WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Moneyweek France v. Micah Smurthwaite Case No. D2010-0529 1. The Parties
The Complainant is Moneyweek France of Paris, France, represented by Markplus International, France.
The Respondent is Micah Smurthwaite of Fairfield, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with CSL Computer Service Langenbach GmbH dba J. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2010. On April 8, 2010, the Center transmitted by email a request for registrar verification in connection with the disputed domain name. On April 9 2010, CSL Computer Service Langenbach GmbH dba J 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 April 16, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 6, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 7 2010. On May 17, 2010, the Center received an informal email communication from the Respondent.
The Center appointed Leon Trakman as the sole panelist in this matter on May 28, 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 is a company that provides financial information and advice.
The Complainant was at one time the owner of the domain name , the transfer of which was secured by a deed of assignment of trademarks and domain names from its initial owner, La Vie Financiere, to the Complainant, MoneyWeek France, on May 13, 2009. According to records submitted by the Complainant from the Internet Archive at “”, the website at the domain name was operated by the prior rights owner, La Vie Financiere, in 2001, 2004 and 2008.
The Complainant is also the owner of the following trademarks: LA VIE FINANCIERE and design, registered on April 7 1999, renewed in 2009; LA VIE FINANCIERE registered on July 21, 1999 and renewed in 2009; and LA VIE FINANCIERE and design registered on October 5, 1999 and renewed in 2009.
In addition, the Complainant is the owner of the following domain names:
and registered on July 18, 2000;
and registered on August 12, 2005;
registered on March 12, 2003.
All the domain names above are currently directed to the same active website at which the Complainant provides details of its business in offering financial services and advice.
The Respondent purchased the disputed domain name on August 8, 2009 which was at that time under the status pending delete. 5. Parties' Contentions A. Complainant
The Complainant alleges that the disputed domain name is identical or confusingly similar to a trademark and service mark in which the Complainant has legal rights; that the Respondent has no rights or legitimate interests in respect of the domain name; and that the Respondent registered and used the disputed domain name in bad faith. B. Respondent
The Respondent did not formally reply to the Complainants contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is both identical to and confusingly similar to a trademark or service mark in which the Complainant has protected legal rights. The disputed domain name is composed exclusively of the distinctive words “La Vie Financiere” in which the Complainant has trademark rights, and the non-distinctive generic extension “.com”. According, the Panel finds that the first element under paragraph 4(a) of the Policy has been met. B. Rights or Legitimate Interests
In this Panel's view, taking into consideration all of the evidence presented in the current record, the Respondent has no rights to or any legitimate interests in the name La Vie Financiere. The Respondent appears to have no prior business in which goods or services have been offered under the disputed domain name. Furthermore, since its date of purchase, the disputed domain name has been directed to a parking website hosted by SEDO, on which pay-per-click links are displayed and where the domain name is offered for sale.
The Panel finds that the Complainant has thus established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and, although provided with an opportunity to reply, the Respondent has not produced any evidence to demonstrate its rights. The Respondent's sole reply to the Complaint consisted of a brief email in which it indicated that it believed the terms in the disputed domain name were generic, and that it felt “[g]eneric keyword domain investing” was a legitimate use of the domain name.
The Panel finds the Respondent's comments to be unconvincing, and far short of a demonstration that the Respondent possesses concrete rights or legitimate interests in the disputed domain name. The Respondent has provided no evidence to support its claims. Accordingly, the Panel finds that the second element under paragraph 4(a) of the Policy has been met. C. Registered and Used in Bad Faith
The issue as to whether the Respondent both registered and used the disputed domain name in bad faith is based primarily on evidence of the actual conduct of the Respondent or conduct reasonably imputed to the Respondent. However, evidence of a respondent's bad faith “use” of a domain name may also depend on the actual or reasonably inferred conduct of the complainant in relation to that respondent. As a result, it is sometimes necessary to examine the conduct of both the complainant and the respondent in such cases in order to determine whether the respondent “registered” and “used” the disputed domain name in bad faith.
According to the facts, on August 26, 2009, the Complainant wrote to the Respondent drawing to the Respondent's attention the Complainants prior trademark rights and requesting transfer of the disputed domain name to the Complainant. The Respondent responded that same day offering to sell the domain name to the Complainant if “you [the Complainant] can cover my [the Respondent's] costs of $900.” The Complainant's requested that the Respondent justify these costs. The Respondent did not reply; nor did the Respondent respond to the follow up email which the Complainant sent to the Respondent.
On October 13, 2009, the Complainant sent the Respondent a “cease and desist” letter by e-mail and by registered post (the latter was not claimed). That letter was followed by several offers by the Complainant to purchase the disputed domain name from the Respondent. The Complainant's first offer was for USD 300. The Complainant's second offer was for USD 500. On November 3, 2009 the Respondent replied requesting USD 18,000.
The Complainant responded that the maximum it would pay for the disputed domain name was US$910 as an “amicable settlement”. The Respondent did not reply to that communication or to several subsequent reminders from the Complainant.
