercer Human Resource Consulting Inc.supra.
Respondent states it did not register the domain name in order to prevent Complainants from using the name “Mercer”. Complainant already owns the following domain names: , since January 7, 1992, , November 19, 2001 and , since April 20, 2002. A third party located in Canada owns and . Zero International Holding GmbH & Co. Kommanditgesellschaft v. Beyonet Services and Stephen Urich,WIPO Case No. D2000-0161; EAuto, L.L.C. v. EAuto Parts,WIPO Case No. D2000-0096. Paragraph 4(b)(ii) of the Policy indicates that the registration should have the effect of preventing the owner of a trademark or service mark from reflecting the mark “in a corresponding domain name”. Respondent has not prevented the Complainant’s official website at “” being registered and used in their direct interests. That is surely a “corresponding domain name” for the purposes of paragraph 4(b)(ii) of the Policy. Bruce Springsteen v. Jeff Burgar and Bruce Springsteen Club,WIPO Case No. D2000-1532. Complainants inability to register or renew the domain name in dispute is not itself evidence of bad faith of Respondent. (Edward Van Halen v. Deborah Morgan,WIPO Case No. D2000-1313). Common words and descriptive terms are legitimately subject to registration as domain names on a “first come, first served” basis. There is no evidence that Respondent registered the domain name in dispute with Complainant in mind, or that he was even aware of the existence of Complainant or its purported trademark. The Complainant bought the domain through a third party. The reason Respondent registered the domain name in dispute is because it was deleted and incorporates a common geographical term. The domain name expired after Complainant failed to renew it. The domain name then became available for anyone to register. Respondent submits that the acquisition of such deleted domain name has been endorsed as a bona fide practice under the Policy. See Vernons Pools Limited v. Vertical Axis, Inc.,WIPO Case No. D2003-0041.
Respondent states that he is not a competitor of Complainants and clearly did not register the domain name in order to disrupt the business of Complainants. Respondent had and has plans to create a geographical portal linked to his main geographical website “www.”.
Respondent submits that it is undisputed that he has registered a number of domain names, including the domain name in dispute. This is however, not in itself an act of bad faith as required under the UDRP nor is it an illegitimate business, as long as the domain names do not incorporate trademark rights of other businesses or otherwise infringe the rights of others. Complainants have presented a list of domain names registered by the Respondent. The list of domain names registered by the Respondent does thus not fall under the definition of “bad faith” within the meaning of the UDRP as set out in paragraph 4(a)(iii) and 4(b) of the Policy. The seven domain names on the list are generic dictionary words, geographical names or common three letter domain names. Respondent is a website designer and his main website is “”. Respondent acquires domains with intent to develop them. Respondent has many active websites such as “” and “”. Respondent has not established a pattern of conduct registering infringing domain names. One UDRP complaint can’t possibly establish a pattern, considering the volume of domain names Respondent has in his possession. “It is not disputed that the Respondent is a domainer in the sense he has a substancial portfolio. This is not of itself objectionable. I take note of the sheer volume of domains registered by the Respondent. To have had two findings against him, ever, does not, particularly in light of those numbers, yield a pattern to my mind.” Mercer Human Resource Consulting Inc. v. IMO International Limited, Case No. DRS 03733. “The Complainant has referred to various other Panel decisions which it says show that the Respondent has acted in bad faith with regard to domain names on other occasions. However, the Panel must deal with this case on its own merits, and we cannot take into account decisions made in other cases on the basis of different evidence and submissions.” Sustainable Forestry Management Limited v. SFM.com and James M. van Johns “Infa dot Net” Web Services,WIPO Case No. D2002-0535.
Respondent states there is no requirement that a domain name registrant use or have any use for the domain name at the time of registration; not even for a domain name that might be similar to an existing trademark. “A domain name holder is under no obligation to immediately begin operating a website upon registering the domain name.” Prom Software, Inc. v. Reflex Publishing, Inc.,WIPO Case No. D2001-1154.
