WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Salmi Oy v. PACWEBS Case No. D2009-0040 1. The Parties
Complainant is Salmi Oy of Äetsä, Finland, represented by Attorneys at law Borenius & Kemppinen Ltd., Finland.
Respondent is PACWEBS of New South Wales, Australia, represented by Philip Doble, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 14, 2009. On January 14, 2009, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On the same date, Tucows Inc. transmitted by email to the Center its verification response. In response to a notification by the Center on January 21, 2009 that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on January 23, 2009. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on January 26, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 15, 2009. The Response was filed with the Center on February 14, 2009.
The Center appointed Richard G. Lyon as the sole panelist in this matter on February 24, 2009. The Panel finds that it was properly constituted and has jurisdiction over this administrative proceeding. The Panel has submitted his 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
Complainant is a long-time leading supplier of zippers that are used for sport, work, and leisure wear. Based in Finland, Complainant is an international business with customer service centers around the world. It has registered the trademark SALMI for zip fasteners in many countries, among them Canada, Finland, Hungary, India, Korea, the United States of America, and Viet Nam. The earliest registration date is 1989.
Respondent, a domain name aggregator based in New South Wales, Australia, registered the disputed domain name in May 2000.
The parties have corresponded sporadically since 2002 regarding a possible sale of the disputed domain name by Respondent to Complainant. In 2002 Respondent or a representative of Respondent offered to sell the disputed domain name to Complainant for USD 1190. In subsequent correspondence in 2005-2008, the parties exchanged offers, with Respondent's last price at USD 6340. Complainant declined to purchase the disputed domain name at this amount. 5. Parties' Contentions A. Complainant
The Panel summarizes Complainant's contentions as follows:
Complainant has rights in its SALMI mark by reason of its registration in many countries. The disputed domain name is identical to this mark except for the generic top-level domain.
Complainant has never licensed Respondent to use its mark. Respondent has never been known in any capacity by the word salmi. Respondent has never put the disputed domain name to any use. If the disputed domain name is entered as the search term in a Google search, an Internet user is directed to a page that includes a number of links, some of which are in Finnish and some of which offer opportunities to advertise on this website. While it is unclear whether this website has any connection to Respondent, it cannot create any legitimate interest in the disputed domain name.
Complainant had established trademark rights in the word salmi long before Respondent registered the disputed domain name, suggesting that Respondent was aware of Complainant and its rights in that mark at the time of registration. Respondent's subsequent offers to sell the disputed domain name are further indications that he acquired it with an intent to sell it. His offers to sell it to Complainant for amounts well in excess of its registration costs constitutes bad faith under the example given in paragraph 4(b)(i) of the Policy.
Respondent has been engaged in a pattern of conduct precluding trademark owners from reflecting their marks in domain names; it was the respondent in Hexion Specialty Chemicals GmbH v. Pacific Webs Pty Ltd.,WIPO Case No. D2005-1272. “Although the Complaint in that case was denied, it clearly supports the finding that the Respondent registered large swathes of domain names for resale with no attention whatsoever to whether they may be identical to trademarks.” B. Respondent
The Panel summarizes Respondent's contentions as follows. Text in quotation marks is taken from the Response.
The word salmi in the English language is “a generic word” that refers in cookery to a particular genre of meat-based dishes. Respondent in 2000, as it is today, buys “generic” names for the purpose of resale. All correspondence regarding possible sale of the disputed domain name to Complainant was initiated by Complainant, not Respondent, and so does not indicate any bad faith. As a generic word salmi is not associated exclusively with Complainant. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires Complainant to demonstrate that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The third clause of paragraph 4(a) has two separate parts; Complainant must demonstrate registration and use in bad faith. To establish registration in bad faith, Complainant, which bears the burden of proof under each Policy element, must ordinarily show that the registration was undertaken with knowledge of Complainant and its mark, Janet E. Sidewater v. Worldwide Media Inc.,WIPO Case No. D2006-1281 and that Respondent “targeted” Complainant. Gold Medal Travel Group plc v. Damir Kruzicevic,WIPO Case No. D2007-1902. Given the nature of Policy proceedings, with no discovery or witness confrontation, this may be proven inferentially. Net2phone Inc v. Delta Three Inc.,WIPO Case No. D2007-0644 fn. 8-12. That is true in this case, as Respondent here has expressly denied actual knowledge.
