The Complainant is Mazuma Mobile Limited of Watford, Hertfordshire, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Clarke Willmott, UK.
The Respondent is DI S.A. also trading as Domain Invest S.A., Administration DOM of Bertrange, Luxembourg, represented by L, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with EuroDNS S.A. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2012. On March 26 and 28, 2012, the Center transmitted by email to EuroDNS S.A. a request for registrar verification in connection with the disputed domain name. On March 28, 2012, EuroDNS S.A. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On March 27, 2012 the Respondent’s Authorized Representative requested the Center to send all copies of the Complaint and supporting material provided by the Complaint. On March 28, 2012 the Center transmitted to the Respondent said documents by courtesy. The Complainant filed an amended Complaint and annexes on March 28, 2012 in response to a notification by the Center that the Complainant had not provided the names of the three candidates as it is required in case of the designation of a three-member administrative panel.
The Center verified that the Complaint together with 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 the Respondent of the Complaint, and the proceedings commenced March 29, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 18, 2012. On April 11, 2012 the Respondent’s Authorized Representative acknowledged receipt of the written notice notifying the commencement of the proceedings sent by the Center on March 29, 2012 by fax and requested the Center to provide copy of the Complaint and its annexes. The Center sent such documents on April 13, 2012. On April 17, 2012 the Respondent’s Authorized Representative filed a request for extension to submit its Response, to which the Complaint agreed. As a result, the Center extended the due date to submit the Response to April 20, 2012. The Response was filed with the Center on April 20, 2012.
On April 27, 2012 the Complainant filed a Supplemental Filing concerning its reply to the Respondent’s Response. On May 10, 2012, the Respondent filed its own Supplemental Filing concerning its response to the Complainant’s Supplemental Filing dated April 27, 2012.
The Center appointed M. Philippe Gilliéron, M. Scott Donahey and Ms. Diane Cabell as panelists in this matter on May 11, 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 May 18, 2012, the Complainant filed a second Supplemental Filing in response to Respondent’s previous Supplemental Filing, dated May 10, 2012. On May 21, the Respondent filed a second Supplemental Filing in rebuttal. 4. Factual Background
The Complainant is a mobile phone recycling company that was incorporated in the UK in 2006. Complainant carries out its activities online under the domain name , that was registered on August 17, 2006. As of February 2012, the Complainant’s website appears to be the most visited mobile phone recycling website in the UK. The Complainant’s services have been praised by many users over the years on online forums.
The Complainant owns the following registered trademarks:
- UK word trade mark No. 2489430 MAZUMA MOBILE, that was registered on November 14, 2008 with a priority date as of June 7, 2008 under class 9 of the Nice Classification for cellular telephones, cellular phones, cellular mobile telephones, telecommunications apparatus for use in cellular radio networks and telecommunications instruments for use in cellular radio networks.
- CTM word trademark No. 009417486 MAZUMA MOBILE, that got registered on April 19, 2012 with a priority date as of October 1st, 2010 under classes 9, 35, 36, 37, 38, 40 and 42 of the Nice Classification covering, among other things, mobile phones, telecommunications, retail services connected with the sale and purchase of mobile phones and telecommunication equipment, retail services connected with the sale and purchase of refurbished electronic apparatus and mobile phones, retail services in connection with the sale and purchase of recycled telecommunications equipment, apparatus and instruments; apparatus and instruments.
The Complainant also owns the following CTM application, that is subject to pending proceedings:
- CTM word trademark No. 009417461 MAZUMA, that was filed on October 1, 2010 under classes 9, 25, 26, 27, 28, 40 and 42 covering, among other things, mobile phones, telecommunications, retail services in connection with the sale and purchase of recycled telecommunications equipment, apparatus and instruments; repair services, repair services in relation to electronic apparatus and mobile phones, refurbishment services in relation to electronic apparatus and mobile phones, repair services in relation to telecommunications equipment, apparatus and instruments, recycling services, recycling of consumer goods, recycling of mobile phones, reuse of mobile phones, safe disposal of mobile phones, destruction of waste materials, disposal of surplus goods, information and advisory services in relation to all the aforesaid services.
