The Complainant is Groupe Mutuel of Martigny, Switzerland, represented by Schneider Feldmann AG, Switzerland.
The Respondent is Al Perkins of Jersey, United Kingdom of Great Britain and Northern Ireland (“UK”). 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with D LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 12, 2013. On September 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 19, 2013, 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.
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 September 24, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 14, 2013. The Response was filed with the Center on October 15, 2013.
The Center appointed John Swinson as the sole panelist in this matter on October 25, 2013. 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 Groupe Mutuel, an insurance company that is mainly active in Switzerland, with projects in other European Community countries.
The Complainant owns Swiss (registration No. 531331 of November 24, 2004) and international (registration No. 847556 of March 8, 2005) registered trademarks for the word mark GROUPE MUTUEL (the “Trademark”).
The Complainant also owns the following domain names: , , and . The Complainant owned the Disputed Domain Name until 2008.
The Respondent is an individual, Al Perkins of the UK.
The Respondent registered the Disputed Domain Name with the Registrar on January 25, 2010. The website at the Disputed Domain Name currently redirects to . The website states that “The World’s First & Only Unique Property Portal” is “Coming Soon”. Internet users can register their interest by submitting their email address. 5. Parties’ Contentions A. Complainant
The Complainant makes the following submissions: Identical or Confusingly Similar
The Disputed Domain Name is identical to the firm name and the Trademark of the Complainant. Rights or Legitimate Interests
The Respondent has not used the Disputed Domain Name in connection with a bona fide offering of goods or services. The Respondent has nothing to do with insurance. He is the owner of a substantial number of domain names. The WhoIs record for the Disputed Domain Name advertises that it is for sale. The Complainant provided evidence of the Respondent’s advertisement, which reads:
“GroupeM is for sale. The owner of the domain you are researching has it listed for sale – Buy GroupeM now.”
The quantity of domain names owned by the Respondent evidences that he is in the business of registering important domain names and then selling them, without using those names for his own business. This is supported by the Respondent’s offer to sell the Disputed Domain Name to the Complainant for a price far in excess of the cost of registration.
The Respondent is not, and has not been, commonly known by the Disputed Domain Name. Registered and Used in Bad Faith
The Respondent registered the Disputed Domain Name after the Complainant had been in business for a substantial period, and had registered a number of trademarks incorporating “Groupe Mutuel”. The Respondent could have discovered the existence of the Complainant by conducting simple searches online.
Prior to the filing of the Complaint, there was some correspondence between the parties in which the Complainant advised the Respondent of its trademarks and asked that the Disputed Domain Name be transferred. In a later email, the Complainant offered USD 500 to purchase the Disputed Domain Name. The Respondent declined this offer and requested USD 6,800.
The Respondent acquired the Disputed Domain Name primarily for the purpose of selling it. This is supported by the Respondent’s substantial domain name portfolio and his offer to sell the Disputed Domain Name for a price in excess of the cost of registration.
The Respondent cannot rely on the argument that the Trademark is descriptive and/or generic. The Respondent has registered “swathes” of domain names for resale (probably using automated programs), with no regard as to whether they may be identical to trademarks. This type of practice deprives trademark owners of the ability to register domain names reflecting their marks. B. Respondent
The Respondent makes the following submissions: Identical or Confusingly Similar
The Respondent does not refute that the Disputed Domain Name is identical to the Complainant’s Trademark. Rights or Legitimate Interests
“Groupe Mutuel” is a generic term in France (it translates to “mutual group”). The Respondent is a domain name trader and owns many foreign generic domain names. The Respondent submits that it is “ridiculous” to suggest that he should have to conduct Google searches of the domain names that he registers.
The website at the Disputed Domain Name is being used as a holding page, which is not generating any profit. The Respondent is able to sell the Disputed Domain Name for whatever price he determines it is worth. The Respondent is not interfering with the Trademark. Registered and Used in Bad Faith
The Complainant is attempting to acquire the Disputed Domain Name for free. The Respondent had never heard of the Complainant before it began receiving correspondence in relation to the Disputed Domain Name (which it had held for three years prior to being contacted by the Complainant).
The Complainant cannot claim rights in dictionary words. The Respondent denies that he uses automated programs to obtain domain names.
The Complainant has not owned the Disputed Domain Name since 2008 (the Respondent acquired the Disputed Domain Name in 2010). The Complainant has not explained why it waited so long to attempt to retrieve the Disputed Domain Name. Reverse Domain Name Hijacking
The Complainant is attempting to engage in reverse domain name hijacking. The Complainant only filed a Complaint after attempting to purchase the Disputed Domain Name for below its value. 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 trademark 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 one of the Complainant’s trademark.
