The Complainant is Bespoke Services Group S.A. of Genève, Switzerland, represented by SBKG & associés - A.A.R.P.I., France.
The Respondent is Garth Piesse of Palmerston North, New Zealand, represented by Adlex Solicitors, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with InsaneNames LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 8, 2014. On September 8, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 9, 2014, 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.
On September 10, 2014, the Center received an email communication from Adlex Solicitors informing the Center that they are the legal authorized representative of the Respondent.
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 September 16, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 6, 2014. The Response was filed with the Center on October 1, 2014.
The Center appointed James A. Barker, Nathalie Dreyfus and The Hon Neil Brown Q.C. as panelists in this matter on October 17, 2014. 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 October 22, 2014, the Complainant made a supplemental filing to re-argue the grounds of its Complaint. On October 23, 2014 the Respondent replied. The Respondent objected to the Complainant's filing and requested that it be allowed to respond if the Panel decided to admit the Complainant's supplemental filing. 4. Factual Background
The Complainant has a registered international mark that incorporates the word "bespoke", and is followed by design that incorporates the letters BSPK within a small box. That mark was registered in 2013. The Complainant provides no evidence of its reputation. The Complaint attaches what appears to be a business plan or description of the services it provides. Among other things, this document states that "BESPOKE is a compelling alternative to American Express, Diners and other premium cards from generalist networks."
The disputed domain name was registered in May 2014.
The Complainant provides evidence that the disputed domain name reverted to a parking website. That website includes a variety of links to a miscellany of subjects, including "Jobs", "Real Estate", "Insurance", "Finance", and "Games", among other things. When the link for "Finance" is clicked, a page of sponsored links appears, including to various banking and financial services.
The word "bespoke" is a common English word. D defines it (as a noun) as "(of clothes) made to individual order" and "making or selling such clothes". 5. Parties' Contentions A. Complainant
The Complainant says that the disputed domain name is identical or confusingly similar to its mark. The Complainant's intended use of that mark is in connection with "premium services relating to bank cards".
The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no relationship with the Complainant or permission to use its mark.
The Complainant also says that the Respondent has registered and used the disputed domain name in bad faith. The Complainant contends that the Respondent registered the disputed domain name for the purpose of attracting Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's trademark. The Complainant says that the Respondent had knowledge of its mark, which is evidenced by the fact that the disputed domain name is used in reference to services provided by the Complainant. B. Respondent
The Respondent denies the allegations against him.
The Respondent says that the Complainant has provided no evidence of actual trade under the name "bespoke", and has misleadingly sought to give the impression that it does trade under that name. The Complainant's business plan (as attached to the Complaint) states that the project's domain name is but this domain name simply resolves to a parking page with links to websites selling baseball caps and the like. The Respondent provides evidence that there is no mention of the Complainant on the first page of either "G" and "G" searches for "bespoke" plus "card". These searches mainly bring up references to personalised stationery services, and a third party "The Bespoke Privilege Card", apparently unrelated to the Complainant.
The Respondent says that the relevant component of the Complainant's mark is BESPOKE BSPK and, when that mark is compared to the disputed domain name, there is no confusing similarity. Marks which include common descriptive terms are not confusingly similar to domain names consisting of such terms.
The Respondent says that he is using the disputed domain name in connection with a bona fide offering of goods or services. The Respondent has registered the disputed domain name in connection with its dictionary meaning.
The Respondent denies that he registered and has used the disputed domain name in bad faith. The Respondent is in the business of buying, selling and monetizing generic domain names. The Respondent already owned a number of "bespoke-related" domain names. The Respondent provides a list of domain names which incorporate that term which he claims to own, and the dates on which they were registered. These include , , and .
The Respondent says that there are a vast number of third party businesses that use the term "bespoke" as part of their name. The Respondent provides the results of a search via "G" which provides a list of such business, including businesses in the finance sector.
The Respondent says that he purchased the disputed domain name ultimately to sell it, and says that he has received a large number of enquiries about the purchase of it. He was not aware of the Complainant when he registered the disputed domain name, and nor was there any reason he should have been.
The Respondent says the Complainant has engaged in reverse domain name hijacking. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(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 was registered and is being used in bad faith.
These elements are discussed in turn below, immediately following consideration of whether to admit the Complainant's supplemental filing. A. Supplemental Filing
Paragraph 15 of the Rules prescribes that the Panel shall decide a complaint on the basis of the statements made and documents submitted and in accordance with the Policy, the Rules and any principles of law that it deems applicable. As noted above, the Center received a further submission from the Complainant, which sought to re-argue matters addressed in the Complaint.
This filing was not requested by the Panel pursuant to paragraph 12 of the Rules. The objectives of the Policy and the Rules is to ensure a speedy and inexpensive determination of the relevant issues. Unless a compelling reason is presented, such as new facts relevant to the determination, that requires a response, it would be contrary to these objectives to invite or allow supplementary pleadings and evidence. Each party is given a single opportunity to present its case. If it fails to do so, there must be compelling reasons to invite further contributions.
