WIPO Domain Name Decision D2008-0585 for decal.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Decal (Depositi Costieri Calliope) S.p.A. v. Gregory Ricks

Case No. D2008-0585

1. The Parties

The Complainant is Decal (Depositi Costieri Calliope) S.p.A. of Soresina, Italy, represented by Landwell-PricewaterhouseCoopers LLP of Spain.

The Respondent is Gregory Ricks of College Station, Texas, United States of America, represented by John Berryhill, Ph.d., Esq., United States of America.

2. The Domain Name and Registrar

The disputed domain name is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2008. On April 16, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On April 22, 2008, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 21, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 26, 2008. The Center verified that the amended 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 May 6, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 26, 2008. The Response was filed with the Center on May 21, 2008.

The Center appointed James A. Barker as the sole panelist in this matter on May 28, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The disputed domain name was first registered on January 28, 1996 (as shown by the “creation date” in the Whois record).

The Complainant was founded in Italy in 1961. The Complainant operates storage facilities for oil and petrochemical products. The Complainant has business interests in various countries, including Italy, Spain, Russia, Panama, and Brazil. It employs up to 300 workers worldwide. The Complainant is the owner of a trademark registered in Italy for DECAL. That mark was first registered on May 4, 1998.

At the date of this decision, the disputed domain name reverted to a “portal” or “landing” website, which included links variously relating to, for example, “Car Decal”, “Custom Sticker”, “Decals”, “Stickers”, “Used Cars”, and “Address Labels”.

“Decal” is an English term for a type of sticker, typically applied to motor vehicles. The Respondent also provides a definition obtained through a Google search: “A decal…or transfer is a plastic, cloth, paper, or ceramic substrate that has printed on it a pattern that can be moved to another surface upon contact.” The Complainant did not itself drawn attention to the meaning of that word.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the disputed domain name is identical to its corporate name and its trademark DECAL. The Complainant claims that its mark is well-known world-wide.

The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant argues that the fact that the disputed domain name comprises a generic term “is not a reason to refuse the legitimate interests the Complainant has in this domain name.” The Complainant claims that the Respondent cannot show any of the circumstances that might demonstrate rights or legitimate interests for the purpose of paragraph 4(c) of the Policy. The Complainant refers to a number of panel decisions in apparent support of its contention that “the domain name has no relationship with the Respondent’s name or business and Respondent is not offering any content related to its own activity.”

The Complainant claims that the Respondent has registered and used the disputed domain name in bad faith. The Complainant suggests that “the Respondent has acted in bad faith given the fact that at the present date the website of the disputed domain name only offers links to other websites.”

B. Respondent

The Respondent claims that the Complaint is frivolous and evidences a reckless disregard for the truth.

The Respondent does not directly address the first element argued by the Complainant, as to whether the disputed domain name is identical or confusingly similar to the disputed domain name.

The Respondent claims that it has a right or legitimate interest in the disputed domain name, based on its ordinary meaning. The Respondent refers to section 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, which is that “If a respondent is using a generic word to describe his product/business or to profit from the generic value of the word without intending to take advantage of complainant’s rights in that word, then it has a legitimate interest.” The Respondent claims that it has such a legitimate interest.

The Respondent argues that the Complainant has willfully ignored or manipulated the results of its own inquiries and evidence, which indicate that the disputed domain name has a generic meaning and that the Respondent’s website is used in that connection. More generally, the Respondent complains that “The general and pervasive mis-impression in the trademark community that it is categorically illegitimate to use a domain name for paid search advertising is itself inspired by failure by UDRP Panels to clearly distinguish when it is, and is not, legitimate.”

The Respondent denies that it has registered and used the disputed domain name in bad faith. The Respondent claims that it is unlikely in the extreme that an ordinary Internet user would use “www.” to search for the Complainant. In relation to the Respondent’s use of a proxy service, the Respondent claims there is nothing untoward in such a practice, and that it is understandable that the registrant of the disputed domain name would not want its personal details published for access by misguided complainants.

