The Complainant is Versalis S.p.A. of San Donato Milanese, Italy, represented by Nice srl, Italy.
The Respondent is Bogdan Mykhaylets of Kiev, Ukraine, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 31, 2014. On December 31, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 31, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondent 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 January 13, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response February 2, 2015. The Response was filed with the Center on February 2, 2015.
The Center appointed Alfred Meijboom, Nathalie Dreyfus and The Hon Neil Brown Q.C. as panelists in this matter on March 3, 2015. 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
Complainant is a chemical company and registered owner of the following trademarks for the word VERSALIS:
- Italian trademark with number 0001492464 of January 13, 2012 for goods in class 1;
- International Trademark with registration number 1123081 of May 21, 2012 for goods in classes 1 and 17, designating, inter alia, Ukraine; and
- Community Trademark with number 01590891, registered on June 19, 2013 for goods in classes 1 and 17.
(collectively referred to as the "Trademarks").
Respondent is a domain name investor and trader, who registered the disputed domain name on June 13, 2013. 5. Parties' Contentions A. Complainant
The Complainant claims that it has used the Trademarks and that the disputed domain name is irrefutably confusingly similar to the Trademarks.
Complainant further alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name, which presently resolves to a website which is a mere repository of quotes, developed using an open source content management system, but was a "site for sale" on September 21, 2013. The website links to Facebook and Twitter since the end of August 2013, while in the same period a first contact with Respondent by a third party took place to enquiry if Respondent was interested in selling the disputed domain name which was not used at the time. On September 3, 2013, Respondent required to know the identity of, and authorization by the party offering to buy the disputed domain, as well as acknowledgement "that there is no infringement on their IP by the website and they are the party soliciting the owner to sell them owner's domain." On October 15, 2013, Complainant's outside counsel offered Respondent an amount of EUR 5,000 for the transfer of the disputed domain name, which amount was eventually raised to EUR 6,000. On April 14, 2014, Respondent wrote that he was "ready to enter into a mutually beneficially agreement to transfer the rights to V for 99 thousand euros, or as an option, in a 12-month rent-to-own with 9 thousand euro monthly payments". According to Complainant, this shows that Respondent has clearly registered the disputed domain name with the sole purpose of selling it. There is no evidence of the Respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. The project around the website to which the disputed domain name resolved cannot be deemed valid or legitimate as Respondent was clearly and knowingly violating the Trademarks. Complaint argues that Respondent appears to have registered 893 domain names which he offers for sale. Further, Complainant believes that Respondent has never been commonly known by the disputed domain and is not making a legitimate noncommercial or fair use of the disputed domain name, as that Respondent's project under the disputed domain name is just a basic web site which was for sale until September 2013, and developed with open source tools. This is, according to Complainant, only instrumental for Respondent to speculate on the transfer of the disputed domain name.
Finally, Complainant claims that the disputed domain name should be considered as having been registered and used in bad faith by Respondent as it was registered primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to Complainant or its competitor for valuable consideration in excess of Respondent's out-of-pocket costs directly related to the disputed domain as Respondent claimed EUR 99,000 for the transfer of the disputed domain name. As a consequence of Respondent's acts, the actual registration of the disputed domain name, along with its refusal to sell it at a reasonable price, prevents Complainant from reflecting the Trademarks in a corresponding domain name.
Consequently, Complainant requests the Panel to order the transfer of the disputed domain name to Complainant. B. Respondent
Respondent, having a background in IT security and computer networking, became interested in investing and trading in domain names in 2008. He claims that he has been able, through the acquired knowledge of what makes a valuable domain name, to build through acquisitions on the publicly available aftermarket channels a portfolio of what Respondent believes are highly valuable domain names. This portfolio serves as a solid online brand consulting branch of his online advertising activities, which allows him to having at his disposal a high-marketing potential domain name (that can be easily spelled, is easy to pronounce, easy to remember and has a positive connotation), or assist clients who seek a domain name for their projects, and monetize in good faith the portfolio of domain names through sales and such means as pay-per-click advertising provided by domain monetization platforms in compliance with applicable regulations. Respondent's portfolio of more than 1,000 domain names was collected by participating in the lawful trade in domain names which is an industry running into millions of dollars per week.
