WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Exotiq Properties Ltd. v. David Smart Case No. D2009-1672 1. The Parties
The Complainant is Exotiq Properties Ltd. of Bali, Indonesia, represented by Cabinet Vidon – Marques & Juridique PI Dpt, France.
The Respondent is David Smart of Bristol, United Kingdom of Great Britain and Northern Ireland, represented by Traverse Legal, PLC, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2009. On December 11, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On December 11, 2009, GoD, 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 December 15, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 7, 2010. The Response was filed with the Center on January 7, 2010.
The Center appointed Michael J. Spence as the sole panelist in this matter on January 19, 2010. 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 operates websites associated with its business as a real estate broker. It has seven existing trade mark registrations including the word EXOTIQ and several pending. All of these include a device as well as the word EXOTIQ and several, except for an Indonesian registration and a Community Trade Mark (“CTM) on the trademark register of the Office for Harmonization of the Internal Market (OHIM), registration No. 004284444, registered February 23, 2006, post-date the registration of the disputed domain name. The Respondent operates a group of websites with domain names built around the word “naked” that generate affiliate revenue. In 2007, he registered the disputed domain name with the intention of creating a group of sites to generate affiliate revenue around the word “exotiq”. His stated intention is that these sites should operate in the fields of property, sex and gambling. 5. Parties' Contentions A. Complainant
The Complainant claims that the disputed domain name is identical or confusingly similar with its marks; that the Respondent has no rights or legitimate interests in the disputed domain name; that the Respondent must at the time of registration have known of the Complainant's marks; that his registration of the disputed domain name was therefore in bad faith; and that this is further evinced by his willingness to sell the disputed domain name to the Complainant. B. Respondent
The Respondent argues that the Complainant's marks all include material in addition to the word EXOTIQ and that the word itself, as descriptive, is not something in which the Complainant has any existing rights; that he has been preparing to establish a group of sites to generate affiliate revenue around the word “exotiq” for approximately two years and that he therefore has a legitimate interest in the use of the disputed domain name; that his registration of the disputed domain name pre-dates the registration of the Complainant's marks; that he was unaware of the Complainant's business at the time of registering the disputed domain name and that his registration cannot therefore have been in bad faith; and that his offer to sell the disputed domain name came only in response to an offer to purchase made by the Complainant and that it cannot therefore be taken as evidence of an intention to trade in an identical or confusingly similar mark. 6. Discussion and Findings A. Identical or Confusingly Similar
Noting that the word “exotiq” can be regarded as a phonetic rendering of the common dictionary word “exotic”, this Panel would expect that such a term would require considerable evidence of secondary meaning in order, without more, to become registrable as a trade mark, or indeed to be recognized as an unregistered trademark for the purpose of proceedings under the Policy. The Complainant has not presented any such evidence of secondary meaning in the relevant market in relation to the term “exotiq” in these Policy proceedings. The Complainant has however presented evidence of possessing trademark registrations for EXOTIQ (e.g., CTM registration No. 004284444 and Indonesian registration No. Bor.25146), which contain a figurative element (a flower appears to the left of the term “exotiq”. Accordingly, a question may arise as to whether these figurative marks (which do not seem to indicate disclaimers for the term “exotiq”) may satisfy the requirement that the Complainant show it has the relevant trademark rights for the term “exotiq,” apart from the graphic element. See e.g. Ville de Paris v. Salient Properties LLC,WIPO Case No. D2009-1279, and Minibar North America Inc. v. Ian Musk & GEMS Global Electronic Minibar Systems AS,WIPO Case No. D2005-0035.
However, in light of the Panel's finding under the second element, it is unnecessary for this Panel to consider that question further here or to make a determination of whether “exotiq” a sufficiently distinctive or dominant element of the Complainant's figurative mark such as to ground a finding whether the Complainant has trademark rights in the relevant term for the purposes of the present Policy proceedings. B. Rights or Legitimate Interests
It is for the Complainant to establish, at least prima facie that the Respondent has no rights or legitimate interests in the disputed domain name (Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455, Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110). Where a disputed domain name corresponds to a less distinctive mark or group of marks, this burden tends to be higher than it might otherwise be. Although each case must be assessed on its own merits and evidence, in general it is inherently more likely that a respondent may have a legitimate interest in using a more descriptive domain name. Given the phonetically descriptive nature of the term “exotiq”, the Respondent's evidence that it has indeed registered several other domain names containing the term “exotiq” (seemingly in combination with other descriptive terms such as “exotiqgirls”, “exotiqgirls”, “exotiqrentals.” the relatively scant evidence of distinctiveness provided by the Complainant, and the Respondent's prima facie plausible claim to a legitimate interest in the use of the name, the Panel finds that the Complainant has not discharged its burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name.
As further support for the Panel's finding, the Panel also notes the record includes an Office Action from the United States Patent and Trademark Office apparently sent to the Complainant in August of 2009 citing the refusal to register “exotiq” on the basis that it “merely identifies a characteristics or feature of applicant's identified goods” and setting a six-month deadline for the Complainant to respond before the application is abandoned. In this light, the Panel finds the Respondent's arguments as to the descriptive nature of the term “exotiq” to be plausible and in the circumstances finds that the Complainant has on balance failed in showing that the Respondent could rely on no legitimate interest related to the inclusion of the term “exotiq” in the disputed domain name.
In making this finding, the Panel does not necessarily exclude the possibility that the UK-based Respondent may have been aware of the Respondent's property business and its CTM registered mark EXOTIQ, but on balance the Panel finds it more likely than not on the provided recorded that the disputed domain name was registered for its descriptive rather than its trademark value.
The Panel therefore finds, on balance, that the Complainant has not established the second element of paragraph 4(a) of the UDRP Policy. C. Registered and Used in Bad Faith
Given the Panel's findings on the second element of paragraph 4(a) of the UDRP Policy, it is unnecessary to consider the issue of bad faith. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Michael J. Spence
Sole Panelist
Dated: January 25, 2010
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