The Complainant is IUNO Advokatpartnerselskab of Copenhagen, Denmark, represented by Anders Etgen Reitz, Denmark.
The Respondent is Angela Croom of Aurora, Colorado, United States of America. 2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with GoD, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 9, 2011. On May 9, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On May 9, 2011, 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 May 20, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 9, 2011. The Response was filed with the Center on June 9, 2011.
The Center appointed Tony Willoughby as the sole panelist in this matter on June 22, 2011. 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.
The Panel completed the above decision and submitted it to the Center for formatting on June 24, 2011. On June 28, 2011 the Complainant filed an unsolicited supplemental filing entitled “Supplementary Statement of Complaint”. The Panel has read it, but nothing in it gives the Panel any reason to change anything of substance in the decision. It does however contain a reply to the Respondent’s allegation of Reverse Domain Hijacking and the Panel has amended the decision to refer to that reply. 4. Factual Background
The Complainant is a Danish law firm which commenced business in early 2011. It selected the name “Iuno” as an abbreviation of the term “ius nordicum” the Latin for “nordic law”.
On February 25, 2011 it applied for registration of its name as a trade/service mark at the Danish Trade Mark registry. The registration came through on April 11, 2011. The registration covers various services in classes 35, 36 and 37. The Panel has not been provided with a translation of the specification, but assumes that it covers legal services.
The Respondent is a domainer, a dealer in domain names. The Domain Name was registered on February 9, 2000. She selected the name as “iUNO” meaning “internet uno”. For some years it has been connected to a parking page hosted by the Registrar. It also features as a domain name for sale on a website hosted by Sedo. The evidence on this is not entirely clear to the Panel, but the Panel is ready to accept for the purposes of this administrative proceeding that from time to time it has been on offer for sums varying from about USD 10,000 to USD 50,000. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical to its Danish trade/service mark and that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant contends that the Domain Name was registered and is being used in bad faith on the basis that the Respondent registered the Domain Name for the purpose of selling it at a substantial profit.
In its unsolicited supplemental submission of June 28, 2011 the Complainant repeats much of what is in the Complaint and responds to the allegation of Reverse Domain Name Hijacking. B. Respondent
The Respondent acknowledges that she is a dealer in domain names, but contends that this is a wholly misconceived Complaint as the Domain Name was registered a full 11 years prior to the Complainant’s adoption of its IUNO name and trade/service mark. Moreover, the use that the Respondent has made of the Domain Name has had nothing to do with the provision of legal services.
The Respondent contends that this is a flagrant case of Reverse Domain Name Hijacking. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondents have no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
If the Complaint fails, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence namely:
“If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes an abuse of the Administrative Proceeding.”
Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”. B. Identical or Confusingly Similar
The Domain Name comprises the Complainant’s trade/service mark and the generic ‘.com’ domain suffix. It being well-established that the generic ‘.com’ domain suffix may be ignored for the purpose of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, the Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights. C. Rights or Legitimate Interests
In light of the Panel’s finding under the next head, it is unnecessary for the Panel to address this issue. D. Registered and Used in Bad Faith
This is one of those cases where the domain name in issue was registered prior to the coming into existence of the Complainant’s trade/service mark. The matter is dealt with in paragraph 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”) as follows:
“3.1 Can bad faith be found if the disputed domain name was registered before the trademark was registered or before unregistered trademark rights were acquired?
See also the relevant section in the WIPO Legal Index.
Consensus view: Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date [see further paragraph 1.4 above], when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right.
However: In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This has been found to occur: shortly before or after a publicized merger between companies, but before any new trademark rights in the combined entity have arisen; or when the respondent (e.g., as a former employee or business partner, or other informed source) seeks to take advantage of any rights that may arise from the complainant's enterprises; or where the potential mark in question is the subject of substantial media attention (e.g., in connection with a widely anticipated product or service launch) of which the respondent is aware, and before the complainant is able to obtain registration of an applied-for trademark, the respondent registers the domain name in order to take advantage of the complainant's likely rights in that mark. (In all such cases, in order to have a chance to succeed in any filed UDRP complaint, the complainant must actually demonstrate relevant trademark rights, as these are a precondition for satisfying the standing requirement under the first element of the UDRP for rights in a mark.)