B.4 Reverse Domain Hijacking
Respondent contends that Complainants deliberately failed to include in the Complaint any information about the fact that Respondent never knew the buyer of the domain name in dispute was in fact Complainants. Respondent states that Mr. Woods failed in his declaration filed as an Annex to the Complaint to mention that the domain name transfer agreement in 2005 was between Respondent “Konstantinos Zournas” and Mr. Woods. Also Mr. Woods said in the emails that he was buying the domain name for someone named Larry, with Mercer as a probable surname. Then Mr. Woods also fails to present the full comments made at “www.s”. Mr. Woods threatened the Respondent: “... we will file a UDRP if this negotiation is not successful and you will realize no profit.” It seems to the Respondent that, after trying to acquire the name from Respondent, Complainant is attempting unfairly to use the Policy as a crowbar to pry the name away from a legitimate business that happened to register the name before Complainant did so.
Respondent further submits that Complainants knew that there was no merit in filing for this UDRP proceeding as less than a year ago, the DRS complaint the Complainant Mercer Human Resources Consulting Inc. had filled for was dismissed by the DRS panel. Mercer Human Resource Consulting Inc. and IMO International Ltd. DRS 03733. The case that was dismissed is almost identical to this one. Moreover in that Complaint, the Complainants recognized the Respondent’s rights when he bought the domain name in dispute in the first place.
7. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy Complainants must establish rights in a trademark and secondly prove that the domain name in dispute is confusingly similar to the trademarks in which Complainants have rights.
Complainants and their predecessors have operated under the name MERCER, and have used the name and trademark MERCER and variants thereof since 1975 to identify and distinguish their employee benefits, actuarial, compensation, communication, personal financial counseling and key human resource consulting services, from those of others. Complainants and their predecessors have grown over the years to employ over 14,000 employees in offices in 140 cities in 40 countries.
Complainant Mercer Human Resource Consulting, Inc. owns U.S. federal trademark registrations consisting of or incorporating MERCER. In addition, it has registered MERCER alone or with other words and devices in many countries around the world. Mercer Human Resource Consulting, Inc.’s U.S. registrations for MERCER include: Reg. No. 2,907,461 for MERCER registered on December 7, 2004 based on use in commerce since 1975 for the following services, “business management and consultation; business management planning; business marketing consulting; business merger consultation; business research; personnel management and compensation consultation; consultation services for the evaluation and management of employees; human resources consultation”.
Respondent submits that the domain name in dispute is entitled to a registration date of November 17, 2003, which precedes the registration date of the many trademark registrations of Mercer Human Resources Consulting Inc.’s trademark registrations for or including MERCER. The Whois search for the domain name in dispute shows a registration date of February 1, 2007. Respondents submission that the domain name in dispute is entitled to a registration date of November 17, 2003, the earliest date of registration of is not accepted as the original registration of the domain name expired for non renewal and the original date of registration of November 17, 2003, expired with the expiry of the original domain name registration.
Respondent submits and filed evidence to show that the word “mercer” is in use as a surname, a place name, as well as a name associated with a variety of businesses. The Policy and Rules are not intended as a forum to decide the issue of distinctiveness of trademark registrations for lack of distinctiveness at the date of registration or loss of distinctiveness at the time of commencement of the UDRP proceeding. National law with respect to invalidity of a trademark on the issue of distinctiveness varies in different jurisdictions. There is no opportunity for Complainants to respond to evidence of lack of or loss of distinctiveness under the Rules.
The domain name in dispute incorporates the whole of Complainants’ registered trademarks for or including the trademark MERCER. Numerous UDRP panels have held that a domain name is confusingly similar to a trademark when the domain name incorporates the mark in its entirety. See, e.g., Am. Online, Inc., v. , NAF Case No. FA117319 (noting that incorporated complainant’s “entire mark” and implied “an affiliation that simply does not exist”).
The addition of a generic top-level domain name such as “.org,” “.net,” or “.com” is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark. See, e.g., Aous Uweyda v. Abdallah Sheet, NAF Case No. FA165119.
The Panel finds that Complainants have proven that the domain name in dispute is confusingly similar to the Complainants’ registered and common law trademarks.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainants must prove that Respondent has no rights or legitimate interests in respect of the domain name.
Respondent is not affiliated with Complainants and has never been authorized by Complainants to use Complainants’ trademarks for or including MERCER or any trademarks confusingly similar thereto.
On the material before the Panel, Respondent has not used the trademark MERCER or any variation thereof in association with any bona fide goods or services offered by Respondent.
