Complainant is Co-Ro Food A/S of Frederikssund, Denmark, represented by Lone Prehn of Zacco Denmark A/S, Denmark.
Respondent is Moniker Privacy Services of Florida, United States of America / Domain Administrator of Hong Kong, represented by Ari Goldberger and Jason Schaeffer of ESQ Law Firm, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) against Moniker Privacy Services on November 21, 2011. On November 21, 2011, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On November 22, 2011, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 23, 2011 providing the registrant and contact information disclosed by Moniker Online Services, LLC and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 28, 2011.
The Center verified that the amended 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 Respondent of the Complaint, and the proceedings commenced November 29, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 19, 2011. The Response was filed with the Center December 19, 2011.
The Center appointed Michael A.R. Bernasconi, Knud Wallberg and The Hon Neil Brown QC as panelists in this matter on January 12, 2012. The Panel finds that it was properly constituted. Each member of 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.
On January 13, 2012, Complainant sent a request to the Panel asking for the permission to file a supplemental submission as answer to Respondent’s Response of December 19, 2011. The Panel, on January 18, 2012, issued the Administrative Panel Procedural Order allowing the filing of a second submission by Complainant. At the same time, the Panel granted to Respondent a deadline of seven days to file a second submission as well, once Complainant has filed its second submission. On January 20, 2012, Complainant filed its second submission. Respondent did not file a second submission. 4. Factual Background
Complainant is active in the business of producing flavorings and is the owner of the community trademark SUNJOY, which was applied on March 4, 2009 and registered on February 5, 2010. Respondent is the owner of the disputed domain name, which was registered on May 13, 2002. Respondent hosts the disputed domain name with a service, which places pay-per-click (“PPC”) advertising links based on a Google advertiser feed on hosted domain names. 5. Parties’ Contentions A. Complainant
Complainant is of the opinion that the fact that the disputed domain name was registered before its trademark does not prevent a finding of identity under the UDRP, since the UDRP makes no specific reference to the date on which the holder of the trademark acquired the rights.
Additionally, Complainant is of the view that the use of the disputed domain name in connection with a PPC website does not constitute a legitimate interest in the disputed domain name. According to Complainant, it must be taken into account that the disputed domain name is not used in a descriptive and generic sense but rather the several PPC links relate to business programs, business software, online gambling, etc. and therefore are based on trademark value, which does not constitute a legitimate interest in respect of the disputed domain name.
Complainant is further of the opinion that the disputed domain name is used by Respondent in bad faith, because Respondent has registered and is using the disputed domain name knowing that it would infringe third party trademark rights. B. Respondent
Respondent stresses that it registered the disputed domain name in May 2002, which is nine (9) years before Complainant registered its trademark, and therefore the registered trademark of Complainant provides no enforceable rights under the UDRP. In Respondent’s view, Complainant also failed to show that it has unregistered or common law trademark rights, since even today the website of Complainant does not show any signs of the trademark SUNJOY.
The registration of the disputed domain name was, according to Respondent, not done in bad faith since Complainant, at the time of registration of the disputed domain name, did not even applied for the registration of the trademark SUNJOY. Respondent is simply presenting search results related to general interest topics and not special topics which relate in any way to the business of Complainant. The content of the website is not related to the goods and products sold by Complainant and therefore do not infringe Complainant’s trademark.
In addition, Respondent is of the opinion that by waiting for nine years to file the present Complaint, Complainant itself did not believe that the registration and use of the disputed domain name by Respondent was in bad faith. Furthermore, Respondent is of the view that since Complainant brought this case forward knowing that it had no basis, the Panel shall issue a decision finding that Complainant has engaged in Reverse Domain Name Hijacking. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, Complainant must prove that:
A. The disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
B. Respondent has no rights or legitimate interests in respect of the disputed domain name; and
C. the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
It is undisputed that Complainant is the owner of the trademark SUNJOY. The disputed domain name consists also of the word “sunjoy”, without any distinguishing elements and is, therefore, identical with Complainant’s trademark. Whether Complainant had registered its trademark well after Respondent registered the disputed domain name cannot be relevant in deciding whether or not the first condition of paragraph 4(a) of the UDRP is fulfilled, i.e. whether the disputed domain name is identical or confusingly similar to a trademark according to paragraph 4(a)(i) of the UDRP. It is, however, relevant in deciding whether the disputed domain name was registered in bad faith (cf. Landmark Group v. DigiM, L.P., NAF Claim No. 0285459). In the present case, the first condition according to paragraph 4(a) of the UDRP is clearly fulfilled. B. Rights or Legitimate Interests
According to paragraph 4(c) of the UDRP, the use of the disputed domain name in connection with a bona fide offering of goods and services as well as the fair use of the disputed domain name, without the intent for commercial gain to misleadingly divert consumers or to tarnish the trademark of Complainant demonstrates Respondent’s rights or legitimate interests in the disputed domain name.
