WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Ville de Paris v. Jeff Walter Case No. D2009-1278 1. The Parties
The Complainant is Ville de Paris of Paris, France, represented by Nataf Fajgenbaum & Associés, France.
The Respondent is Jeff Walter of Fremont, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GKG.NET, INC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2009. On September 28, 2009, the Center transmitted by email to GKG.NET, INC. a request for registrar verification in connection with the disputed domain name. On September 28, 2009, GKG.NET, INC. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 30, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 20, 2009. The Response was filed with the Center on October 12, 2009.
The Center appointed Andrew Frederick Christie as the sole panelist in this matter on October 26, 2009. 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 Complainant, Ville de Paris (in English, “City of Paris”), is a territorial authority and the administrative capital city of the French territory. It is a body having legal personality, in charge of providing many public services and utilities in the city of Paris. On March 27, 2002 the Complainant obtained French trademark registration No. 02 3 156 011 for PARVI for “communications by computer terminals (Internet)” in international class 38, and French trademark registration No. 02 3 156 012 for PARVI PARIS VILLE NUMERIQUE (semi-figurative) for “computerized file management; communications by computer terminals (Internet)” in international classes 35 and 38. Since that time, the Complainant has used these trademarks in relation to the provision of Wi-Fi services and the development of Internet coverage in Paris. The Complainant has also these trademarks in connection with programs promoting Paris as a location for communication and information technology industries, and promoting the Complainant's own open source software.
The Respondent registered the disputed domain name on June 1, 2006. On September 12, 2006 and again on November 20, 2006, the Complainant wrote to the Respondent asserting that the Respondent's registration of the domain name constituted an unlawful infringement of its intellectual property rights under the French Intellectual Property Code, and requesting that the Respondent cease use of the name PARVI and transfer the disputed domain name to the Complainant. The Respondent replied by email on November 21, 2006, stating that he had registered the disputed domain name in good faith, without any knowledge of the Complainant's trademarks, because “parvi” means “small” in Latin and he intended to use the domain name in respect of a social networking site he was developing. He offered to place a notice and link on his site directing users to the Complainant's website. On November 29, 2006 the Respondent sent a letter to the Complainant repeating the substance of his email and providing arguments as to why he was not infringing the French Intellectual Property Code.
The Complainant responded on January 17, 2007 and again on November 22, 2007, stating that it “understood the registration of you (sic) domain name was accomplished with no intention of causing any confusion”, but that the registration of the domain name nevertheless infringed its trademark rights. The Complainant proceeded to state that “the Ville de PARIS has however agreed you would place, as you are offering – on the home page of your website – a link to the Ville de PARIS' website and a notice that would inform users your website is not affiliated to the Ville de PARIS”. The Complainant's letter then stated: “According to the rights from both hereunder mentioned trademarks, you would accept to recognize the Ville de PARIS, a preferential privilege in case of a transfer – of any kind – of your domain name.” The Complainant's letter concluded by stating that it would commence legal proceedings if it received no response within 15 days following receipt of its letter.
The Respondent replied to this communication on November 22, 2007, stating that he had changed plans for use of the disputed domain name, and now proposed to use it for a website dedicated to open source software projects. The Respondent requested that the Complainant place on its website a disclaimer of association with the Respondent and a link back to the Respondent's website. In addition, the Respondent stated “in consideration of your office's request for preferential privilege in the case of any kind of transfer of , I would require the same preferential privilege in the case of any kind of transfer of “” and/or “”.” The Respondent concluded by requesting immediate notification of whether these terms were acceptable, with a view to completing a contract recording the agreement.
