The Complainant is Sumol+Compal Marcas, S.A. of Carnaxide, Portugal, represented by J. Pereira da Cruz, S.A., Portugal.
The Respondent is BuyD of Waltham, Massachusetts, United States of America, represented by NameMedia, Inc., United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2013. On March 27, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on April 4, 2013.
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 April 5, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response April 25, 2013. The Response was filed with the Center April 25, 2013.
The Center appointed John Swinson, Manoel J. Pereira Dos Santos and G. Gervaise Davis III as panelists in this matter on May 29, 2013. 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. 4. Factual Background
The Complainant is Sumol+Compal Marcas, S.A, a company incorporated in Portgual. The Complainant was created in 2009 through the union of two companies, Sumolis and Compal. The Complainant is a leading manufacturer of non-alcoholic beverages in Portugal.
The Complainant is the owner of numerous trade mark registrations, both word and composite, for FRIZE (the “Trade Mark”). The earliest of these registrations was granted on May 6, 1998 in Portugal.
The Respondent is BuyD which, since 1999, has been in the business of registering domain names that become available when an existing registration expires. The Respondent maintains a large portfolio of domain names, some of which it has acquired for the purposes of resale.
The Respondent registered the Disputed Domain Name on January 8, 2004. The website at the Disputed Domain Name resolves to a page which states that the Disputed Domain Name is for sale. Clicking on the links available on the website displays pages of “sponsored listings”. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions are as follows.
The Disputed Domain Name is identical to the Trade Mark.
The Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant has not authorized the Respondent to use the Trade Mark. The Respondent has only demonstrated a “speculative interest” in the maintenance of the Disputed Domain Name, insofar as it is available for sale.
The Trade Mark is well-known and the Respondent cannot allege that it has no knowledge of the Trade Mark. The Respondent intends to do one of the following: (a) sell the Disputed Domain Name to its legitimate owner, for “abusive financial consideration”, or (b) use the Disputed Domain Name for its benefit and to the detriment of the Complainant, by trying to “fraudulently affect” the Complainant’s image. B. Respondent
The Respondent submitted a detailed and well-argued Response. The Respondent’s contentions in summary are as follows.
The Respondent does not dispute that the Trade Mark and the Disputed Domain Name are identical.
The Respondent submits that it has the right to register and use the Disputed Domain Name, because the term “frize” is a common surname and a dictionary term, and is used by a variety of other parties. The Respondent submits that is was entitled to register and use the Disputed Domain Name on a “first come, first served” basis.
The website at the Disputed Domain Name provides links to white pages, vanity e-mail services, social media and other ancestry and surname tools. It does not offer links to websites of the Complainant’s competitors.
The Respondent did not register the Disputed Domain Name for the purpose of selling it to a particular entity (including the Complainant), or with the Trade Mark in mind.
The Respondent took affirmative steps to ensure that its registration and use of the Disputed Domain Name would not impinge on any party’s trade mark rights.
The Respondent did not register the Disputed Domain Name to disrupt the Complainant’s business, or to prevent the Complainant from reflecting the Trade Mark in a domain name. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or 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. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Disputed Domain Name is identical to the Trade Mark, apart from the “.com”. The Trade Mark is a registered mark, first registered in 1998, and owned by the Complainant.
The Complainant succeeds on the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case. This finding is based upon the following:
- there is no evidence that the Respondent is commonly known by the Disputed Domain Name; and
- there is no evidence that the Respondent has any connection with the Trade Mark and the Complainant has not given the Respondent any permission to use the Trade Mark.
The Respondent seeks to overcome the Complainant’s prima facie case by showing that it is using the Disputed Domain Name in connection with a bona fide business. The CEO of the Respondent provides affidavit evidence that the Respondent’s business involves registering and maintaining “domain names that incorporate common and/or generic dictionary words, phrases, acronyms, abbreviations and/or descriptive terms for which the available evidence suggests no single party has exclusive rights”, some of which are offered for sale to the general public.
The Respondent submits that using the Disputed Domain Name to direct traffic to a website with sponsored links is a legitimate use within the terms of the Policy.
There are a number of UDRP decisions which have addressed the resale of domain names, or the use of domain names for websites with advertising or PPC links. The panel in Media General Communications, Inc. v Rarenames, WebReg,WIPO Case No. 2006-0964 summarized some of the relevant principles as follows:
“These practices are most likely to be deemed legitimate under the Policy when:
- the respondent regularly engages in the business of registering and reselling domain names, and/or using them to display advertising links;
- the respondent makes good-faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others;
- the domain name in question is a “dictionary word” or a generic or descriptive phrase;
- the domain name is not identical or confusingly similar to a famous or distinctive trademark; and
- there is no evidence that the respondent had actual knowledge of the complainant’s mark.”