According to Experian Hitwise UK, as of March 10, 2012 15.75% of all search traffic to the UK mobile phone recycling industry was generated by the keywords “Mazuma” (10.40%) and “Mazumamobile” (5.35%). However, it appears that the word “Mazuma” was registered in the UK (No. 2408836) on September 14, 2007 by a third party, namely Aquillo Ltd, under classes 9, 16, 35, 36, 38 and 41 of the Nice Classification, with a priority date as of December 12, 2005.
The Respondent, based in Luxembourg, was incorporated and registered on February 6, 2008. The Respondent states on its website at that it "started its business in 2008", is "one of the leading players in the Internet domains market", and "is a company that acquires existing Internet domain names that already generate revenues and offer value increase potential".
A Domain Tools search shows that the Respondent has a large domain name portfolio, currently associated with over 9,000 domain names. The same search confirms that the Respondent has been associated with over 20,000 domain names since its incorporation.
The disputed domain name was originally registered on June 30, 2001. As of December 30, 2008 the disputed domain name was held by Internet Reit, Inc. It subsequently was apparently transferred to International Services Company SA, that appeared as registrant at least between January 11, 2009 and February 18, 2010. The first record of the Respondent as registrant of the disputed domain name dates to March 26, 2010 so that the Respondent apparently acquired the registration of the domain name at issue at some point between February 18, 2010 and March 26, 2010.
After having found out in April 2010 that the Respondent was the registrant of the disputed domain name , the Complainant had an exchange of emails with the Respondent on April 7, 2010 indicating that Complainant was interested in purchasing the disputed domain name. On September 17, 2010 the Complainant offered the amount of £1,000 to purchase the disputed domain name , to which offer the Respondent did not respond.
As of the time the Complaint was filed, the Respondent automatically diverted users that typed in the disputed domain name to the domain name , also held by the Respondent since January 11, 2012. This domain name consisted of a single page displaying the logo, which is protected in the UK trade mark No. 2606588, and a link to the website . As of the time of drafting, the disputed domain name leads users to a financial website offering lending and cash-advance services. 5. Parties’ Contentions A. Complainant
The Complainant first asserts that the disputed domain name is confusingly similar to its trademarks. The Complainant points out that, in accordance with paragraph 1.4 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), "Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity". In any case, the Complainant considers the disputed domain name to have been registered by the Respondent in 2010, i.e. after the disputed domain name at issue was transferred to the Respondent by International Services Company SA, and some two years after the Complainant’s UK word trade mark MAZUMA MOBILE was registered (No. 2489430, priority date as of June 7, 2008). The Complainant further alleges that it owns common law rights in both the terms “Mazuma Mobile” and “Mazuma” by virtue of its extensive advertising since 2006 and the associated goodwill which it acquired as a result. Therefore, the disputed domain name would undoubtedly be identical or confusingly similar to the Complainant’s trademarks.
The Complainant then affirms that the Respondent has no rights or legitimate interests in the disputed domain name. It would not have any trademark rights in the name “Mazuma”, would not be known under that designation, and would not have made any use or demonstrable preparations to use the disputed domain name for a bona fide offering of goods or services since it became its registrant. The fact that the Respondent would appear to be in the business of acquiring domain names and to automatically divert internet users to which used to link to would be another clear indication of its absence of rights or legitimate interests with regards to the disputed domain name.
The Complainant finally contends that the disputed domain was registered and is being used in bad faith.
As to the registration, the Complainant alleges that the registration actually took place as of the time the disputed domain name was transferred to the Respondent, i.e. between February 18, 2010 and March 26, 2010, respectively at its renewal dates, i.e. 29 June 2010 and 29 June 2011. Such an argument would be in line with paragraph 3.7 of WIPO Overview 2.0 ("the transfer of a domain name to a third party does amount to a new registration for the purpose of assessing bad faith. Registration in bad faith must normally occur at the time the current registrant took possession of the domain name"). Alternatively, the Complainant alleges that Policy, paragraph 4(a)(iv) clearly refers to the use of the domain name, unlike Policy, paragraph 4(a)(iii) that would only refer to the registration; according to the Complainant this would demonstrate that use in bad faith would suffice with regards to Policy, paragraph 4(a)(iv).