The Respondent seeks finding of reverse domain name hijacking against the Complainant.

6. Discussion and Findings

For the Complaint to succeed, under paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

These three elements are discussed in turn below.

A. Identical or Confusingly Similar

It is not contested that the Complainant has registered rights in the trademark DECAL. It is well-established that the domain name extension is to be disregarded for the purpose of determining identicality under the Policy. Disregarding that extension, it is clear that the disputed domain name is relevantly identical to the Complainant’s mark.

The Complainant has therefore established this first element of the Policy.

B. Rights or Legitimate Interests

The Complaint however is misconceived in relation to this second element of the Policy.

The Complainant refers to the Respondent’s use of the disputed domain name in connection with a portal website. The Complainant also points out that the Respondent is not known by the disputed domain name. These facts, the Complainant suggests, are evidence of a lack of a right or legitimate interest. The Complainant refers to a number of prior panel decisions to support its case. However, the Panel does not find those cases particularly helpful or relevant to the argument that the Complainant seeks to make.

In this case, it is plain that the disputed domain name has a descriptive or “generic” meaning in English, and that the Respondent is based in an English-speaking jurisdiction (the United States of America). Section 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, partially cited by the Respondent, sets out the overall views of panelists on whether a respondent may automatically have a legitimate interest in a domain name comprised of generic (dictionary) words, as follows:

“Consensus view: If the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under Paragraph 4(c) of the Policy, then the respondent may lack a legitimate interest in the domain name, even if it is a domain name comprised of a generic word(s). Factors a panel should look for when determining legitimate use would include the status and fame of the mark, whether the respondent has registered other generic names, and what the domain name is used for (a respondent is likely to have a right to a domain name “apple” if it uses it for a site for apples but not if the site is aimed at selling computers or pornography). …

However: If a respondent is using a generic word to describe his product/business or to profit from the generic value of the word without intending to take advantage of complainant’s rights in that word, then it has a legitimate interest.”

This latter qualification has, in effect, also been restated by panelists in the context of domain names registered in connection with portal websites – as in this case. Where the links on a portal website are based on the trademark value of the domain name, rather than any descriptive value, the trend in decisions under the Policy is to recognize that such practices generally do constitute abusive cybersquatting. See, mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; Ranbaxy Laboratories Ltd v. Jucco Holdings,WIPO Case No. D2007-1562, and the cases cited in those ones.

However, the Respondent uses the disputed domain name in connection with “decals” and related products. As such, it is clear that the Respondent uses the disputed domain name in connection with its descriptive value. There is no evidence that the Respondent has ever used it for anything else. There is no evidence that the Respondent sought to exploit the value of the Complainant’s mark. There is no strong evidence that the Respondent should have been aware of the Complainant or its mark.

For these reasons, the Complainant has failed to establish this second element.

C. Registered and Used in Bad Faith

Because it is relevant to the request for a finding of reverse domain name hijacking, the Panel also finds that the Complainant has not established bad faith registration or bad faith use by the Respondent.

It is fundamental to a finding of bad faith that the Respondent knew or, in certain circumstances, should have known of the Complainant’s rights in its mark.

The Complainant provides almost no evidence to support such a finding. The disputed domain name has apparently been registered for over 12 years. That registration itself predates the Complainant’s registered mark. It is also evident that the Respondent uses the disputed domain name in connection with its ordinary meaning. There is no evidence which suggests that the Respondent registered the disputed domain name to exploit the value of the Complainant’s mark.

