The Complainant is Optilead Ltd. of South Yorkshire, the United Kingdom of Great Britain and Northern Ireland, represented by Conrad Fahrenkrug, Chile.
The Respondent is Christophe de Larquier of Paris, France, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with Ascio Technologies Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 27, 2015. On January 27, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 29, 2015, 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 February 6, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 26, 2015. The Response was filed with the Center on February 27, 2015. The Center received several email communications from the Respondent between February 6, 2015 and March 13, 2015.
The Center appointed Alistair Payne as the sole panelist in this matter on March 12, 2015. 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 a company that specializes in building solutions. It owns trade mark registrations for its OPTILEAD mark in a number of jurisdictions (including the United Kingdom and the United States of America) of which the earliest is a word mark registration for OPTILEAD in the United Kingdom under number UK00002651641, filed on February 11, 2013. The Complainant made an application for its OPTILEAD mark as a Community Trade Mark on November 11, 2014.
The Respondent is involved in the database and direct marketing industry. The disputed domain name was registered on February 16, 2004. 5. Parties' Contentions A. Complainant
The Complainant submits that it owns registered trade mark rights for its OPTILEAD mark as set out above. It asserts that the substantive element of the disputed domain name is identical to its mark.
The Complainant says that the Respondent does not use OPTILEAD as a registered or unregistered trade mark and has not used the mark to promote or commercialize any kind of goods or services. Neither says the Complainant is there any accessible content at the website to which the disputed domain name resolves. The Complainant submits that the "parking" of the disputed domain name since registration demonstrates a lack of real intention to eventually use it and that in reality it has only been registered to prevent parties with legitimate rights (registered trademarks) similar or identical to the disputed domain name from using it.
As far as bad faith is concerned, the Complainant submits that the Respondent currently holds the disputed domain name in bad faith and is disrupting the Complainant's business by preventing it from reflecting its OPTILEAD trade mark in a corresponding domain name. It reiterates that parking the disputed domain name and in this manner disabling it from being identified by search engines demonstrates a lack of intention to use the disputed domain name. It says that in practice all that the Respondent is doing is preventing the holder of an identical registered trade mark from offering its services though the disputed domain name. B. Respondent
In its email submitted on 9 February 2015, the Respondent says that it has been involved for 15 years in databases and direct marketing and that it bought the disputed domain name at the time that generating, managing and optimizing the leads was becoming a major issue in the French market, especially in email marketing. The Respondent says that it aimed to use the disputed domain name to increase its visibility in search engines and to increase traffic to its website.
In the last quarter of 2014 the Complainant contacted it several times by email with offers to buy the disputed domain name and finally made an offer to acquire it for €1500. The Respondent says that it replied to the effect that it was still developing its strategy for 2015 and that it would contact the Complainant in early 2015 to confirm how it wished to proceed. Following renewal of the disputed domain name on January 23, 2015 the Respondent says that it has refocused its strategy on data and digital and as a result has decided to sell the disputed domain name and is therefore surprised that the Complainant has commenced these proceedings. 6. Discussion and Findings
The Respondent submitted an e-mail on February 9, 2015 and subsequently filed additional submissions in response by email on February 27, 2015 and on March 13, 2015. The latter submissions were filed after the due date for response of February 26, 2015 and with no explanation of exceptional circumstances for its lateness. Accordingly, the Panel will not admit these filings to the record in these proceedings and will consider the email of February 9, 2015 as the Respondent's response. A. Identical or Confusingly Similar
The Complainant has submitted evidence of various word mark registrations for the OPTILEAD mark the earliest of which was filed on February 11, 2013 and is registered in the United Kingdom under number UK00002651641. The substantive element of the disputed domain name is identical to the Complainant's trade mark and as a result the complaint succeeds under the first element of the Policy. B. Rights or Legitimate Interests
The Panel notes that the disputed domain name is a coined term comprising the prefix "opti" and the common English word "lead". Overall the word gives the impression to English speakers that it is concerned with optimizing leads. The Respondent has submitted that it acquired the disputed domain name in the context of its established database and direct marketing business at a time when generating, managing and optimizing leads was becoming a major issue in email marketing in the French market.
As there is no evidence that the Complainant owned trade mark registrations or even used the OPTILEAD name or mark at the date of registration of the disputed domain name, it does not appear to the Panel (as discussed further below in relation to bad faith) that there is any way that the Respondent could have chosen it with knowledge of the Complainant's use or business activities under the "Optilead" name or style. Further the Respondent's rationale for its choice of domain name appears to the Panel to be credible. The fact that the Respondent subsequently chose not to use the disputed domain name for any purpose at all does not in the circumstances detract from this explanation.
Accordingly, the Panel finds that the Complainant has not made out its case that the Respondent had no rights or interests in the disputed domain name and the Complaint fails under this element of the Policy. C. Registered and Used in Bad Faith
The disputed domain name was registered on February 16, 2004. This was approximately 9 years before the date of the Complainant's earliest trade mark registration in the United Kingdom. The Panel notes that there is no evidence of the Complainant owning a trade mark registration in France at that time and that the Complainant's application for a Community Trade Mark was made in November 2014 and is still pending.
Neither is there any evidence before the Panel to suggest that the Complainant's business operated under the Optilead name or mark at that date, or that the Respondent should have been aware of the Complainant's name, mark, or business, when it acquired the disputed domain name. As a consequence the Panel fails to see how the Complainant thought that it could successfully argue that the disputed domain name had been registered in bad faith.
Further, in circumstances that there is no evidence before the Panel that the disputed domain name ever resolved to a website (even to a place keeper site), then there is nothing to suggest that the disputed domain name has been used in bad faith. This is not one of those cases where the disputed domain name contains a very well reputed mark and even though it has been used passively is likely to have been registered with knowledge of that mark for the purpose of later sale, or for potential use contrary to the trade mark owner's interests.
The Complainant has characterized the Respondent's registration as use in bad faith by "parking" the disputed domain name and in this manner disabling it from being identified by search engines. However in circumstances that the Respondent clearly did not register the disputed domain name in bad faith and has merely been holding it passively pending the determination of its strategy, the Panel fails to see how this could amount to disrupting the Complainant's business and therefore to use in bad faith. In this light the Complainant's case seems to the Panel to be contrived and entirely without merit.
The Panel therefore finds that the disputed domain name has neither been registered nor used in bad faith and that the Complaint fails under the third element of the Policy. 7. Decision
For the foregoing reasons, the Complaint is denied.
In the Panel's view findings of reverse domain name hijacking should be reserved for circumstances where a complaint amounts a clear abuse of the Policy. This Panel usually prefers to give complainants the benefit of the doubt in this regard, but this is not such a case.
For the reasons set out above, it seems to the Panel that this Complaint is without merit at all and was entirely contrived in order to obtain a domain name that someone else had bona fide registered many years prior to the commencement of the Complainant's business. Following the initial refusal of the Complainant's offers for purchase of the disputed domain name the Complainant thought that it could force the position by filing a complaint under the Policy. Even after the Respondent's indication that it would now be prepared to sell the disputed domain name, the Complainant insisted upon proceeding in any event.
The Complainant, coming from Yorkshire, should have known that this is not "cricket". The Policy is intended to alleviate cybersquatting and not as a tool for commercial bullying. The Panel considers that this Complaint is an abuse of the Policy and that the Complainant should have known better, particularly in circumstances that it had legal representation. Accordingly, the Panel makes a finding of reverse domain name hijacking in this case.
Alistair Payne
Sole Panelist
Date: March 14, 2015
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