Respondent acquired the disputed domain name in an auction, and believed that it represented the French city of Versailles. Respondent allegedly checked this on Google which treated the terms "Versalis" and Versailles interchangeably as meaning the same thing. According to Respondent, "Versalis" is a common word that has many different meanings in different languages such as "Versailles" in Lithuanian and "embodying" in Latin. Respondent acknowledges that he did not use the disputed domain name for some time until he was introduced to a spiritual master by the name of Mooji whose quotes Respondent wished to publish. According to Respondent the disputed domain name was perfect because the root part of "Versalis" would mean "ornate capital letter used to start a verse, paragraph of a manuscript; entire, whole and light". Respondent proceeded with the development of the website under the disputed domain name and an accompanying Facebook community.
Respondent claims that he acquired the disputed domain name without prior knowledge of the Trademarks. The acquisition of the disputed domain name was not intended against Complainant, to sell it to Complainant or its competitors. Respondent acknowledges that Complainant owns the Trademarks but alleges that Complainant does not possess exclusive rights to the word "Versalis" which is a dictionary word commonly used by various entities around the world. Further, Complainant does not have an exclusive right to the disputed domain name. There are multiple entities in the world that have the same name but different website addresses not matching their name.
Respondent refutes that the website to which the disputed domain name resolved advertised that it was for sale for more than one week. The reason therefore being that Respondent had some temporary cash liquidity issues due to purchase opportunities and he decided to test the waters and see if there were any possible buyers for the disputed domain name amongst the growing Versalis project audience who would have interest in taking it over. When Respondent was first contacted about a possible purchase of the disputed domain name, such contact was not made by Complainant but by a third party who wrote Respondent on August 28, 2013: "As it is a mere attempt for us to acquire a new client and this domain name is one of the alternatives that we are considering (… but is the one that I personally prefer that I think will give us better chances), we have a somewhat limited budget for the time being." Respondent believed this to border on bad faith and asked for his principal. In subsequent correspondence with Complainant's outside counsel, who offered him money for the transfer of the disputed domain name, Respondent repeatedly refused, until April 2014 when, in a response to their request for a reasonable counteroffer, he asked for EUR 99,000. Respondent alleges that Complainant has not provided any evidence that Respondent used the disputed domain name to harm Complainant in any way, and Respondent claims that he neither used the disputed domain name in any way to harm the business of Complainant or infringe the Trademarks, nor has an intention to do so.
Respondent denies that he registered and used the disputed domain name in bad faith as Complainant has tried to mislead the Panel that a reasonable price is not decided or agreed upon to be the monopoly of Complainant. There is, according to Respondent, nothing to demonstrate that asking his price for the transfer of the disputed domain name constitutes bad faith as such pricing is not of itself evidence of targeting a particular trademark owner under the circumstances of this case.
The Respondent asks the Panel to find Reverse Domain Name Hijacking. 6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed 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 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
It is established case law that the top level domain ".com" may be disregarded in assessing whether the a trademark is identical or confusingly similar to a domain name (e.g., Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd.,WIPO Case No. D2006-0762).
The disputed domain name is identical to the Trademark. Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires that the Complainant demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name. This condition is met if the Complainant makes a prima facie case that the Respondent has no such rights or interests, and the Respondent fails to rebut it (e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455 and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1).
The Complainant has put forward that its prima facie case has been made out by the facts that the Respondent is not known under the disputed domain name, that there is no evidence of Respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services, and that Respondent explicitly offered the disputed domain for sale in September 2013. The Panel agrees with those submissions and finds that Complainant has made out its prima facie case. Accordingly, the burden of production shifts to the Respondent to demonstrate rights or legitimate interests in the disputed domain name (e.g., Mile, Inc. v. Michael Burg,WIPO Case No. D2010-2011).
Respondent argued that he acquired the disputed domain name at an auction and that the term "versalis" has different meanings in different languages. The mere fact that a term has certain meanings in different languages as such is in the Panel's view not sufficient evidence of Respondent having rights or legitimate interests in the disputed domain name. The Panel finds Respondent's explanation for the reason why he registered the disputed domain name rather unconvincing, as Respondent neither explained why he would be interested in a domain name representing "Versailles" in a rather small language as Lithuanian or "embodying" in Latin, nor why the name is perfect for a website or project with quotes from the spiritual master Mooji. The fact that the word "versal" has the meaning of a first (ornamented) letter of a text does not, as Respondent claims, make it a "root part" of the term "versalis", as the meaning of the suffix "is" is not explained. That explanation is essential because, "[n]ormally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning (and not, for example, to trade off third-party rights in such word or phrase)" (WIPO Overview 2.0, paragraph 2.2). In this case, Respondent's explanation why he chose the disputed domain name and what its meaning is in relation to Mooji's quotes which Respondent has published on the website under the disputed domain name seems be rather frivolous, invented for the occasion and, hence, unpersuasive.