In initiating negotiations with the Respondent over the price of the disputed domain name, it could be argued that the Complainant was merely disputing the difference between the amount the Complainant was willing to pay for the domain name and the amount the Respondent was willing to accept, rather than evidence of the bad faith of the Respondent in registering and using the disputed domain name. However morally reprehensible the Respondent's negotiating tactics may have been in failing to respond to the Complainant's “cease and desist” correspondence and Complainant's ensuing offers to purchase the disputed domain name, in this Panel's view such conduct by itself falls short of a bad faith registration and use of that name. See Pony Express U.S.A.. Inc. v. Servlet, Inc./Bruce Cornett, WIPO Case No. D2004-0241 (). In discharging its burden of proof, the Complainant needs to adduce more palpable evidence of bad faith than the Respondent's willingness or unwillingness to negotiate over the sale of the disputed domain name.
This Panel further believes that the Respondent was also not necessarily in bad faith in refusing to transfer the domain name to the Complainant solely on account of Complainant's assertion that the Complainant had a trademark right that required the transfer to it of the disputed domain name. This Panel feels the Respondent may have been justified in initially responding to the Complainant that the Respondent regularly purchased domain names and that doing so was not per se unlawful.
In this Panel's view, the registration of a domain name with the intent to resell it at a profit may be evidence of bad faith in the appropriate circumstances, but does not in every case evidence bad faith under the Policy. The Panel finds that the instant case is distinguishable from cases in which the express purpose of the Respondent in purchasing a series of domain names was to target and sell those names to the holder of a famous brand, such as Yahoo! See Yahoo!, Inc. v. Somsak Sooksripanich and Others,WIPO Case No. D2000-1461, involving multiple disputed domain names including the prefix “yahoo” and suffix “.com”.
The instant case is distinguishable, too, from cases in which the Respondent purchased a domain name incorporating a famous brand name for the express purpose of selling it the party identified with that famous name. See Alstom v. Cameron Jackson, WIPO Case No. D2007-1022, involving multiple disputed domain names including the prefix “alstom.” The Complainant has not adduced evidence that this is the case here.
Notwithstanding the above, the Panel finds there is nevertheless sufficient evidence to find that the Respondent both registered and used the disputed domain name in bad faith.
The Panel finds it can be reasonably inferred that the Respondent was in bad faith in registering the dispute domain name for the sole purpose of reselling it to someone who would pay substantially more than the cost of such registration. While the Complainant has not established that the Respondent sought to target the Complainant in particular for resale, it is reasonable to infer that the Respondent was aware of the Complainant's name at the time of registration, whether or not the Respondent could pronounce the disputed domain name correctly in French. It is also reasonable to infer that the purpose of the Respondent in registering the disputed domain name was not to use it, but to resell it to the party whose commercial interests were most significantly affected by its registration, namely, the Complainant.
Secondly, there is prima facie evidence of the Respondent's bad faith use of the disputed domain name in his initial request for USD 900 from the Complainant “to cover my [its] costs” in response to the Complainant's disclosure if its prior trademark rights and Complainant's request for the transfer to it of the disputed domain name. The Respondent's bad faith use is further accentuated in its failure subsequently to identify the nature of its costs in light of the Complainant's reasonable request for an explanation as to the nature of those costs. In the absence of an explanation, it is reasonable to assume that the Respondent's costs in purchasing the domain name were substantially less than USD 900. It is also reasonable to infer that, in ignoring the Complainant's reasonable request for information as to the source of those costs, the Respondent could either not reasonably justify them or chose not to do so in bad faith. In such circumstances, the Respondent's bad faith use of the disputed domain name consists of his unreasonable attempt to secure a substantial amount of money based on a doubtful and unsubstantiated contention that he was merely attempting to recoup his costs from the Complainant. The Respondent's bad faith “use” is embodied either in the fact that he unreasonably misrepresented his costs to the Complainant, or that he was unwilling to disclose those costs in good faith to the Complainant in a negotiating process that called for such a reasonable disclosure. Had the Respondent provided the Complainant with a reasonable explanation for those costs, the Respondent this Panel may have decided in favor of the Respondent.
It is well established in law that efforts by a Respondent to extract exorbitant sums of money, well in excess of the cost to it of purchasing a disputed domain name, may constitute evidence of its bad faith registration and use of that name. See Posco Steel Service & Sales Co., Ltd. v. Byung Ok, Ji , WIPO Case No. D2000-0516 (). In the present case, it is reasonable to infer that the sum sought by the Respondent was exorbitant in the absence of the Respondent providing a reasonable explanation as to the source of its costs.
Additionally, the Panel notes that the disputed domain name appears to have been used, at all relevant times in this case, as a pay-per-click site from which the Respondent apparently derives revenue. As such, the Respondent has attempted to attract Internet users to its website for commercial gain, which is further evidence of its bad faith registration and use of the disputed domain name under paragraph 4(b)(iv) of the Policy.
The Panel's determination that the Respondent was in bad faith was not easily reached in this case. If a complainant enters into negotiations with a respondent to purchase a disputed domain name, that Complainant might under some circumstances risk being held to have “unclean hands”. A complainant must do more to establish that a respondent has used a disputed domain name in bad faith than adduce evidence that the respondent expressly or impliedly rebuffed the complainant's offers to buy that domain name. In light of all the circumstances, however, the Panel finds that the disputed domain name in this matter was both registered and used in bad faith in accordance with paragraphs 4(b)(iii) and 4(b)(iv) 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.
Leon Trakman
Sole Panelist
Dated: June 7, 2010
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