Furthermore: Irrespective of whether the domain name was registered before the relevant trademark was registered or acquired, a small number of panels have begun to consider the effect of the requirement of paragraph 2 of the UDRP, which states: "By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that . . . (d) you 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 registration infringes or violates someone else's rights." Some panels have regarded this as a warranty at the time of registration that the domain name will not be used in bad faith, finding that, by breaching such warranty, use in bad faith may render the registration in bad faith. Other panels have looked at the totality of the circumstances in assessing "registration and use in bad faith," as a unitary concept, given that some of the circumstances listed as evidence of bad faith registration and use in paragraph 4(b) of the UDRP appear to discuss only use and not registration. Still other panels that have considered these approaches have instead reaffirmed the "literal" interpretation of bad faith registration and bad faith use regardless of paragraphs 2 or 4(b) of the UDRP. This is a developing area of UDRP jurisprudence.”
The Complainant acknowledges that the Domain Name was registered 11 years prior to the Complainant’s adoption of its name and trade/service mark, but contends that the Domain Name was nonetheless registered in bad faith, the Respondent’s intention all along having been to sell the Domain Name at a substantial profit.
In support of this contention the Complainant cites 3 cases, namely:
SAP AG v. Hugo Hector Ferreyra,WIPO Case No. D2011-0073. In that case, as noted by the Complainant, the panel found that the respondent registered the domain name in issue with the intention of selling it to the Complainant at a profit. One very significant difference between that case and this one is that in that case the domain name in issue post-dated the complainant’s well-known trade mark and the respondent acknowledged that he had the Complainant’s trade mark in mind when he registered the domain name. In this case, self-evidently, the Respondent cannot have had the non-existent Complainant in mind at time of registration of the Domain Name.
Mowitania Wendt & Molitor GbR v. Eric Clermont,WIPO Case No. D2011-0052. In that case, as noted by the Complainant, the fact that the domain name in issue was registered before the complainant’s trade mark did not preclude a finding in favour of the complainant under paragraph 4(a)(i) of the Policy. That is precisely the position in this case (see B above). However, in that decision the panel in coming to that decision quoted from the then current edition of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions. The passage in question ends: “However, it can be difficult to prove that the domain name was registered in bad faith as it is difficult to show that the domain name was registered with a future trade mark in mind.” In citing this case the Complainant appears to have ignored this point altogether.
Cortofiel, S.A. v. The Gallery Group,WIPO Case No. D2000-0162. The Complainant cites this case as being relevant because the panel found that the domain name in issue “was registered in bad faith, and that it was used in bad faith, because the respondent was trying to force the complainant into a transfer-for-price negotiation.” This is a false citation. In fact, the panel made the following finding in relation to that allegation: “There is no evidence in the record that the purpose of the registration or the use of the domain name – if any – has been to lead the complainant to such negotiations, and the complainant fails to [prove] such an assertion.” However, the citation is particularly inept in that in this case the complainant’s trade mark was a famous Spanish trade mark, the Respondent resided in Spain and the domain name post-dated the coming into existence of the complainant’s trade mark. Moreover, the respondent’s behaviour, which is set out in detail in the decision, gave the panel every reason to doubt the respondent’s evidence.
In support of the Complainant’s assertion that the Respondent’s non-use of the Domain Name constitutes bad faith use for the purposes of paragraph 4(a)(iii) of the Policy, the Complainant cites the well-known case of Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In that case the complainant’s trade mark was very well-known and pre-dated the domain name, the respondent provided no explanation for its choice of domain name and was making no use of it. Moreover, the respondent provided false contact details for the WhoIs database. The circumstances could not have been more different than the circumstances of this case. In this case, the Respondent is making use of the Domain Name (albeit connecting to a parking page) and has given an explanation for her choice of name. Moreover, as indicated, the Domain Name predates the Complainant’s trade mark by 11 years and it is inconceivable that the Respondent could have had the Complainant in mind at the relevant time, namely when registering the Domain Name. Additionally, there is no suggestion that her WhoIs contact details are in any way defective.