Here, the Respondent is clearly in the business of registering and reselling domain names, as well as using them to display advertising links. According to the affidavit of the Respondent’s CEO, the Respondent has made some efforts to avoid registering, using, and selling domain names that correspond to the trademarks of others. There is no evidence before the Panel that allows the Panel to conclude on the facts of this case that the Respondent had actual knowledge of the Complainant’s Trade Mark at the time the Respondent registered the disputed domain name.
However, there is insufficient evidence before the Panel to establish that “frize” is a dictionary word, a generic phrase, or common surname. The Panel has conducted its own investigations (as it is entitled to) and has not found an entry for “frize” in any dictionary in which the Panel has looked.
Further, on the facts of this case, the Panel is of the view that the efforts the Respondent made to avoid registering a domain name that is identical to the trade mark of another fall short of “good-faith efforts” (see further discussion in relation to bad faith below).
The Respondent is using the Disputed Domain Name on a website with PPC links that have little relevance to the Respondent’s asserted dictionary meaning or surname. The Respondent has had no other use or planned use of the term “frize”, and is offering the Disputed Domain Name for sale.
In light of the above, the Respondent has not demonstrated that the Respondent has rights or legitimate interests in respect of the Disputed Domain Name. The Respondent has not rebutted the Complainant’s prima facie case. The Complainant succeeds on the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
Cases involving registration of domain names by professional domain name registrants, such as the Respondent, involve many different issues. Each case must be considered on its own merits; in particular, consideration must be given to the context of the domain name and trade mark concerned, and the Respondent’s conduct at the time of registration.
The affidavit of the Respondent’s CEO states that the Respondent has “developed proprietary, proactive technology” to avoid registering, using, and selling domain names that correspond to trade marks. It states that this technology searches the United States Patent and Trademark Office. As the Complainant had no registered United States trade marks at the time the Disputed Domain Name was registered, any search of the United States Trade Mark Office would have produced nil results. However, the Internet is global and, as a professional domain name trader, it is this Panel’s view that the Respondent should have engaged in broader searches. Accordingly, the Respondent should have been aware of the Complainant and the Trade Mark when it registered the Disputed Domain Name. Even brief enquiries (e.g. a simple Google search) would have led the Respondent to the Complainant. On the evidence provided, the Panel concludes that the Respondent was “willfully blind” in failing to make these enquiries (in the sense discussed in cases such as Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304 (February 24, 2006), mVisible Technologies Inc. v. Navigation Catalyst Systems Inc.,WIPO Case No. D2007-1141 (November 30, 2007), and Grundfos A/S v. Texas International Property Associates,WIPO Case No. D2007-1448 (December 14, 2007).
Furthermore, while the Respondent may not have had actual knowledge of the Complainant, it would have been aware of the traffic that the Disputed Domain Name was generating at the time it decided to acquire the Disputed Domain Name. It would be implausible that a professional domain name trader such as the Respondent would not have reviewed traffic details and search engine results before valuing and acquiring the Disputed Domain Name.
The Panel finds that the following further evidence bad faith registration:
- The Respondent is not using the website at the Disputed Domain Name to advertise products that compete with the Complainant’s products. However, the Respondent would be receiving Pay-Per-Click revenue from the website. In light of this, the Panel infers that the Disputed Domain Name was registered, at least in part, in order to profit from the trade mark value in the name.
- Although the website of the Disputed Domain Name purports to provide a link to “Vanity E-mail” services, none of the links on the website are being used for services related to “frize” as a surname (e.g. the provision of a vanity email service for a Mr. Frize).
The Panel finds, taking account of all of the circumstances of the case, the Respondent has registered and is using the Disputed Domain Name in bad faith. The third element of the Policy is satisfied.
The Complainant made submissions regarding the Respondent’s offer of the Disputed Domain Name for sale. This offer does not appear to be directed to the Complainant. The Panel takes the view that the Respondent’s offering of the disputed domain name for sale in the present case does not constitute bad faith. If the Complainant and the Trade Mark were famous or very well-known, the Panel may have taken a different view on this point. 7. Decision
For 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.
John Swinson
Presiding Panelist
Manoel J. Pereira Dos Santos
Panelist
G. Gervaise Davis III
Panelist
Date: June 12, 2013
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