The Complainant’s argument, in relation to bad faith, is built on the following:

Firstly, the Complainant states that the Respondent “uses the disputed domain name just to display links on its website”. The Complainant refers to prior panel decisions in which “this type of conduct has been dealt with”. For example, the Complainant refers to the following passage from Cyber Curriculum Vitae, S.L. v. ActiveI,WIPO Case No. D2006-0830: “The conclusion…must be that the Respondent became aware of the registration of the trademark and registered the disputed domain name to extract as much financial benefit from this act as it could.” The Complainant suggests that this is what the Respondent has done. But the Complainant provides no evidence to support this. There is no evidence that the Respondent “became aware” of the Complainant’s mark and sought to extract any benefit from confusion with it.

Secondly, the Complainant attaches results of a Google search, which is says shows “DECAL S.P.A. [the Complainant] is placed in the first position”. The suggestion is clearly that the Respondent should have been aware of the Complainant. The Respondent makes a number of points in response, including that the Complainant used G rather than G for its search (thereby avoiding results relating to the English meaning for the word “decal”) and that the Complainant deliberately deleted search results (otherwise attached as evidence to the Complainant) that were not favorable to its case.

It also appears relevant to the Panel that the general use of a Google search itself seems to postdate the registration of the disputed domain name. As noted above, the disputed domain name was first registered in 1996. Google, Inc. was first founded as a company in 1998. The Complainant’s evidence of a Google search is not dated. But the Panel has assumed that it was, at least, done from some time shortly before the Complaint was filed. What is missing from the Complaint, therefore, is any real evidence that the Respondent was or should have been aware of the Complainant when the disputed domain name was registered. Even despite this, the Complainant’s evidence is simply not persuasive that the Respondent should have been aware of the Complainant prior to the filing of the Complaint.

Thirdly, the Complainant suggests that the Respondent has acted in bad faith because it used a proxy service (Moniker Privacy Services) to conceal its identity in the Whois record. It is true that the use of a privacy service may, in combination with other circumstances, be suggestive of bad faith. (This much is made clear in extracts from cases which the Complainant itself cites, e.g., Fox News Network, L.L.C. v. C&D International Ltd. and Whois Privacy Protection Service,WIPO Case No. D2004-0108.) But the Complainant has failed to demonstrate such other circumstances.

D. Reverse domain name hijacking

The Respondent asks for, and the Panel makes, a finding that the Complaint was brought in bad faith. “Allegations of reverse domain name hijacking have been upheld in circumstances where a respondent’s use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy.” See Rohl, LLC v. ROHL SA,WIPO Case No. D2006-0645.

The Panel makes its findings of reverse domain name hijacking for similar reasons. The Complainant should have known its case was fatally weak, in relation to the second and third elements of the Policy. It seems plain that the Complainant, had it properly understood what was required, would have understood that it could not make its case.

The Respondent has a long-standing registration of a domain name with a generic meaning, and uses it in that connection. This is evident from the nature of the Respondent’s website. The Complainant lacked any credible evidence of bad faith registration and use of the domain name.

Moreover, it is significant that the disputed domain name was registered before the Complainant acquired registered trademark rights. As relevantly noted by the Panel in Dreamgirls, Inc. v. Dreamgirls Entertainment,WIPO Case No. D2006-0609:

“where the Domain Name was registered prior to the establishment of trademark rights, bad faith registration usually will not be found and the Complaint usually will fail. That principle is so well established that it is among the twenty issues covered in the WIPO Decision Overview for which a consensus has been identified. When a Complainant files a UDRP Complaint that fails to heed this consensus, [reverse domain name hijacking] has been found. Primal Quest, LLC v. Gabriel Salas, WIPO Case No. D2005-1083.”

The Complainant is represented by Counsel and demonstrates that it has researched the Policy and cases relating to it (even if mistakenly applied). As such, the Complainant should have considered, and appreciated, basic principles relating to the Policy. Had it done so, the Complaint could not reasonably have been maintained.

7. Decision

For all the foregoing reasons, the Complaint is denied. The Panel finds that the Complaint was brought in bad faith and thus constitutes reverse domain name hijacking.

James A. Barker
Sole Panelist

Dated: June 11, 2008

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