In formulating the Complaint the Complainant has fallen into serious error.
The Complainant appears to have taken the view that registering a domain name for the purpose of selling it is of itself in some way reprehensible, when of course it is not (at least absent an intent to sell the owner of an identical or confusingly similar trademark, or a competitor thereof). There is a lawful trade in domain names running into millions of dollars per annum. If the Panel has understood the Complainant’s evidence correctly, it appears that when the Complainant attempted to purchase the Domain Name online, the price demanded for the Domain Name increased from about USD 10,000 to USD 50,000. No doubt, when the Complainant disclosed its identity, the Respondent appreciated that a higher sum could be demanded of an entity having a name identical to the Domain Name. Whatever the reason, there is nothing to demonstrate that this is behaviour meriting a finding of bad faith under the Policy. Pricing a domain name at the highest level the registrant believes it can encourage a purchaser to pay is not of itself objectionable absent evidence of targeting a particular trademark owner.
The Complainant also appears to have believed that non-use of a domain name or connection of a domain name to a parking page is of itself an indication of bad faith registration and use, which is not the case. The Telstra decision, supra cited by the Complainant shows that for non-use to constitute ‘use in bad faith’, there has to be substantially more than non-use to justify such a finding.
Even if the Panel were to subscribe to the view held by a few panelists that bad faith use can in certain circumstances lead to a finding of bad faith registration and use notwithstanding an original good faith registration, in this case there is absolutely no evidence of any bad faith of any kind at any time on the part of the Respondent.
The Domain Name was not registered in bad faith and is not being used in bad faith. E. Reverse Domain Name Hijacking
The Complainant, in its supplemental submission dated June 28, 2011 answers the Respondent’s allegation of Reverse Domain Name Hijacking. It stresses that the Domain Name is identical to the Complainant’s trade/service mark, it reiterates that use of a domain name to connect to a parking pages featuring advertising links unconnected to the Respondent cannot give rise to rights or legitimate interests and it underlines its belief that to register a domain name with a view to selling it is indicative of bad faith registration and use, notwithstanding the fact that the Complainant’s trade/mark was not even in contemplation at that time.
It concludes its submission with the following passage:
“Given the above-mentioned arguments, the Complainant seeks to stress the fact that the Complaint is not an aggressive attempt to obtain what is potentially a valuable name for its new business. The Complainant genuinely finds that the Respondent has no legal rights or legitimate interests in respect of the Domain Name and only holds it passively, now with the purpose of selling it to the Complainant for an amount in excess of out-of-pocket expenses.”
In the view of this Panel, the Complainant exhibits a fundamental misunderstanding of the purpose behind the Policy. It was introduced to deal with cybersquatters, people intentionally taking the trade marks of others without permission and registering them as domain names for abusive purposes, a non-exhaustive list of which appears in paragraph 4(b) of the Policy. In each case the cybersquatter is ordinarily targeting a particular trade mark owner.
Registering a domain name which is identical to another’s trade mark is not of itself abusive and particularly if the registrant is has no reason to be aware of the trade mark’s existence. Registering a domain name in respect of which one has no rights or legitimate interests is not of itself abusive. Registering a domain name for no purpose other than to make money out of it is not of itself abusive.
The Policy was intended to benefit trade mark owners by providing them with a reasonably quick and cost-effective alternative means of enforcing their rights in a very narrow category of cases. The Policy was in general never intended to enable owners of later trade mark rights to acquire domain names registered prior to those rights coming into existence. It is true that a few panelists have taken the view that, in certain circumstances, subsequent bad faith use can transform a domain name registered in good faith into a bad faith registration; but even for those panelists, the bad faith use must be clearly demonstrated.