The Disputed Domain Name is identical to the Complainant’s Trademark. The addition of generic top-level domains (i.e. the “.com” suffix) can be disregarded when comparing the similarities between a domain name and a trademark (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374).
Accordingly, 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 on the following:
- there is no evidence that the Respondent is commonly known by the Disputed Domain Name;
- the Disputed Domain Name automatically redirects to another website, that appears to have no possible connection with the Disputed Domain Name; and
- there is no evidence that the Complainant has given the Respondent any permission to use the Trademark.
It appears that 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 Respondent submits that he is a domain name trader that owns many generic foreign domain names.
There are a number of UDRP decisions addressing the resale of domain names, or the use of domain names for websites with advertising. Some of the relevant principles were summarized in Media General Communications, Inc. v Rarenames, WebReg,WIPO Case No. D2006-0964:
“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 in the business of registering and reselling domain names (he has identified himself as a “domain name trader”). The Respondent has not submitted any evidence of good-faith efforts that he has made to avoid registering, using, and selling domain names that correspond to the trademarks of others (in fact, he submits that it is “ridiculous” to suggest that he should have to conduct searches of the domain names he registers). The Panel notes that as the Complainant is the leading health insurer in western Switzerland, both the Complainant and the Trademark are quite famous (at least in Switzerland, and likely throughout Europe). As such, it is likely that the Respondent would have been aware of the Trademark at the time the Respondent registered the Disputed Domain Name. The Respondent has submitted that “Groupe Mutuel” is a generic term (translated to “mutual group”). The Panel finds that this factor alone is insufficient to legitimize the Respondent’s registration of the Disputed Domain Name. The Panel further notes that in French the terms “groupe” and “mutuel” have a dictionary meaning, however the expression “groupe mutuel” in French has no generic meaning. Finally, the Respondent is using the Disputed Domain Name to divert to a website advertising a “Unique Property Portal”. This does not appear to relate to any dictionary meaning of “mutual group”. In light of the above, the Panel finds that the Respondent is not using the Disputed Domain Name in connection with a bona fide business.
The Respondent has not demonstrated that he 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.
Paragraph 4(b)(i) of the Policy provides that bad faith can be evidenced where there are “circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly associated to the domain name”.
This provision requires that the Respondent have knowledge of the Complainant and of the Trademark, given that it applies in case of acquisition primarily for a sale (or another transaction) to the Complainant or to a competitor of the Complainant. Here, given the number of domain names that the Respondent has registered (he submitted that he owns “thousands of domains”), he appears to be a professional domain name registrant. Accordingly, the Respondent should have been aware of the Complainant and the Trademark when it registered the Disputed Domain Name. Even brief enquiries (such as a simple Google search) would have led the Respondent to the Complainant. As discussed above, it is not the Respondent’s practice to make such enquiries. The Panel concludes that the Respondent was “wilfully blind” in failing to make these enquiries (see e.g. Sumol+Compal Marcas, S.A. v. BuyD,WIPO Case No. D2013-0566 and cases cited therein).
Additionally, as this Panel has previously stated: “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” (see Sumol+Compal Marcas, S.A. v. BuyD,WIPO Case No. D2013-0566).
The Complainant provided evidence that the Disputed Domain Name is for sale. The WhoIs record states that “GroupeM is for sale” and provides a facility for interested parties to make an offer.
The Respondent refused the Complainant’s offer to purchase the Disputed Domain Name for USD 500 and asked the Complainant for USD 6,800. The Respondent has not provided any evidence that USD 6,800 represents its out-of-pocket costs in relation to the Disputed Domain Name.
Out-of-pocket costs include the costs of obtaining, registering and maintaining domain name. This issue of “excessive” out-of-pocket costs is considered on a case-by-case basis. In the Panel’s experience, USD 6,800 would greatly exceed the Respondent’s out-of-pocket costs.
The Panel finds that the Respondent’s offer to sell the Disputed Domain Name for an amount in excess of its out-of-pocket costs is evidence of registration and use of the Disputed Domain Name in bad faith, as per paragraph 4(b)(i) of the Policy.
The Panel finds, taking account 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. D. Reverse Domain Name Hijacking
The Respondent alleged that the Complainant engaged in reverse domain name hijacking. In light of the Panel’s findings above, the Panel concludes that the Complaint was not brought in bad faith and thus does not constitute reverse domain name hijacking. 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
Sole Panelist
Date: November 6, 2013
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