Complainant is Fotocom Société Anonyme of Ottignies-Louvain-la-Neuve, Belgium, represented by De Wolf & Partners, Belgium.
Respondent is PrivateName Services Inc. of Vancouver, British Columbia, Canada / Werner A. Krachtus, motiondrive AG of Neustadt an der Waldnaab, Germany, represented by Bettinger Schneider Schramm Patent-und Rechtsanwälte, Germany. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with PSI-USA, Inc. dba Domain Robot (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 9, 2014. On October 9, 2014, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On October 10, 2014, the Registrar transmitted to the Center by e-mail its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an e-mail communication to Complainant on October 20, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 24, 2014. Complainant filed a further amended Complaint on October 30, 2014.
The Center verified that the Complaint together with the amended Complaints 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 October 31, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response November 20, 2014. The Response was filed with the Center November 20, 2014.
The Center appointed Robert A. Badgley, Andrew D. S. Lothian and Alexander Duisberg as panelists in this matter on December 22, 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 December 23, 2014, the Center extended the due date for decision to January 12, 2015. 4. Factual Background
Based in Belgium, Complainant describes itself as "a market leader in the online digital photo industry," serving 186 countries. Complainant holds registered Benelux trademark no. 833326 for FOTOCOM and registered Community trademark no. 10500726 for FOTO.COM.
Complainant contends that Respondent is actually controlled or influenced by its former Chief Executive Officer (hereinafter "Panos"). According to the Complaint, Panos was Complainant's CEO from 2005 until 2011, and it is alleged that in 2010 Panos launched a "competing activity" under the name "P." It is further alleged that in 2010, Panos, in his position as CEO, hired a United Kingdom law firm to pursue the acquisition the Domain Name from a domain broker. Complainant alleges that Panos was actually secretly bidding against his own company and that, in February 2010, the Domain Name was sold for USD 1,250,000 to a company, xxlpix Limited, controlled by Panos. Complainant even alleges that the purchase price for the Domain Name Panos surreptitiously acquired was actually financed by Complainant's money, through the "illegal diversion" of company funds "through illegal offshore mechanisms."
The name of the Domain Name registrant changed a number of times from February 2012 until September 2012, when the Domain Name was registered with another registrar under a "privacy registration service."
Complainant alleges that on October 15, 2014, six days after it filed the initial Complaint in this case, it received an e-mail from Werner A. Krachtus, CEO of motiondrive AG, advising that he was the real registrant of the Domain Name, having acquired it on or around September 4, 2012 at a "domain marketplace." According to the e-mail, as alleged by Complainant, the Domain Name had resolved to a parking page for two years but motiondrive AG plans to launch a website using the Domain Name. In the meantime, the e‑mail allegedly states, motiondrive AG had concluded an agreement to rent the Domain Name to a third party for three months.
Complainant alleges that, notwithstanding his e-mail, "it is obvious that Mr. Krachtus is not the real registrant" of the Domain Name. On October 22, 2014, Complainant sent a letter to Mr. Krachtus which "gave him the opportunity to demonstrate his good faith." The letter contained a host of questions and requests for documents, including the alleged rental agreement, proof of payment by motiondrive AG to the Domain Name seller, and a copy of the parking agreement. Complainant alleges that Mr. Krachtus refused to provide the requested information and documents. Based in part on this refusal, Complainant maintains that Panos "is still the real owner of the Domain Name."
According to Complainant, the Domain Name currently resolves to a parking website which provides hyperlinks to third-party websites offering goods in direct competition with Complainant.
Respondent motiondrive AG describes itself as "a full service IT provider active in the photo business," having "developed software for over 10 years with a focus on image processing and print data generation." Respondent owns Community trademark 5009089 for PHOTOBANK, registered in July 2007. Respondent contends that its PHOTOBOOK computer system "processes up to 10,000 customer orders for photo books and photo-related products per day." Its turnover from such activities has surpassed EUR 1,500,000 annually since 2009.
Respondent also owns Community trademarks PHOTOFRAME, PHOTOMEMORY, and MYPHOTOBOOK, registered in September 2006, September 2007, and February 2013, respectively. Respondent's CEO Krachtus is also CEO of Fomanu AG, which company operates a website at (translated from the German as "photo book" in English) where consumers may order photo books, calendars, and related software.