In this case there is no evidence of any bad faith use. The Complainant complains that the advertising links on the Respondent’s site have no connection with the Respondent (thereby depriving the Respondent of relevant rights or legitimate interests), but makes no suggestion that they have anything to do with either the Complainant or the Complainant’s area of activity. For example, it is not as if the links are to competitors of the Complainant.
However, the fundamental flaw in the Complainant’s case is the belief that registering a domain name, in respect of which one has no rights or legitimate interests (as illustrated by the examples in paragraph 4(c) of the Policy), for the purpose of monetizing it is indicative of bad faith. The Policy contains no apparent basis for any such belief. One only needs to look at the facts of this case. On the evidence before the Panel, there was no IUNO trade mark in existence on February 9, 2000. Is the Complainant seriously suggesting that there was anything abusive about the registration at that date when there were nor relevant trade mark rights in contemplation (let alone existence) at that date? Did it become abusive when the Respondent started connecting it to a parking page featuring advertising links even though at that stage there were no relevant trade mark rights in existence? Did it become abusive when the Complainant acquired its trade mark rights even though the advertising links on the Respondent’s site had nothing to do with the Complainant or its area of business?
The Complainant complains that the Respondent’s sale price for the Domain Name shot up steeply when the Complainant expressed an interest in purchasing it, but there is no evidence to suggest that that was anything other than a seller seeking to obtain the best possible price for her lawfully held asset. Paragraph 4(b)(i) of the Policy uses terminology similar to that used by the Complainant in its submissions. Take for example the final sentence of the passage quoted above from the Complainant’s supplemental submission of June 28, 2011 (“…now with the purpose of selling it to the Complainant for an amount in excess of out-of-pocket expenses”), but that passage recognizes, as it has to, by use of the word “now” that that was not (and could not have been) the Respondent’s purpose at date of registration.
The Complaint is undoubtedly fundamentally flawed, but was it brought in bad faith to attempt to deprive the Respondent of the Domain Name or to harass the Respondent (paragraph 15(e) of the Rules)?
The Complainant is a law firm and the Panel finds it difficult to believe that a law firm would intentionally set out to abuse the process in this way. Equally, the Panel finds it astonishing that a law firm could produce such a fundamentally flawed Complaint. Occasionally, such complaints stem from an ignorance of the UDRP case law and the resources available on the Center’s website. In this case, however, the Complainant cites from the case law and relies on a passage (albeit an incomplete passage) from the WIPO Overview (see the reference to Mowitania Wendt & Molitor GbR v. Eric Clermont, supra.
However, the Panel does not feel the need to come to a concluded view on whether the Complainant’s intentions in launching this Complaint were abusive. In the view of this Panel a complainant in the position of the Complainant:
(a) ought to have been aware of the fundamental defects in the Complaint; and
(b) ought to have been aware that to launch it in this form would put the Respondent to unnecessary and irrecoverable expense;
(c) ought to have been aware that false allegations of bad faith necessarily give rise to concern and distress on the part of the person falsely accused;
(d) ought to have been aware that if the Complainant had succeeded, the Respondent would have been wrongfully deprived of the Domain Name.
Whether or not the Complainant’s motives were abusive, objectively speaking the end-result (i.e., the Complaint) was fundamentally flawed. In the view of this Panel, a represented complainant (and particularly a complainant in the position of this Complainant, a law firm) should be taken to have known and understood the Policy and should be taken to have known and desired the natural and probable consequences of its actions.
On that basis the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of this administrative proceeding. In so finding, the Panel recognizes that in many cases a complainant cannot know what the respondent’s true intentions were at time of registration of the domain name in issue and that to an extent allegations of bad faith may be somewhat speculative in those cases. However, that is not this case. In this case the Complainant knew or ought to have known that the bad faith allegations were baseless. 7. Decision
For all the foregoing reasons, the Complaint is denied. Further, the Panel declares that the Complaint was brought in bad faith and constitutes an abuse of this administrative proceeding.
Tony Willoughby
Sole Panelist
Dated: July 4, 2011
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