As to the use, the Complainant submits that the domain name is currently listed for sale on different websites for amounts exceeding EUR 250,000, that the Respondent is the current registrant of more than 9,000 domain names, so that the disputed domain name has arguably been registered in order to sell, rent or otherwise transfer it to the Complainant or one of its competitors. In addition, by automatically redirecting users to and/or , the Respondent has intentionally attempted to attract users for commercial gain and to divert them by creating a likelihood of confusion as to the source of the Respondent’s website and is disruptive of the Complainant’s business. B. Respondent
The Respondent first asserts that the MAZUMA MOBILE UK trademark held by the Complainant was only registered one month prior to the Respondent’s acquiring the disputed domain name which, according to the Respondent, took place in December 2008. The Respondent would have been listed as the registrant following a reorganization of Internet Reit, Inc. of which the Respondent was a part. The fact that the term “Mazuma” is a registered trademark held in UK by a third party precludes the Complainant’s right to assert trademark rights in the word “Mazuma” on a stand alone basis. The Complainant further alleges that the word “mazuma” is an ancient Hebrew noun meaning money or cash; as a result, it is clearly generic or descriptive. The addition of the term “mobile” would thus exclude any likelihood of confusion with this sole generic term. Finally, the Respondent considers that none of the evidence submitted by the Complainant would demonstrate its holding of common law rights in the term “mazuma”.
The Respondent then contends that the Complainant has not established a prima facie case that the Respondent would have no rights or legitimate interests in the disputed domain name. The registration of a generic domain name such as is legitimate. The disputed domain name has been used in the past, in particular in the context of mobile phones. While the disputed domain name had very temporarily been used to automatically redirect users to , such redirection had been corrected immediately after notice, and the Respondent undertook to refrain from any further such use. According to the Respondent, trading in domain names is a bona fide business.
The Respondent finally contends that it has not acted in bad faith. According to a witness statement of Mr. Frederic Schiwek, Respondent’s Managing Director, the disputed domain name had been chosen, like many others, for its descriptive character in relation to money or cash. Mr. Schiwek contends that he searched the USPTO and OHIM database, but did not find any MAZUMA trademark. As a resident of Luxembourg, the Respondent did not have had any knowledge of the Complainant’s business and related trademark. The Respondent has never had any intent to sell the disputed domain name. Bearing in mind the descriptive nature of the word “mazuma”, the Respondent did not have any intent to disrupt the Complainant’s business or to attract users by creating a likelihood of confusion either, especially as the emails exchanged between the parties were all anonymous. The Respondent used its registered domain names on parking websites to generate pay-per-click revenues, including several related to cell phones. In conclusion, the Respondent contends that it neither registered nor used the disputed domain name in bad faith. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
Prior to turning to the merits of the case, the Panel has to put under scrutiny one formal issue related to the Supplemental Filings submitted by the Parties. A. Supplemental Filings
On April 27, 2012, the Complainant filed a Reply to the Respondent’s Response, followed on May 10, 2012 by a Counter reply that was filed by the Respondent. Complainant submitted a further Reply on May 18 as did Respondent on May 21.
In accordance with the majority view held by the panels, “The party submitting its filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response. Most panels that have allowed unsolicited filings have also tended to require some showing of "exceptional circumstances” (see, e.g. paragraph 4.2 of WIPO Overview 2.0).
In the present case, the Supplemental Filings do not bring any factual element that could not have been brought to the attention of the Panel prior to the filing of the Complaint and Response. To a large extent, each Party focuses in their Supplemental Filings on the merits of the case, partly repeating arguments previously made, and partly providing additional legal arguments to support their respective positions.
To the extent that these Supplemental Filings pertain to factual circumstances that were made to the Panel in their initial filings, these Filings shall be disregarded. B. Identical or Confusingly Similar
According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
In the present case, notwithstanding the issue as to whether some of the alleged trademarks held by the Complainant consist of mere applications, rather than valid registrations, the Complainant undoubtedly is the rights holder of the UK word trade mark No. 2489430 MAZUMA MOBILE, that was registered on November 14, 2008 with a priority date as of June 7, 2008 under class 9 of the Nice Classification.
The Respondent alleges that the term “mazuma” is descriptive. The majority of the panel does not share this point of view on two grounds: first, it is more than doubtful that the general public will be aware of the fact that the term “mazuma” is an ancient Hebrew noun for money or cash; in that regard, the Respondent’s line of arguments is far from convincing. Second, this term is certainly not descriptive for cellular phones as registered by the Complainant.