The Complainant responded on July 31, 2009, again asserting that the Respondent had infringed its rights under the French Code of Intellectual Property, and requesting that the Respondent immediately undertake to cease use of the name PARVI and “freely transfer” the disputed domain name to it. The Respondent replied on August 3, 2009, stating that he could not be infringing the Complainant's rights because the Complainant did not have a trademark registration for PARVI in the United States of America, and concluding that he expected to receive no further correspondence on the matter. The Complainant subsequently filed this Complaint on September 25, 2009. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its PARVI and PARVI PARIS VILLE NUMERIQUE trademarks.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name because, before notice of this dispute, there was no use of the domain name by the Respondent in connection with a bona fide offering of goods or services, and the Respondent was not commonly known by the domain name and had acquired no trademark or service mark rights to “parvi”.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith, because the Respondent shows intention to harm the Complainant by setting up a website whose subject directly competes with the Complainant's PARVI trademarks and programs under those trademarks. The Respondent's claim that he registered the disputed domain name to use it for a small social networking website because “parvi” is the Latin word for “small” is unconvincing, because the correct word for “small” in Latin is “parvus” not “parvi”. The Respondent decided to use the domain name for a computer-related website upon learning of the Complainant's PARVI programs, when the Complainant first communicated with the Respondent. The fact that the Respondent's website was last modified on November 6, 2008 (i.e. almost one year ago) demonstrates that the Respondent never had a bona fide intent to use the website, and that the Respondent seeks to disrupt the Complainant's public interest activities. B. Respondent
The Respondent contends that the likelihood of confusion between the disputed domain name and the Complainant's PARVI trademark “is non-existent”, and that the Complainant's PARVI PARIS VILLE NUMERIQUE trademark “does not apply to the domain name on grounds that the parts which make up a trademark cannot be separated and applied as the [owner] sees fit”.
The Respondent contends that he has rights and legitimate interests in the disputed domain name because, prior to receiving notification from the Complainant, he was preparing to use the domain name for a small social networking website. The Respondent decided to move his open source software projects to the disputed domain name “due to the eventually (sic) domination of social networking sets by MySpace and Facebook”. The Respondent's main software offering is an open source patch that alters the open source Linux kernel to support older, and otherwise virtually unsupported, Sun Cobalt series of servers, which constitutes a bona fide offering of a good. The Respondent is commonly known by the domain name within the Sun Cobalt community.
The Respondent contends he did not register and is not using the domain name in bad faith, because he did not register it with intent to sell, rent or transfer it for profit. The Respondent chose “parvi” (which is Latin for “small”) to represent his website due to a desire for the website to remain small. The Respondent has been involved with Internet and software related activities since 1991, and so it is not surprising, nor malicious, that he would create a website for these activities. The website at the disputed domain name has not been modified since November 6, 2008, but the software offered at the website has been updated since then. The Respondent and the Complainant are not competitors.
The Respondent requests that this Panel make a finding of reverse domain name hijacking, because in all but one correspondence to the Respondent the Complainant states it will issue legal proceedings if its requests are not met, that being “a clear indication of their desire to file suit against the Respondent”. 6. Discussion and Findings A. Identical or Confusingly Similar
As a general rule, the TLD identifier of a domain name is disregarded when considering its identicalness or similarity to a trademark. Adopting that approach, this Panel finds that the disputed domain name is identical to the Complainant's trademark PARVI. This Panel does not need to, and therefore does not, make a finding on whether the disputed domain name is confusingly similar to the Complainant's trademark PARVI PARIS VILLE NUMERIQUE. B. Rights or Legitimate Interests
The Complainant has established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent's assertion that he registered the domain name for use with a proposed social networking website is not supported by evidence and is not inherently plausible. The Latin word for “small” is not “parvi” (as contended by the Respondent), but “parvus” (as contended by the Complainant) – see, e.g., James Morwood (Ed.), The Pocket Oxford Latin Dictionary, Oxford University Press, Oxford Reference Online (date accessed November 19, 2009). Even if it is accepted that “parvi” is a Latin word meaning “small”, it is not self-evident why: (i) a Latin word would be used as the domain name for a social networking website, and (ii) a word meaning “small” would be used as the domain name for a social networking website. In any event, the Respondent did not show “demonstrable preparations to use” the disputed domain name for the asserted purpose. The Respondent's assertion that he is known by the disputed domain name within the Sun Cobalt community also is not supported by evidence and is not inherently plausible. Thus, the Respondent has not been able to show any of the circumstances that are specified in paragraph 4(c) of the Policy as being evidence of rights or legitimate interests in the domain name. This Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