The domain name in dispute is parked with Sedo Parking. The webpage associated with the domain name in dispute is an advertising page including links to Mercer, ancestry, women, travel, religion, jobs, fitness, education, and dating. The link to Mercer connects to a webpage relating to Mercer staph infection. There is no evidence that the domain name in dispute is being used by Respondent in connection with a bona fide offering of goods or services.
The Panel finds that Complainant has made a prima facie showing under paragraph 4(a)(ii) of the Policy. The burden shifts to Respondent to come forward with evidence under paragraph 4(c) of the Policy to demonstrate his rights to or legitimate interests in the domain name in dispute. See, Compagnie de Saint Gobain v. Com-Union Corp,WIPO Case No. D2000-0020.
Respondent states that the term “mercer” relates to location and was registered in order to be used in conjunction with Respondent’s website “” that is under development as a city/area website that will offer targeted local content and functionality for travelers and residents. Respondent points out that he has acquired many other domain names with geographical terms including , , , , , , etc. Respondent points out that many of the domain names with geographical terms were registered in during the month of November 2003 which is the original registration date of the domain name in dispute before it expired and was registered for a second time. The domain name was registered on September 28, 2005.
Paragraph 4(c)(i) of the Policy provides that a respondent may demonstrate rights to and legitimate interests in the domain name before any notice to him of the dispute by use, or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services.
The Panel finds that Respondent has not met the shifted burden of proof under paragraph 4(c)(i). Respondent has not provided documentary or other demonstrable evidence to support his plans to create the “www.” website. Paragraph 4(c)(i) of the Policy requires such demonstrable evidence and therefore mere assertions of intent are not sufficient to meet the burden. See, Inter-Continental Hotels Corporation v. Khaled Ali Sousi,WIPO Case No. D2000-0252.
The Panel finds that Complainant has proven that Respondent has no rights or legitimate interests in the domain name in dispute.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy Complainant must prove that the domain name in dispute has been registered and used in bad faith.
Complainants must first prove that the domain name in dispute was registered in bad faith. Secondly Complainants must prove that the domain name in dispute was used in bad faith.
With respect to the issue of registration of the domain name in dispute in bad faith, the Panel finds that the trademark MERCER alone or in combination has been used by Complainants to identify and distinguish its employee benefits, actuarial, compensation, communication, personal financial counseling and key human resource consulting services, from those of others.
Complainants are the owners of trademark registrations in the United States of America, the United Kingdom and the Office for Harmonization in the Internal Market. Particulars of the registrations are set out in paragraph 4 above.
Complainants advanced a number of grounds in support of their position that Respondent registered the domain name in dispute in bad faith. Respondent contested Complainants grounds.
Complainants first ground is that the trademark MERCER is so well known because of Complainants long use and registration of its trademarks that Respondent must have been aware of Complainants’ trademark rights in MERCER before Respondent registered the domain name in dispute on February 1, 2007.
Complainants did not file any evidence showing that their trademark MERCER was commonly known among the general public at the time of registration of the domain name in dispute. Evidence of trademark recognition of a company’s important trademark by the general public or by its target market is normally available in large companies to evaluate advertising expenditures and effectiveness. Complainants did not file such evidence. Complainants did not file samples of the advertising material used by Complainants in their day to day operations.
Respondent submitted findings of two panels in a domain name dispute involving the trademark MERCER in which the Complainant Mercer Human Resource Consulting Inc. was the Complainant. Complainants did not bring these decisions to the panel’s attention in the Complaint. Both panels found that the trademark MERCER may not be widely known among the public but has a high profile among the business, financial, and human resources community.
The decisions referred to by Respondent arose in cases decided under the Nominet UK Dispute Resolution Service. The cases are Mercer Human Resource Consulting Inc. v. IMO International Ltd., DRS 03733. The first decision, dated August 24, 2006, was that of a single member panel that decided in favor of Complainant and ordered the domain name to be transferred to Mercer Human Resource Consulting Inc. The second decision, dated November 28, 2006, was the decision of a three member Appeal panel who decided the appeal on a redetermination of the material previously submitted to and decided by the single member panel. The Appeal was allowed.
The single member panel found that, “Although the Complainant’s mark MERCER may not be widely-known by the public at large, the Expert is satisfied that it has a high profile in the business and financial community in Europe and North America.” The single member panel inferred from the evidence that it was difficult to believe that respondent was not aware of complainant’s website when it registered the domain name in 2004. The single member panel ordered that the domain name in dispute should be transferred to the complainants.