The facts are more or less undisputed. Respondent regularly buys and sells domain names, often choosing domain names consisting of common words from the English language whenever they are available. Respondent registered the disputed domain name in 2000. At that time Complainant had trademark rights in a number of countries, but not in Australia, Respondent's country of residence. Complainant does not allege that its SALMI mark is famous in the trademark sense, Respondent does not compete against Complainant, and nothing on the website maintained at the disputed domain name betrays knowledge of Complainant or its mark. Respondent's denial of knowledge is thus credible on its face.1 Unless knowledge of the mark and intent to profit from its exploitation as a mark may be inferred from Respondent's subsequent actions, the Complaint must fail. Complainant points to two such incidents as evidence of registration in bad faith, each corresponding to one of the examples of bad faith set out in paragraph 4(b) of the Policy.
The first of these is Respondent's various offers to sell the disputed domain name to Complainant. The first offer occurred in 2002, two years after registration. Respondent states that Complainant initiated these sale negotiations. The 2002 correspondence is incomplete, but according to the emails attached to the Complaint all subsequent inquiries did begin with Complainant, lending some support to Respondent's assertion. Complainant bears the burden of proof on this Policy element, and without proof of an unsolicited offer from Respondent the Panel cannot find that this conduct comes within the example of bad faith given in paragraph 4(b)(i) of the Policy.2 Regularly buying and selling domain names is not in and of itself illegitimate or indicative of bad faith. Gigglesworld Corporation v. Mrs Jello,WIPO Case No. D2007-1189.
Complainant next points to another Policy proceeding brought against Respondent for conduct said to be identical to that which Complainant objects here. Hexion Specialty Chemicals GmbH v. Pacific Webs Pty. Ltd.,WIPO Case No. D2005-1272, involved the domain name . The Hexion Specialty case indeed has many parallels to this proceeding, but none that aids Complainant. Both proceedings involve the same respondent, both disputed domain names were not trademark-famous but were everyday English words, and there was no trademark registration in Respondent's home jurisdiction. As Complainant concedes, the complaint in that case was denied, the panel there basing its denial upon complainant's failure to establish registration in bad faith. The Hexion Specialty case serves as evidence only of something that is conceded in the Response, that Respondent is an aggregator and seller of domain names. As precedent the panel's holding in that case supports Respondent, not Complainant.
Complainant argues that Hexion Specialty shows the “pattern of [] conduct” required to establish bad faith under paragraph 4(b)(ii) of the Policy.3 When as here the registrant of the disputed domain name regularly buys and sells large numbers of domain names for advertising or resale, willful blindness may be a basis for finding registration in bad faith. Sprunk-Jansen A/S v. Chesterton Holdings,WIPO Case No. D2006-1080; Mobile Communication Service Inc. v. Webreg, RN,WIPO Case No. D2005-1304. The factual showing needed to make out a “pattern” varies with the circumstances of the case, and there is no clear consensus on controlling factors. Panels have considered number of transfers,4 general frequency of cases commenced,5 procedures implemented to prevent inadvertent registration of others' marks, among other things. Never to this Panel's knowledge, however, has one other case, and that a case in which Respondent prevailed substantially on grounds argued here,6 constituted a “pattern” of conduct, or even part of a pattern. It is difficult to square one of anything with the word pattern.
Complainant has not proven on the present record that Respondent registered the disputed domain name in bad faith. The Policy's requirements are conjunctive, so the Complaint must be denied. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Richard G. Lyon
Sole Panelist
Dated: March 4, 2009
1 The mere existence of Complainant's trademark rights at the time Respondent registered the disputed domain name does not, as Complainant argues, create any presumption of knowledge. The doctrine of constructive notice (applicable in United States trademark law) has been almost uniformly rejected in UDRP proceedings, particularly when (as here) the parties reside in jurisdictions other than the United States. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 3.4.
2 Bad faith may be found if “circumstances indicat[e] that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.”
3 Paragraph 4(b)(ii) provides as an example of bad faith that “you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct.”
4 E.g., Mobile Communication Service Inc. v. WebReg, RN, supra; Centron GmbH v. Michele Dinoia,WIPO Case No. D2006-0915.
5 E.g., United Consumers Club, Inc. v. Texas International Property Associates,WIPO Case No. D2007-0987; Eurial Poitouraine v. Compana LLC,WIPO Case No. D2004-0270.
6 Compare Janet E. Sidewater v. Worldwide Media Inc., supra (Five cases cited, respondent successful in all; panel found no pattern).
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