Respondent is using the disputed domain name in connection with a PPC website. Complainant submits that such use of the disputed domain name neither confers any rights or constitutes a legitimate interest according to paragraph 4(a) of the UDRP.
Some panels have found in the past that a PPC business model does not violate the UDRP “as long as the domain names have been registered because of their attraction as dictionary words, and not because of their value as trademarks […]” (cf. Landmark Group v. Digimedia L.P., supra; General Machine Products Company, Inc. v. Prime Domains (a/k/a Telepathy, Inc.), NAF Claim No. 0092531; Metro Sportswear Limited (trading as Canada Goose) v. Vertical Axis Inc. and C c/o Whois Identity Shield, WIPO Case No. D2008-0754).
The Panel agrees with Complainant that the disputed domain name itself is not a common or descriptive English term. However, it consists of two common descriptive English terms, that is “sun” and “joy”. Since these are both descriptive terms, and their combination cannot be said to be very fanciful, the trademark of Complainant cannot prevent others from using the two words or the combination of words in their generic and descriptive sense. The Panel is thus satisfied that Respondent had a good faith belief that the disputed domain name’s value derives from its generic nature rather than a possible specific trademark value and hence the PPC business model of Respondent corresponds to a legitimate interest in the disputed domain name. C. Registered and Used in Bad Faith
On the third element of paragraph 4(a) of the Policy, i.e. the issue of a bad faith registration and use, it is undisputed that Complainant’s trademark was registered for the first time on February 5, 2010, whereas the disputed domain name was registered by Respondent on May 13, 2002. Complainant is not alleging that it owned any unregistered or common law trademark rights in the word “sunjoy” in 2002 nor did the submissions of Complainant contain any reference thereto which would lead the Panel to believe that unregistered or common law trademark rights existed at that time. Therefore, when Respondent registered the disputed domain name, Complainant did not have any trademark rights whatsoever in the word “sunjoy”. Since Complainant did not have any trademarks rights in the word “sunjoy” in 2002, the Panel is satisfied that the registration could not have been in bad faith vis-à-vis Complainant (cf. Landmark Group v. DigiM, L.P., supra; National Trust for Historic Preservation v. Barry Preston,WIPO Case No. D2005-0424; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141; Prime Pictures LLC v. DigiM L.P., WIPO Case No. D2010-1877). Whether the registration might have infringed trademark rights of third parties – as alleged by Complainant – is not relevant for the present proceeding.
As mentioned above, Respondent is using the disputed domain name in connection with a PPC website. Complainant on the other hand is active in the business of producing flavorings. Complainant and Respondent are active in two different areas of business, and in this Panel’s view, no disruption of business could be caused by Respondent’s use of the disputed domain name. Also, there are no indications in the Parties’ submissions that Respondent tried to sell to Complainant the disputed domain name nor did Complainant allege that Respondent had registered the disputed domain name for the sole purpose of selling it to Complainant. Since Respondent registered the disputed domain name well before Complainant registered its trademark, the registration of the disputed domain name could not have been done in order to prevent Complainant from reflecting the trademark in a corresponding domain name.
Considering the above, the Panel does not see any indications nor any evidence that Respondent registered or is using the disputed domain name in bad faith. D. Reverse Domain Name Hijacking
In accordance with paragraph 15(e) of the Rules, “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 […] 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.”
In order for a respondent to prevail on such a claim, it must show that a complainant knew of the respondent’s unassailable rights or legitimate interests in the disputed domain name or the clear lack of bad faith registration and use, but nevertheless brought the complaint in bad faith (cf. Sydney Opera House Trust v. Trilynx Pty. Limited,WIPO Case No. D2000-1224; Goldline International, Inc. v. Gold Line,WIPO Case No. D2000-1151).
In Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing,WIPO Case No. D2005-0309, the majority of the three-member panel noted that the onus of proving that a complainant has acted in bad faith is on a respondent, and that mere lack of success of the complaint is not of itself sufficient to constitute Reverse Domain Name Hijacking.
In the Panel’s opinion Respondent has not established that Complainant has acted in bad faith. While Complainant’s case was weak from the outset, considering the earlier registration of the disputed domain name by Respondent, the Panel is not satisfied that the elements for considering Complainant’s action as an attempt at Reverse Domain Name Hijacking have been proven by Respondent. In Complainant’s view, the business model of Respondent, i.e. collecting generic domain names and connecting them to PPC websites, does not give Respondent any rights or legitimate interests in the disputed domain name. Considering Complainant’s motivation, it cannot be said that the Policy was used in bad faith to attempt to deprive Respondent of the disputed domain name.
In all the circumstances, the Panel finds that it has not been established that the Complaint was brought in bad faith and therefore the Complaint does not constitute an abuse of the administrative proceeding. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Michael A.R. Bernasconi
Presiding Panelist
Knud Wallberg
Panelist
The Hon Neil Brown QC
Panelist
Dated: February 15, 2012
Full & Egal Universal Law Academy