The Respondent further alleges that third parties hold prior rights in the MAZUMA mark. Such an argument, however, is unconvincing, considering the scope of the Policy. The fact that third parties may hold similar trademarks to one held by the Complainant is no reason for the Panel to deprive the Complainant of its rights under the Policy.
Some panel decisions have held that registration of a mark is prima facie evidence of validity, creating a rebuttable presumption that the mark is inherently distinctive, and that respondents have the burden of rebutting that presumption (see, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047). Other panels have concluded that the complainant's holding of a registered mark is sufficient without more to establish rights under the Policy, and that a respondent's claim that registration should not have been granted or should be revoked is a matter for the courts or trademark authority of the relevant country (see, e.g., Hola S A. and Hello Limited v. Idealab,WIPO Case No. D2002-0089. See also Lucasfilm Ltd. and Lucas Licensing Ltd. v. Cupcake City and John Zuccarini,WIPO Case No. D2001-0700).
Given the limited scope of the Policy and this Panel's narrowly circumscribed jurisdiction, this Panel's inclination is to adopt the reasoning of the panels in the second line of cases referred to above. See Classmates Online, Inc. v. John Zuccarini, individually and dba RaveClub Berlin,WIPO Case No. D2002-0635. It is certainly not up to a panel to rule upon the validity of a trademark that has been registered by the competent authority of a given country, an issue that appears totally outside the scope of the Policy.
As a result, the Panel considers the Complainant to be the legitimate right holder of a trademark consisting of the terms MAZUMA MOBILE.
Taking into account the foregoing, the Panel considers that the prevailing element of the Complainant’s trademark consists of the term “mazuma”, since the term “mobile” shall be considered as descriptive by consumers with regards to the products for which protection is being sought, i.e. cellular phones in particular.
UDRP panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark for purpose of the Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services,WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358; and F. Hoffmann-La Roche AG v. Relish Entreprises, WIPO Case No. D2007-1629). This holding certainly remains valid when the respondent registers the prevailing term of the complainant’s trademark and neglects the descriptive term, which in any case is largely irrelevant to appraise the likelihood of confusion among consumers, as in the present case.
As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied. C. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
As the panel stated in Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624, demonstrating that the respondent has no rights or legitimate interests in the domain name “would require complainant to prove a negative, a difficult, if not impossible, task”. Thus, in that decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion”. Following that decision, subsequent panels developed a consensual view that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, it is the respondent’s burden to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied to paragraph 4(a)(ii) of the Policy (see, e.g., paragraph 2.1 of WIPO Overview 2.0).
Unlike the view taken by the Respondent, a majority of the Panels consider that “[…] use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a "bona fide offering of goods or services" or from "legitimate noncommercial or fair use" of the disputed domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder. As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value (a result that PPC page operators can achieve by suppressing PPC advertising related to the trademark value of the word or phrase). By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion” (see, e.g. paragraph 2.6 of WIPO Overview 2.0).
In the present case, the sole use that has ever been made by the Respondent of the disputed domain name consists of exploiting it through parking websites so as to generate PPC revenues. While the Respondent alleges that the term “mazuma” is descriptive, it acknowledges at the same time to have used it in relation to telecommunication devices, such as cell phones or PDAs. Considering the trademark validly held by the Complainant in this field, such a use cannot be considered as a bona fide offering of goods of services.
The Respondent further argues that it had no idea how the disputed domain name came to be linked to the website. Such ignorance however is no excuse under the Policy. It is indeed worth pointing out that, according to the Panels, “[..] a domain name registrant will normally be deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content - for example, in the case of advertising links appearing on an "automatically" generated basis. […]” (see, e.g. paragraph 3.8 of WIPO Overview 2.0). Such a reasoning proves convincing. There is no reason to exempt a registrant from liability for the use it purposefully makes of a given domain name; should the registrant decide to attach its domain name to a parking website, it is fair to consider that the registrant bears full and entire liability for the content associated with such parking websites, respectively indirectly with the disputed domain name.
All in all, the Panel considers that the Respondent has been unable to discharge its burden of proof, and did not demonstrate any rights or legitimate interests in respect of the disputed domain name, the Panel being unwilling to consider the mere use on parking websites to amount to a bona fide offering of goods or services.