(i) Reconsideration of the bad faith requirement
The third requirement of the Policy, set out in Paragraph 4(a)(iii), is that the Complainant must prove that the disputed domain name “has been registered and is being used in bad faith”. This requirement has been the subject of important reconsideration in recent times by panels adjudicating disputes under the Policy. In three recent decisions – City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE,WIPO Case No. D2009-0643, Phillip Securities Pte Ltd v. Yue Hoong Leong, ADNDRC Decision DE-0900226, and Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions,WIPO Case No. D2009-0786, hereafter referred to as the “Octogen trio of cases” – a distinguished panelist undertook a comprehensive and careful review of the Policy's language, and of previous decisions under the Policy, to determine whether the Policy's requirement of registration and use in bad faith can be satisfied where the disputed domain name may have been registered in good faith but subsequently has been used in bad faith. The panelist in the Octogen trio of cases expressed the view that, based on a close reading of the decision in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, “bad faith registration can be deemed to have occurred even without regard to the state of mind of the registrant at the time of registration, if the domain name is subsequently used to trade on the goodwill of the mark holder”. Section 2 of the Policy was considered to provide support for this interpretation. Section 2, entitled “Your Representations”, provides in part: “[Y]ou will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name infringes or violates someone else's rights.” According to the panelist in the Octogen trio of cases, this provision not only imposes a duty on the part of the registrant to conduct an investigation at the time of registration, “but also includes a representation and warranty by the registrant that it will not now or in the future use the domain name in violation of any laws or regulations”. Thus, even though a party may register or acquire a domain name in good faith, if it “uses the domain name in the future so as to call into question the party's compliance with the party's representations and warranties, this may be deemed to be retroactive bad faith registration”. A subsequent panel has adopted essentially the same reasoning, to reach essentially the same conclusion: Denver Newspaper Agency v. J LLC, NAF Claim No. 0908001282148.
The issue addressed in the Octogen trio of cases is profound, and the panelist addressing them is distinguished. This Panel therefore feels compelled to give close consideration to the analysis set out in those cases. Having done so, this Panel respectfully agrees, in general terms, with the interpretation of the Policy adopted in the Octogen trio of cases. This Panel sees such interpretation as a logical and incremental evolution of panel thinking in light of broader developments within the domain name system, and also one with firm foundations in decisions rendered in the earliest days of the Policy. The reasons for this conclusion are explained below.
The fundamental question that arises for determination can be stated simply: does the absence of bad faith intent by the respondent at the time of acquisition of the disputed domain name inevitably preclude the complainant from succeeding under the Policy, even though the respondent has subsequently used the domain name in bad faith? In this Panel's view, the answer to that question is provided by the express terms of the Policy itself, and that answer is “no”. Like the panelist in the Octogen trio of cases, this Panel finds guidance in answering this question from the analysis and reasoning adopted in the Telstra decision. In Telstra it was noted that, of the four (non-exclusive) scenarios deemed by Paragraph 4(b) of the Policy to be “evidence of registration and use of the domain name in bad faith”, only one of these scenarios – the one described in Paragraph 4(b)(iv) – describes an actual use of the domain name. The other three scenarios describe purposes for which the domain name was registered. As the panelist in the Octogen trio of cases insightfully noted, this fact is relevant not only to the issue under consideration in Telstra – which was whether a passive holding of the domain name following a bad faith registration could satisfy the Paragraph 4(a)(iii) requirement – but also to the issue under consideration in the Octogen trio of cases: namely, whether a bad faith use of a domain name following a non-bad faith acquisition could satisfy the Paragraph 4(a)(iii) requirement. It is relevant to the latter issue because it shows that the Policy expressly deems one particular scenario to be “registration and use of the domain name in bad faith” even though that scenario makes no mention of the mental state of the registrant at the time of acquisition of the domain name. The Policy expressly states that the Paragraph 4(b) scenarios are “without limitation” – that is, the Policy makes clear that there can be other scenarios that are also evidence of registration and use in bad faith. It follows, therefore, that the Policy expressly recognizes that the Paragraph 4(a)(iii) requirement of bad faith can, in certain circumstances, be satisfied where the respondent has used the domain name in bad faith, even though the respondent may not have been acting in bad faith at the time of acquisition of the domain name.
