The Complainant is Stimulan B.V. of Heijen, Netherlands, represented by Dirkzwager advocaten en notarissen N.V., Netherlands.
The Respondent is Domain Admin, Mrs. Jello, LLC of Livingston, New Jersey, United States of America (the “US”), represented by Oshman & Mirisola, LLP, US. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2015. On April 7, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same day, 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 proceeding commenced on April 14, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 4, 2015. The due date for Response was extended to May 8, 2015 subsequent to the Respondent’s request on May 1, 2015. The Response was filed with the Center on May 9, 2015.
The Center appointed John Swinson as the sole panelist in this matter on May 20, 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 the Dutch company Stimulan B.V. of Heijen. The Complainant produces and distributes horse feed. It sells its products in 25 countries.
The Complainant owns the following registered trade marks (collectively, the “PAVO Mark”):
- Benelux Registration No. 0399774 for PAVO word mark, registered April 24, 1984;
- International Registration No. 639946 for PAVO word mark, registered July 4, 1995;
- Benelux Registration No. 0785499 for PAVO figurative mark, registered July 5, 2005; and
- Benelux Registration No. 0892924 for PAVO figurative mark, registered December 16, 2010.
The Respondent is Mrs. Jello, LLC, a US company in the business of search engine optimisation and search engine marketing.
The Respondent registered the Disputed Domain Name on November 12, 2004. The website at the Disputed Domain Name currently displays a number of sponsored links for software and related accessories and states that the Disputed Domain Name is for sale. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions are as follows. Identical or Confusingly Similar
The Disputed Domain Name is identical to the PAVO Mark. Rights or Legitimate Interests
There is no evidence of the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. The Respondent does not use the Disputed Domain Name, it resolves to an empty webpage. The Respondent is not commonly known by the Disputed Domain Name. The Disputed Domain Name is not a commonly known expression or generic term, in English or Dutch. Registered and Used in Bad Faith
The Disputed Domain Name was registered primarily for the purpose of selling, renting, or otherwise transferring the registration to the Complainant for an excessive amount. This is evidenced by the non-use of the Disputed Domain Name and the correspondence between the parties. The Respondent is well-known for its activities concerning the registration of multiple domain names that third parties may have an interest in. B. Respondent
The Respondent’s contentions are as follows. Background
The Respondent owns hundreds of websites that provide content and information services or are in development. The Respondent earns pay-per-click (“PPC”) revenue in relation to these websites.
The Respondent purchased the Disputed Domain Name at a public auction for $2,906.95. Over the past decade, the Respondent has paid other costs associated with the ownership of the Disputed Domain Name. Identical or Confusingly Similar
The Respondent does not contest that the Disputed Domain Name is similar to the PAVO Mark. It submits that “pavo” is a common term and has many meanings in various languages. The term returns approximately 19,000,000 Google results and there are US trade mark filings for PAVO in relation to mattresses, wine, tea, lighting fixtures, magazines, clothing and computer hardware. Among other things, the term is the Latin word for peacock. Rights or Legitimate Interests
The Disputed Domain Name has been used by the Respondent for the past decade. This use has not been to divert the Complainant’s customers, or to tarnish the Complainant’s name. The use of the Disputed Domain Name, for the advertising of software and computer accessories, has been unrelated to the use that the Complainant makes of the PAVO Mark.
The Respondent had been making use of the Disputed Domain Name for almost seven and a half years before the Complainant made an unsolicited offer to purchase the Disputed Domain Name. There was no way the Respondent could have known of the Complainant’s existence when the Respondent registered the Disputed Domain Name. The Complainant does not do business in the US. Registered and Used in Bad Faith
The Respondent registered and has used the Disputed Domain Name in good faith, for advertising software and software accessories. As stated above, the Disputed Domain Name has not been used to divert customers or tarnish the Complainant’s reputation.
The Complainant’s unsolicited offers to buy the Disputed Domain Name occurred almost seven and a half years after the Respondent purchased the Disputed Domain Name at a public auction. The Respondent chose not to respond to some of the Complainant's communications, as the Respondent had decided not to sell the Disputed Domain Name. 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 trade mark 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.
The onus of proving these elements is on the Complainant. 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 the trade mark.
The Panel has verified that the Complainant has registered trade mark rights in the PAVO Mark.
The Disputed Domain Name is identical to the PAVO Mark. In this case, the generic Top-Level Domain (gTLD) “.com” is irrelevant in assessing confusing similarity under the Policy and may be ignored (see e.g. Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698).
In light of the above, the Complainant succeeds on the first element of the Policy. B. Rights or Legitimate Interests
Due to the Panel’s finding in relation to bad faith registration and use below, it is not necessary for the Panel to make a finding in relation to this 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.
The Complainant asserts bad faith registration and use under paragraph 4(b)(i) of the Policy, that is, “circumstances indicating that you [the Respondent] 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 related to the domain name”.
The Respondent submits that it was unaware of the Complainant and the PAVO Mark at the time it registered the Disputed Domain Name, as the Respondent is a US company and the Complainant does not conduct business in the US. An employee and “managing member” of the Respondent filed a sworn statement to say that no one at the Respondent knew of the Complainant until contacted by the Complainant in 2014. The Respondent submits that it was entitled to register a common term and provides evidence of the extensive use of the term “pavo” in various contexts and languages (for example, as the Latin word for peacock and in relation to “air mattresses for medical purposes”). As discussed further below, the term “pavo” has many possible meanings, and the Disputed Domain Name could be legitimately owned and used by any number of people. Registration of domain names is on a first-come, first-served basis, subject to the requirements of the registration agreement and the Policy. There is no evidence that the Respondent registered or used the Disputed Domain Name because of the Complainant or the Complainant’s PAVO Mark.