The Complainant provided no explanation for why it made the supplemental filing. The Panel does not consider there is a compelling reason to consider it. B. Identical or Confusingly Similar
The Complainant is the registered owner of a trademark which prominently includes the word "bespoke" and a design element which includes the letters "b", "s", "p" and "k" within a square. If the letters "b", "s", "p" and "k" are ignored, the disputed domain name is relevantly identical to the Complainant's mark.
The Respondent argued that those additional letters should not be ignored and that the disputed domain name could not be seen as confusingly similar to the Complainant's mark as a whole.
Whether a domain name is identical or confusingly similar to a mark is to be judged against the dominant textual elements of a complainant's mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition("WIPO Overview 2.0"), paragraph 1.1; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp.,WIPO Case No. D2001-0031. Whether particular text is dominant is something that can only be judged on a case-by-case basis. But the concept of a dominant text clearly implies that other components of the mark may not be sufficiently prominent for the purpose of comparison.
One of the majority Panelists does not consider that the smaller letters "b", "s", "p", "k", as included in the Complainant's mark, are sufficiently prominent for this purpose. As they appear in that mark, those letters form part of a relatively small design element, separately appended to the word "bespoke". The word "bespoke" is the dominantly appearing element. For this reason, and on balance, one of the majority Panelists finds that the disputed domain name is relevantly identical to the Complainant's mark. Being identical, it is not also necessary to consider whether the disputed domain name is confusingly similar.
The other majority Panelist would however find that the disputed domain name is not identical or confusingly similar to the Complainant's mark. This Panelist considers that the Complainant's trademark is not for BESPOKE, but is instead for BESPOKE BSPK. On this basis, the disputed domain name is not identical to that mark. Neither would this Panelist find that the disputed domain name is confusingly similar. No-one would think that the disputed domain name was invoking or referencing the Complainant's mark because no-one would think the word "bespoke" in the disputed domain name, which is a very generic, dictionary word, was referring to the Complainant. The Complainant has designated itself as BESPOKE BSPK and no other. C. Rights or Legitimate Interests
It is for the Complainant to establish at least a prima facie case, that the Respondent has no rights or legitimate interests in the disputed domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455.
The Complainant makes a very brief case against the Respondent on this ground. The Complainant says that the Respondent's name has no resemblance to the word "bespoke", and the Respondent is not permitted by the Complainant to use its mark.
The difficulty for the Complainant is that "Common words and descriptive terms are legitimately subject to registration as domain names on a 'first come, first served' basis." Asphalt Research Technology, Inc. v. National Press & Publishing, Inc.,WIPO Case No. D2000-1005. "Bespoke" is a common English word.
The "first come, first served" rule is subject to an exception. A respondent may not have rights or legitimate interests if it registers a domain name to unfairly exploit a complainant's mark. The Complainant suggests that this is what the Respondent did.
The Complainant provides little evidence to support this allegation. There are strong factors against this allegation:
Firstly, the descriptive nature of this term indicates that it is not distinctively associated with the Complainant.
Secondly, and related to the first factor, the Respondent points to substantial third party use of this term. This evidence reinforces the conclusion that the Complainant has no special claim on the term "bespoke".
Thirdly, there is no evidence that the Respondent, in fact, sought to use the disputed domain name to trade on the Complainant's mark. Indeed, there was no good evidence that the Respondent was either aware of that mark or aware of the Complainant. The Respondent claimed that the Complainant's BESPOKE BSPK trademark was registered in connection with only a proposed business idea, and that the Complainant does not actually trade using that mark. The Complaint includes no clear evidence to the contrary. The Complaint includes what appears to be a business plan for the use of its trademark. It does not include evidence of actual trade or of its reputation more generally, to suggest that the Respondent might reasonably have been aware of it.
Fourthly, the Respondent has his address in New Zealand. The Complainant has its address in Switzerland. The Complainant's mark is registered with the United States Patent and Trademark Office (USPTO). The Complainant provided no evidence of its reputation in New Zealand or anywhere else. Some panels have found constructive bad faith, based on a Complainant's registered mark with the USPTO and in cases where both are resident in the USA. However, as noted in the WIPO Overview 2.0, panels have mostly declined to introduce the USA concept of constructive (deemed) notice per se into the Policy. For this reason, the Panel does not consider, as the Complainant suggests, that the Policy includes some obligation for the Respondent to have undertaken a trademark search.
The majority of the Panel therefore finds that the Complainant has failed to make out its case under paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
To support its case that the Respondent relevantly acted in bad faith, the Complainant asserts that the Respondent knew of its mark, evidenced in part by the references to the services provided by the Complainant.
But a review of the Respondent's website suggests no such thing. The Respondent's website is a parking page which includes a miscellany of links. Some of those links refer generally to subjects such as finance. It is hardly a surprise that those links would refer to websites dealing generally with financial services. The Respondent's website does not appear to refer to the Complainant itself, or in any obvious way to the particular services the Complainant proposes to offer.