The Appeal Panel stated that the issue as to whether the respondent was aware of the complainant prior to registration of the domain name is key to the outcome of the case before it. Based on the facts that were before the single member panel the Appeal Panel found that, “In these circumstances and having regard to the fact that, however well-known the name may be in the human resources business, the name is not in the Coca-Cola category of famous names, the Panel is more than ready to accept that prior to receiving complaining communications from Complainant’s representatives, the Respondent was unaware of the existence of the Complainant or its business.” The Appeal Panel allowed the appeal and ordered that no action be taken in relation to the domain name .
Both the above decisions were decided under the Nominet UK DRS Policy and Rules and not the UDRP. Furthermore this Panel is not aware of the submissions and evidence considered in the Nominet cases other than as referred to in the reported decisions by the single member and Appeal Panel. Aside from the fact that the two decisions reach different conclusions, the two decisions are not binding having regard to the fundamental differences referred to immediately above. This Panel does note that both Nominet Panels found on the facts that the complainant did not establish that the trademark MERCER was widely-known by the public at large although it has a high profile in the business, financial and human resources community in Europe and North America. Complainants have not filed any evidence in this case to support its contention that MERCER was a trademark that was commonly known by the general public at the time of registration of the domain name in dispute.
As both the Complainants and Respondent have referred to material on the Internet, the Panel visited Complainants’ “www.” website referred to in the Complaint. Complainants’ “www.” website is linked to Complainants’ “” website. The material on that website relates to Complainants human resources, pension, investment and other services and is directed to organizations as opposed to the general public. As stated on Complainant’s homepage: “Helping organizations get it right is Mercer’s passion. We are the world’s leader in helping organizations leverage the power of their people to achieve peak company performance within a highly disciplined rigorous financial investment framework.”
The Panel infers from the evidence that organizations as opposed to the general public are Complainants principal advertising and sales target. Based on the evidence filed by Complainant it has not established that its trademark MERCER is well known among the general public in the United States of America or Europe. Complainants’ trademark MERCER is probably well-known among organizations requiring and using human resources, pension, investment and related services within their organizations in many countries throughout the world. There is no evidence before the Panel that Respondent is such an organization or part of such an organization.
Secondly, Complainants submit that Respondent has had years of constructive notice of Complainants’ registered trademarks under U.S.C. Chapter 1072. The Panel declines to find that Respondent residing in Greece has constructive notice of Complainants United States Trademark registrations for or including MERCER. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 3.4.
Thirdly, Complainants submit that during the negotiation and sale of an earlier registration for the domain name to an agent for the Complainants in 2005, Respondent must have become aware of Complainants and their trademark MERCER.
The Panel has reviewed the submissions and evidence submitted by both parties as to whether or not Respondent was made aware of the identity of Complainants during the negotiations and sale of the original registration of the domain name by Respondent to Complainants in 2005. Complainants retained an agent to attempt to purchase the domain name from Respondent. The agent did not disclose the identity of his principals, the Complainants, either during the negotiations with Respondent, in the Agreement to Purchase, in the payments to Respondent or in the registration of the transfer of the domain name. The agent without any inquiry from Respondent implied to Respondent that he represented someone having the surname “Mercer”. The Panel finds that the negotiations, agreement, transfer and registration of the domain name in dispute prior to the registration of the domain name in dispute on February 1, 2007, did not disclose the identity of Complainants to Respondent.
Fourthly, Complainants submit that Respondent was using the domain name in dispute to host a website the primary purpose of which was to divert Internet users looking for Complainants website for click through payments. The traffic on a website may be organized by software programs to select the most active links associated with a domain name to provide a maximum return to the domain name owner and the operator of the landing page.
Many previous panels have found that the appearance of links on the landing page associated with a domain name in dispute to the goods or services of the complainant or his competitors is evidence of bad faith. Mobile Communication Services Inc. v. WebReg, RN,WIPO Case No. D2005-1304.
The Panel has reviewed the landing page associated with the domain name in dispute filed as an annex to the Complaint. The landing page includes a “Mercer” link. The landing page connected to the “Mercer” link leads to a home page “Mercer staph infection.” There is no link on Respondent’s landing page to Complainants or Complainants’ goods or services, an indication of bad faith frequently found in cybersquatting cases. Complainant did not file evidence showing any links on Respondent’s landing page to goods or services of competitors of Complainants.