As a result, the Panel considers paragraph 4(a)(ii) of the Policy to be satisfied. D. Registered and Used in Bad Faith
For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
In the present case, there is little doubt in the Panel’s opinion that the disputed domain name is being used in bad faith. The fact that the disputed domain name had been only temporarily attached to the website is no reason to exclude a bad faith finding. Bad faith use should be appraised at the time of the filing, independently of prior use, so that the fact that the Respondent would not have acted in bad faith in the past (a line of argumentation hard to follow as the Respondent itself at the same time argues that it used the disputed domain name in relation with cellular phones and PDAs in particular) is irrelevant.
In that regard, and as previously pointed out, the registrant bears full and entire liability for the content associated with the disputed domain name, in the particular case a domain name identical to the one of Complainant’s competitors, inviting users to directly connect with such competitor. The question of how such a link was established is of no interest to the Panel.
While the disputed domain name has therefore and is being used in bad faith, the important issue is whether the disputed domain name has been registered in bad faith, assuming that registration and usage should be considered separately.
As pointed out by the Panel in Mile, Inc. v. Michael Burg,WIPO Case No. D2010-2011 (“Mile”), “ The consensus view since the Policy was implemented in 1999 has been that the conjunctive “and” indicates that there must be bad faith both at the time of registration and subsequently”.
The consensus view that the Policy requires bad faith at the time of registration of the domain name has been challenged in some recent UDRP decisions, prominently City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE,WIPO Case No. D2009-0643 (“Mummygold”) and Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions,WIPO Case No. D2009-0786 (“Octogen”); see also Ville de Paris v. Jeff Walter,WIPO Case No. D2009-1278; Jappy GmbH v. Satoshi Shimoshita,WIPO Case No. D2010-1001. These decisions treat the requirement to establish that the respondent “registered and used the domain name in bad faith” as a unified concept.
In the Mile case, the Panel however put under scrutiny numerous decisions rendered after the Mummygold/Octogen cases to find out that:
“If a consensus developed that a line of prior decisions had reached the wrong result, and if panels generally adopted a new approach on an issue, this Panel also would be open to considering whether a new approach was appropriate, both substantively under the Policy and in order to promote consistency. However, the Mummygold/Octogen reasoning has not prompted any such consensus; to the contrary, a number of decisions have expressly considered and rejected it. See, e.g., Validas, supra; Eastman Sporto, supra; Torus Insurance Holdings Limited v. Torus Computer Resources, WIPO Case No. D2009-1455; Camon S.p.A. v. Intelli-Pet, LLC,WIPO Case No. D2009-1716; Tata Communications International Pte Ltd (f/k/a VSNL International Pte Ltd) v. Portmedia Inc. / TRUEROOTS.COM c/o Nameview Inc. Whois,WIPO Case No. D2010-0217 (majority opinion); Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470; A. Nattermann & Cie. GmbH and Sanofi-aventis v. Watson Pharmaceuticals, Inc.,WIPO Case No. D2010-0800 (majority opinion). The fact that so many panelists have declined to follow the Mummygold/Octogen approach argues against an emerging consensus to overturn a long-established doctrine and provides yet another reason for this Panel to decline to adopt the Mummygold/Octogen reasoning.”
The Panel finds the view held in the Mile case to be convincing. The “registration” cannot be considered as a continuous process that would have to be construed in line with the circumstances surrounding the case as of the time the Complaint is filed. Such a construction would render the difference between “registration” and “usage” pointless. Those are clearly two distinctive requirements whose rationale lies in the very goal the UDRP is trying to pursue. It is indeed to be kept in mind that the UDRP was enacted in order to fight against a particular set of circumstances, namely the undue and abusive registration of domain names in so-called cybersquatting cases. Such cases presuppose the registration itself to occur in bad faith. While this might, and actually has been considered as a weakness from the UDRP in particular with regards to some ccTLDs alternative dispute mechanisms that have resulted in the putting in place of alternative criteria, namely registration or use in bad faith, there is no reason to depart from the interpretation given by a majority view that, under the Policy, paragraph 4(a)(iii), the conjunctive “and” indicates that there must be bad faith both at the time of registration and subsequently.
In the present case, the disputed domain name can however only be considered to have been registered by the Respondent at the time the domain name was transferred in its favor, i.e. at a time between February and March 2010, respectively in December 2008 if one admits Respondent’s assertion that it would be an internal unit of Internet Reit. A majority of the Panel indeed agrees that, while a mere renewal should not be treated as a new registration for assessing bad faith, such is the case of the transfer of a domain name (see, e.g. para. 3.6 WIPO Overview 2.0).