The Complainant also claims that the use of the disputed domain name in connection with a "parking" website is itself evidence of bad faith. The Complainant refers to United States Cellular Corporation v. Ready Asset, WIPO Case No. D2014-0644, as support for the proposition that parking sites are generally indicative of bad faith. However in that case, the Complainant had a well-known mark and the panel found that the respondent sought to exploit it in connection with a parking website. There is little such evidence in this case. Further, prior UDRP decisions have not found that mere use of a domain name in connection with a parking website is, by itself, sufficient to establish bad faith. Gold Medal Travel Group plc v. Damir Kruzicevic,WIPO Case No. D2007-1902.
The Respondent has provided a plausible alternative account of its registration of the disputed domain name – that this was in connection with the secondary market for domain names. As noted in previous cases under the Policy, there is nothing inherently wrongful with this activity, in circumstances where a respondent was not seeking to exploit a complainant's trademark. See, e.g., Channel Television Limited v. Legacy Fund LLC / Protected Domain Services Customer ID: R-3108040,WIPO Case No. DTV2011-0008.
The majority of the Panel also finds that the Complainant has failed to establish that the Respondent registered and used the disputed domain name in bad faith. E. Reverse Domain Name Hijacking
The Respondent argues that the Complaint constitutes reverse domain name hijacking against the Respondent. "Allegations of reverse domain name hijacking have been upheld in circumstances where a respondent's use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy." See Rohl, LLC v. ROHL SA,WIPO Case No. D2006-0645. The Panel declines to make such a finding. Although the Complaint is weak, it appears that the Complainant may have misunderstood the requirements of the Policy, rather than being motivated by bad faith. 7. Decision
For the foregoing reasons, the Complaint is denied.
James A. Barker
Presiding Panelist
The Hon Neil Brown Q.C.
Panelist
Nathalie Dreyfus
Panelist (Dissenting)
Date: November 5, 2014 DISSENTING OPINION
With due respect to my distinguished fellow Panelists, I must dissent from virtually all but one conclusion they reached pertaining to the disputed domain name. Identical or Confusingly Similar
The Dissenting Panelist agrees with one of the majority Panelists that the disputed domain name is identical with the trademark in which the Complainant proved it has rights. Rights or Legitimate Interests
As far as the Respondent's rights or legitimate interests are concerned, the Dissenting Panelist disagrees with the majority of the Panel. The majority of the Panel focused on the descriptive nature of the word "bespoke" and therefore its registration as a domain name would be legitimate. However, as it was pointed out, the legitimacy is lost if the Respondent is seeking to exploit the Complainant's trademark.
Firstly, the Complainant has a registered trademark in numerous countries all over the world and the validity of these trademarks is not to be examined by the Panel. The Respondent uses the disputed domain name for pay per click parking pages. It is a commercial use of the domain name, which brings him profits from advertising links related to services similar to those registered under the BESPOKE trademark.
Secondly, the parking page offers links to the Complainant's competitors for services covered under the BESPOKE trademark, like "Finance". Even if the trademark is not used per se, this does not constitute a nominative fair use. On the contrary, in the Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415 it was found more like a deceptive practice:
"Respondent's websites offer links to and advertisements for Complainant's competitors. That does not constitute a nominative fair use; rather, it appears to constitute deceptive bait and switch advertising practices."
Thus, the Dissenting Panelist's opinion is that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Registered and Used in Bad Faith
The Dissenting Panelist thinks that the Respondent registered and used the disputed domain name in bad faith.
Firstly, concerning the Respondent's awareness of the trademark at the moment of the disputed domain name registration, the Dissenting Panelist disagrees with the majority of the Panel. Given the international registration of the Complainant's trademark, a simple search on the WIPO Global Brand Database would have sufficed to reveal it. Furthermore, considering the services referenced by the Respondent on the parking page and the offer of advertising links to the Complainant's competitors, it is very hard to believe that he wasn't aware of the BESPOKE trademark.
Moreover, the Respondent offers the domain name for sale to the public; even if it could be a legitimate activity, it does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent. As it was noted in T, Inc. v. Daniel Deamone,WIPO Case No. D2001-1066, such an offer for sale to the public may nevertheless constitute evidence of bad faith under the Policy:
"Respondent has offered the domain name for sale to the public. There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent. Although Respondent's offer of the domain name for sale was not made specifically to Complainant or its competitor, offers for sale to the public may nevertheless constitute evidence of bad faith under the Policy."
The Dissenting Panelist finds that the Respondent's only interest in buying the disputed domain name was to sell it for valuable consideration in excess of its out-of-pocket expenses, either to the trademark's competitors, or to the trademark owner.
Secondly, as the pay per click parking page brings profits to the Respondent, it represents a commercial use of the domain name. Given the advertising links related to services covered by the BESPOKE trademark, the Dissenting Panelist thinks that the Respondent used the disputed domain name in bad faith.
Therefore, the Dissenting Panelist is of the view that the Complainant adduced sufficient evidences to prove that the disputed domain name has been registered and used in bad faith.
Consequently, the Dissenting Panelist considers that the disputed domain name should have been transferred to the Complainant.
Nathalie Dreyfus
Dissenting Panelist
Date: November 5, 2014
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