The Panel finds that the links appearing on Respondent’s landing page associated with the domain name in dispute do not disclose evidence of Respondent’s knowledge of Complainants’ registered trademarks or goods or services.
Fifthly, Complainants submit that Respondent has clearly established a pattern of conduct of registering domain names likely to cause confusion with the registered trademarks of others. Complainants attached as an annex to the Complaint a copy of a UDRP decision in which Respondent was ordered to transfer the domain name to the complainant. Katherine Quinn, The Executrix of the Anthony Rudolfo Quinn Estate v. Konstantinos Zournas, NAF Case No. FA 610713. Respondent states that Complainants’ have not established a pattern of conduct of registering domain names which infringe the trademark rights of others having regard to the volume of domain names Respondent has in its possession. The Panel agrees with Respondent that one UDRP decision does not establish a pattern of bad faith registration of domain names infringing registered trademarks of others.
The Respondent denies having been aware of Complainants prior to registration of the domain name in dispute. Respondent states that Complainants do not have any trade or service mark rights for “mercer” in Greece where he resides. Respondent further submits that Complainants do not have an office and never had an office in Greece. Respondent attached a printout of a page from one of Complainants websites which listed office locations, including addresses etc. for about forty countries, Greece not being included on the list. Respondent submits that Complainants are completely unknown in Greece where he resides. Respondent states that previous panels have held that one cannot infer that just because a mark is well known in complainants home country, the mark is well-known in another country where the domain name registrant resides. VZ VermogensZentrum AG v. A,WIPO Case No. D2000-0527.
There are many UDRP decisions where a trademark registered or made well known in one country or area has been found to be registered in bad faith by a domain name registrant residing in another country. This is especially so where the trademark registration is a fanciful or created trademark or in the case of a famous trademark. The evidence filed by Respondent establishes that “mercer” is a common surname, and a widely used name of towns and counties in the United States of America. Further there is no evidence filed by Complainants from which the Panel can infer that the trademark MERCER is a famous trademark among the general public.
Respondent registered the Domain Name on September 28, 2005. Respondent states that he intends to use the domain name in dispute as a website linked to Respondent’s main geographical website “www.”. The “www.” website is not up and running as a geographical website. Respondent submits that there is no obligation on a domain holder to commence operating a website immediately after registration of a website. Prom Software, Inc. v. Reflex Publishing, Inc.,WIPO Case No. D2002-1154. The issue as to whether Respondent proved that he made demonstrable preparations to use the domain name in dispute under paragraph 4(c)(i) of the Policy is a different issue than the Respondents intent to use the domain name in dispute in association with the geographical website “www.”. Respondent provided a list of other domain names belonging to Respondent having a geographical significance in annex 9 to the Response which are intended to be included in the “www.” network.
While the Panel is not comprehensively persuaded by the Respondent’s various statements of intent, the onus is nevertheless on Complainants to establish on a balance of probabilities that Respondent registered the domain name in dispute in bad faith. Respondent denies any knowledge of Complainants prior to the registration of the domain name in dispute for a second time on February 1, 2007. While the Panel has taken due note of the Respondent’s to date still rather limited history of involvement in domain name disputes, each case must nevertheless be decided on its merits. For the reasons expressed above, the Panel finds on a balance of probabilities that Complainants have not proven that Respondent registered the domain name in dispute in this case in bad faith on February 1, 2007.
The Complainant must also prove that Respondent used the domain name in dispute in bad faith. Having found that Complainants did not on balance succeed in proving in this proceeding that Respondent did not register the domain name in dispute in bad faith, the Panel need not consider the issue of whether Respondent used the domain name in dispute in bad faith.
Reverse Domain Name Hijacking
Paragraph 1 of the Rules defines Reverse Domain Name Hijacking as using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name. To prevail in such a claim, a respondent must show that complainant knew of respondent’s unassailable rights or legitimate interests in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the complaint in bad faith. Sydney Opera House Trust v. Trilynx Pty. Limited,WIPO Case No. D2000-1224. Having regard to the facts set out above, the Panel concludes that Complainants did not commence this case in bad faith.
8. Decision
For all the foregoing reasons, the Complaint is denied.
Ross Carson
Sole Panelist
Dated: November 23, 2007
Full & Egal Universal Law Academy