The question thus appears to be whether the disputed domain name can be considered to have been registered in bad faith in December 2008 at the very earliest. A majority of the Panel holds that the concept of bad faith has evolved over the years, in particular with the opportunities made possible thanks to the technology and trends taken by the domain name industry. Due to these constant developments, this notion has to be construed in a broader way in 2012 than used to be the case in 1999.
Bad faith should in particular be construed with regards to a systematic interpretation of the Policy. To that regard, it is to be kept in mind that Policy, paragraph 2(d) provides that “[…] it is your responsibility to determine whether your domain name registration infringes or violate someone else’s rights”.
This representation certainly proves relevant with regards to professional domain name registrants, who can therefore not merely allege that the registration occurs through a process of automated bulk transfer of domain names to evade a potential finding of bad faith registration. Put another way, faulty ignorance should not be an excuse to a finding of bad faith registration when the Respondent appears to be a professional domain name registrant. The majority of the Panel to the contrary holds that the concept of willful blindness developed by some panels provides a useful tool to assess the finding of a bad faith registration under such circumstances. According to this theory, grounded upon Policy, paragraph 2(d) quoted above, “[…] a respondent's registration of large numbers of domain names through automated processes, with no appropriate mechanism for ascertaining whether these may be identical or confusingly similar to such trademarks, may support a finding of bad faith. Panels holding that a respondent must accept the consequences of turning a blind eye to any third-party trademarks through failure to conduct adequate searches have tended to limit the application of this principle to cases in which the respondent is a professional domain name registrant […]” (see, e.g., para. 3.4 WIPO Overview 2.0).
In the present case, the Respondent has not satisfied its burden under Policy, paragraph 2(d). A majority of the Panel finds is hard to believe that, in the end of December 2008, a professional domain name registrant such as the Respondent could not have been aware of the Complainant’s trademark, all the more than the Complainant’s website appears particularly high in Google natural search results when one types the term “mazuma” in the search engine. Assuming that the Respondent is an internal unit of Internet Reit, the holding of several decisions against Internet Reit certainly does not appear to favor the Respondent (see, e.g., E and Mr. Stephane Romanyszyn v. Internet Reit Inc. / Domain Administrator,WIPO Case No. D2008-1001 or Pieter de Haan v. Orville Smith Ltd,WIPO Case No. DNL2008-0017, where the original registrant proved to be Internet Reit).
Taken into account what precedes, the majority of the Panel considers the disputed domain name to have been registered and to be used in bad faith. 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 disputed domain name be transferred to the Complainant.
Philippe Gilliéron
Presiding Panelist
M. Scott Donahey
Panelist (concurring)
Diane Cabell
Panelist (Dissenting)
Dated: May 22, 2012 Concurring Opinion
I (Scott Donahey) concur in the result, but believe that bad faith registration and use is a unitary concept.
M. Scott Donahey
Panelist (concurring) Dissenting Opinion
The dissenting Panelist finds ample evidence of bad faith use, but an insufficient basis to find bad faith registration. My interpretation of Section 4(a) is that the requirements are separate elements. “Mazuma” is a common word in Yiddish meaning "cash" or "money" as can be determined by any online Yiddish dictionary. This Panelist would not require domain purchasers to search all of the world's trademark databases for the word "cash" prior to acquiring it as a domain name. Common dictionary terms most certainly appear in many trademarks but the point is that common words are fully capable of being used in a descriptive or fair use manner that would not violate the UDRP. Hence, in order to find for a Complainant, I expect some indication that this particular mark owner was specifically targeted in the acquisition. I am not persuaded that the proximity in time between acquisition and bad faith use is sufficient for that purpose and that is the only evidence provided other than the subsequent bad faith use. By now, we are familiar with the use of domain names as parking sites and the fact that links are largely generated by third party vendors using algorithms based on user search habits which frequently generate links to mark owners and their competitors. Domain name owners are certainly responsible for the infringement-prone consequences of relying on such services, but that is a question of bad faith use and is not determinative, in my humble opinion, of bad faith registration.
Diane Cabell
Panelist (Dissenting)
Dated: May 22, 2012
Full & Egal Universal Law Academy