The Complainant claims that the Respondent’s intention to sell the Disputed Domain Name to the Complainant is evidenced by (a) the non-use of the website at the Disputed Domain Name, and (b) the correspondence between the parties regarding the sale of the Disputed Domain Name.
The Respondent refutes the non-use point. It claims that the Disputed Domain Name is being used to host PPC links. This is use. The Panel finds that such use is not, in itself, evidence of bad faith. In this case, the sponsored links do not relate to the Complainant or its horse feed business (the links viewed by the Panel relate to software and related computer accessories). There is no evidence before the Panel to demonstrate that the Respondent is trading off the Complainant’s reputation or attempting to compete with the Complainant in how the Disputed Domain Name is used.
In relation to the correspondence between the parties, the Panel notes that there was a significant period of time between the Respondent’s registration of the Disputed Domain Name and the Complainant initiating sales discussions. During this time, the Respondent had been using the website at the Disputed Domain Name to display PPC links. The Complainant’s offers to purchase the Disputed Domain Name were unsolicited. The Respondent paid a substantial amount of money for the Disputed Domain Name in a public auction. In these circumstances, it is not credible that the Respondent’s “primary” purpose in registering the Disputed Domain Name was to sell it to the Complainant or a competitor of the Complainant (see e.g. Mirabella Beauty Products, LLC v. Mrs Jello, LLC,WIPO Case No. D2009-0673).
The Respondent has been a respondent in a number of prior disputes under the Policy. The Respondent has been successful in some cases and unsuccessful in others. There is nothing wrong with being a respondent in numerous decisions under the Policy, but it does show that the Respondent can be expected to know the standards that are expected of an organisation engaged in the accumulation of substantial numbers of domain names.
In a previous decision involving the Respondent, Yara International ASA v. undefined, Domain Admin, Mrs. Jello LLC,WIPO Case No. DTV2008-0015, quoting from Grundfos A/S v. Texas International Property Associates,WIPO Case No. D2007-1448, it was stated:
“In the later case of Media General Communications Inc v. RareNames WebReg,WIPO Case No. D2006-0964, the Panel again considered large scale registration of domain names for the purpose of reselling/advertising links. The Panel noted that such practices would most likely be regarded as legitimate in the following circumstances:
(i) Where the Respondent regularly engages in the business of registering and reselling domain names, and/or using them to display advertising links;
(ii) The Respondent makes good faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others;
(iii) The domain name in question is a dictionary word or a generic or descriptive phrase;
(iv) The domain name is not identical or confusingly similar to a famous or distinctive trademark; and
(v) There is no evidence that the Respondent had actual knowledge of the Complainant’s mark.
The Panel notes that the test proposed by the Panel in the Media General Communications, Inc. case has been adopted and applied by subsequent Panels – see, for example, the recent case of Gigglesworld Corporation v. Mrs. Jello,WIPO Case No. D2007-1189, Shangri-la International Hotel Management Limited v. Net Income Ventures Inc.,WIPO Case No. D2006-1315, and Starwood Hotels and Resorts Worldwide, Inc. [Starwood Hotels and Resorts Worldwide, Inc., Sheraton LLC and Sheraton International Inc., v. Jake Porter,WIPO Case No. D2007-1254].
In the latter case, the Panel referred to the obligations on registrants contained in paragraph 2 of the Policy, and said:
‘This provision has not been read as routinely requiring registrants to conduct a trade mark search. But it does suggest that the Respondent has some obligation when registering an uncommon name for potential resale and using it to generate revenue from third-party advertising, to avoid a likelihood of confusion with the trade marks of others. This possibility would have been revealed with a simple search engine query, as the leading results on the most popular search engines highlight the Complainant’s St Regis properties.’”
Here, the Respondent does not say that the Respondent conducted any searches at all prior to purchasing the Disputed Domain Name. If the Respondent had conducted US Trademark Office searches in November 2004 when it purchased the Disputed Domain Name, the Respondent would have found no reference to the Complainant’s trade mark, but would have instead found registrations for PAVO in relation to men’s shirts, clutch valves, restaurants and stationary materials. The Respondent would also have found trade mark registrations for PAVO REAL (in relation to wine) and PAVO PROFESSIONAL ASSOCIATION OF VOLLEYBALL OFFICIALS (in relations to balls). It is clear that “pavo” is a term commonly used by people in trade marks.
Further, when the Panel conducted a Google search for “pavo” from Australia in May 2015, the first entry was to Pavo Textiles, and the Complainant’s business appeared eighth in Google search results. Many of the entries on the first page demonstrated that “pavo” was a common term.
The Respondent has some obligation when registering an uncommon name for potential resale and using it to generate revenue from third-party advertising, to avoid a likelihood of confusion with the trade marks of others, but this does not necessarily apply when registering a common term. A registrant may register a common term in good faith, even if that term is commonly used in trade marks, provided that the registrant did not register the common term because of its trade mark significance. For example, words such as “empire”, “seaview”, “admiral”, “fivestar”, “golden” and “ace” are all common words, and are commonly used by many businesses in trade marks. If one registered one of these words, and did not target any of the many trade mark owners who also use these terms, then this is unlikely to be bad faith registration or bad faith use.
In summary, the Panel finds that the Respondent was at liberty to register the Disputed Domain Name as a common term. The Respondent has plausibly denied that it knew of the Complainant when the Respondent registered the Disputed Domain Name. There is no evidence that in making the registration the Respondent targeted the Complainant or the PAVO Mark.
In light of the above, the Panel finds that the Complainant has failed to establish the third element of the Policy. 7. Decision
For the foregoing reasons, the Complaint is denied.
John Swinson
Sole Panelist
Date: June 2, 2015
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