According to Respondent, it purchased the Domain Name for more than EUR 1,000,000 on September 4, 2012, and confirmation that the Domain Name was registered to Respondent was provided on September 11, 2012. Respondent CEO Krachtus swears in an affidavit that he had no knowledge of Panos, and that he and Respondent dealt exclusively with intermediary DomainHoldings, which acted on behalf of the undisclosed prior owner of the Domain Name.
Respondent claims that it registered the Domain Name because of its perceived value as a platform for Respondent's various products, including photo books, photo calendars, photo mugs, and the like. Respondent asserts that it is in the process of developing a comprehensive website, rather than releasing a website on a piecemeal basis, for its various photo-related offerings. Respondent annexed to its Response various invoices from IT consultants to Respondent in 2013 and 2014. In the meantime, Respondent states, it has parked the Domain Name at a site which derives pay-per-click ("PPC") revenues on the strength of the popular generic word "photo". Respondent adds that it had sought to enter into a three-month lease of the Domain Name with a third party while the website was being developed, but the lease negotiations have borne no fruit to date. 5. Parties' Contentions A. Complainant
Complainant's main arguments are reflected in the "Factual Background" section above and will not be repeated here. In short, Complainant asserts that its former CEO Panos registered the Domain Name for his own benefit under false pretenses in February 2010, and that since that time any and all changes in the registration information surrounding the Domain Name have been ruses. Complainant alleges that the current registrant, Respondent motiondrive AG, is in reality Panos in disguise. Complainant maintains that it has adequately proven all three elements required under the Policy for a transfer of the Domain Name. B. Respondent
According to Respondent, Complainant is engaged in "a delusional crusade." Respondent asserts that it has carried on a photo-related business for ten years, and is a bona fide purchaser of the Domain Name in an arm's-length transaction with no knowledge of Panos or the troubles Complainant allegedly has had with Panos. Respondent holds several "photo"-formative trademarks and asserts that it acquired the Domain Name for its strong generic value as well. Respondent asks the Panel to declare Complainant to have engaged in Reverse Domain Name Hijacking for its fruitless and baseless attempt to wrest a valuable Domain Name from its rightful owner. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name at issue in this case:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel declines to address this issue because it is unnecessary to do so in order to decide this case. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in a Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel unanimously finds that Respondent has a legitimate interest in the Domain Name. There is evidence in the record that Respondent, a viable company for several years and the holder of several trademarks containing the word "PHOTO," purchased the Domain Name for more than EUR 1,000,000 in September 2012, and there is record evidence of Respondent's efforts to set up a comprehensive website in aid of its sundry photo-related commercial activities. There is, by contrast, no evidence in the record that Respondent targeted Complainant or its FOTO-formative trademarks, and no evidence that Respondent colluded with (or even knew of) Complainant's former CEO Panos. The Panel therefore concludes that Respondent enjoys rights or legitimate interests squarely within the meaning of Policy paragraph 4(c)(i).
Accordingly, Complainant has failed to satisfy Policy paragraph 4(a)(ii) and this Complaint must therefore be denied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, "in particular but without limitation," are evidence of the registration and use of the Domain Name in "bad faith":
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.
The Panel need not do so, but would also find Complainant to have failed to prove bad faith registration and use for essentially the same reasons as were articulated above under the "Rights or Legitimate Interests" head.
The Panel notes finally that this Complaint was ill-suited for resolution under the Policy, which is designed to address clear cases of cybersquatting. See The T, LLC v. Jeffrey S. Poploff,WIPO Case No. D2000-1470 ("This Panel is not a general domain name court, and the Policy is not designed to adjudicate all disputes of any kind that relate in any way to domain names. Rather, the Policy is narrowly crafted to apply to a particular type of abusive cybersquatting.").
Having said that, the Panel is not inclined to declare Complainant guilty of Reverse Domain Name Hijacking. 7. Decision
For the foregoing reasons, the Complaint is denied.
Robert A. Badgley
Presiding Panelist
Andrew D. S. Lothian
Panelist
Alexander Duisberg
Panelist
Date: January 16, 2015
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