Further, although the burden of proof of Respondent having rights or legitimate interests in the disputed domain name has shifted to Respondent, Respondent, in reply to Complainant's claim that he only started using the disputed domain name by "the end of August" 2013, which is likely meant to be after he received a first email on August 28, 2013 showing interest in buying the disputed domain name for the interest of Complainant, did not provide evidence that he had already started the website under the disputed domain name or had at least made preparations to do so. On the contrary, Respondent remained seemingly intentionally vague as he only claimed that he started the website "in August". Further, Respondent did not deny that he put the disputed domain name up for sale around September 21, 2013, which was four weeks after he received the first offer for sale and he had become familiar with Complainant as the intended ultimate owner of the disputed domain name. Putting a domain name up for sale is not use of the disputed domain name in connection with a bona fide offering of goods or services in case a party shows interest in acquiring the disputed domain name for use by the owner of the trademark that is clearly entirely contained in the disputed domain name.
For the reasons set forth above the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name and the second element of paragraph 4(a) of the Policy is also met. C. Registered and Used in Bad Faith
Complainant submits that Respondent's registration and use of the disputed domain name is in bad faith because Respondent refused to sell the disputed domain name to Complainant at what Complainant maintains was a reasonable price, when he asked EUR 99,000 for the transfer, so that Complainant is said to have been prevented from reflecting the Trademarks in the disputed domain name. The Panel disagrees with Complainant and does not find registration and use of the disputed domain name in bad faith for the following reasons.
As such, the mere fact that Respondent asked for an amount which is presumably for valuable consideration in excess of his out-of-pocket costs directly related to the disputed domain name is not sufficient by itself to find bad faith. In this case Respondent was first approached by a third party (demonstrated by the fact that Complainant submits the correspondence as evidence) apparently on Complaint's behalf, who asked to buy the disputed domain name, made an offer for the transfer the disputed domain name for USD 800/900, before Complainant's outside counsel took over negotiations and offered EUR 5,000 and later EUR 6,000, asking Respondent for a counteroffer. After having refused to sell the disputed domain name, Respondent's only counteroffer of EUR 99,000 on April 14, 2014 cannot automatically be regarded as evidence of Respondent's bad faith as the counteroffer was expressly invited by Complainant. Even if one would consider the offer as unreasonable, the Policy does not forbid parties to make unreasonable offers. It requires more circumstances, which Complainant did not seek to establish, for the Panel to decide that the Respondent registered and used the disputed domain name in bad faith. Most importantly, Paragraph 4 (b)(i) of the Policy requires a complainant not merely to show that the registrant entered into discussions about the price of a domain name, which is all that Complainant has shown (and then only because Complainant had initiated the entire negotiating process), but that it had acquired the domain name primarily, not incidentally, to sell, rent or transfer the domain name to Complainant or a competitor at an excessive price. At the very least a complainant must produce evidence to enable the Panel to draw the inference that this was the intention of the registrant at the time it acquired the domain name. Complainant did not adduce any evidence to this effect and no evidence from which the Panel could draw such an inference.
Consequently, the third element of paragraph 4(a) of the Policy was not met. D. Reverse Domain Name Hijacking
The Rules, Paragraph 1, defines Reverse Domain Name Hijacking as "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name". To prevail on such a claim, the Respondent must show that the Complainant knew of the Respondent's undeniable rights or legitimate interests in the relevant disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith (e.g. San Diego Hydroponics & Organics v. Innovative Growing Solutions, Inc.,WIPO Case No. D2009-1545). The Panel finds that Complainant's motivation in filing the Complaint was more likely than not to protect the Trademarks and to stop for the future what it saw as a violation of its rights, rather than an attempt to intimidate or harass Respondent. In any event, the Panel has discretion on this matter and after considering all of the evidence and the submissions the Panel declines to make a finding of Reverse Domain Name Hijacking. 7. Decision
For the foregoing reasons, the Complaint is denied.
Alfred Meijboom
Presiding Panelist
Nathalie Dreyfus
Panelist
The Hon Neil Brown Q.C.
Panelist
Date: March 16, 2015
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