In this Panel's view, this outcome should not be considered surprising or undesirable. The intent of the Policy is to provide a fair and efficient mechanism for trademark owners to obtain redress in situations where their trademark rights are abused as a result of bad faith activities of domain name registrants. There seems no reason in logic or in principle why the availability of redress should be confined to situations where bad faith is present at the time of acquisition of the domain name. To limit the trademark owner's redress in this way would result in outcomes that make no sense. In particular, it would mean that even the most damaging abuse of a trademark right through the most egregious bad faith use of a domain name would be immune from remedy under the Policy so long as the registrant was not acting in bad faith when the domain name was acquired. It would, in short, give a “green light” to good faith domain name registrants to later abusively use their domain names, safe in the knowledge that any such bad faith use could not provide the basis for a successful action under the Policy.
The Policy itself expressly recognizes that, where the disputed domain name is identical or confusingly similar to the complainant's trademark and the respondent has no rights or legitimate interests in the domain name, in certain circumstances bad faith use of a domain name alone is sufficient to entitle the complainant to a remedy. The Policy describes, in Paragraph 4(b)(iv), one instance of such circumstances. Other instances of such circumstances may be found by a panel, on consideration of all the facts before it.
In summary, it seems clear to this Panel that the intent and effect of the Policy is that the requirement of Paragraph 4(a)(iii) can, in certain circumstances, be met where the respondent has used the domain name in bad faith even though it may have been acquired in good faith. As the Telstra decision states, “the relevant issue is … whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith”.
(ii) Application of the bad faith requirement to this case
There is insufficient evidence on the record for this Panel to find, on the balance of probabilities, that the Respondent registered the disputed domain name in bad faith. Although it is certainly possible that the Respondent was aware of the Complainant's PARVI trademark, and of the Complainant's programs under that trademark, at the time the Respondent registered the domain name, this seems unlikely given the different geographical locations and native languages of the Complainant and the Respondent. Thus, this Panel is not satisfied, on the present record, of the probability that the Respondent registered the disputed domain name with the intention of benefiting from the Complainant's PARVI trademark.
For the reasons explained above, however, this finding does not resolve the dispute. Rather, it is necessary for this Panel to determine whether, in all the circumstances, the Respondent is acting in bad faith. The evidence on the record leads this Panel to conclude that, on the balance of probabilities, the Respondent is acting in bad faith. The reason for this conclusion is as follows.
The Respondent's initial response to the Complainant's cease-and-desist demand was to indicate that the domain name would be used for a particular type of website that was not in any way related to the subject matter of the programs operated by the Complainant under its PARVI trademark, and to offer to place a link on his website directing users to the Complainant's website. The Complainant indicated that this would be acceptable, but only so long as the Respondent also included a disclaimer of association with the Complainant and gave the Complainant a “preferential privilege” in the event of transfer of the domain name (in effect, an option to acquire the domain name). At that point, the Respondent decided to use the disputed domain name for a website concerned with subject matter related to programs operated by the Complainant under its PARVI trademark. In addition, the Respondent made settlement of the dispute conditional on the Complainant providing a link to the Respondent's website, a disclaimer of association, and a “preferential privilege” in the event of transfer of the Complainant's domain names. The Respondent's decision to change the intended use of the disputed domain name to a use that could cause confusion with, and disruption to, the Complainant's activities, and the Respondent's demand that the Complainant provide it with an option to acquire the Complainant's domain names, were actions by which the Respondent sought to use its registration of the disputed domain name to derive a benefit from the Complainant's trademark. Given that the disputed domain name is identical to the Complainant's trademark and that the Respondent has no rights or legitimate interests in the disputed domain name, this Panel is satisfied that those actions were undertaken in bad faith. Accordingly, this Panel finds that the Complainant has satisfied the requirements of Paragraph 4(a)(iii) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Andrew F. Christie
Sole Panelist
Dated: November 19, 2009
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