The Complainant is Bagley Argentina S.A. of Buenos Aires, Argentina, represented by Marval O´Farrell & Mairal, Argentina.
The Respondent is A Ltd. of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland represented by ESQ Law Firm, United States of America ("United States"). 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 29, 2016. On May 2, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 2, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 9, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 29, 2016. On May 12, 2016, the Respondent requested the extension of the Response due date. In accordance with the Rules, paragraph 5(b), the Center extended the Response due date until June 2, 2016. The Response was filed with the Center on June 2, 2016.
The Center appointed Warwick A. Rothnie, Alvaro Loureiro Oliveira and The Hon Neil Brown Q.C. as panelists in this matter June 27, 2016. 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
The business of the Complainant can be traced back to 1864 when a United States citizen, Mr. Bagley, founded a company under his name in Buenos Aires, Argentina. Initially, the business produced a beverage made from orange peel. However, it soon expanded into the production of biscuits and crackers. It now claims to be one of the most important companies in Argentina specializing in the production of biscuits and crackers with many popular brands including Opera, Criollitas, rumba, Merengadas and Rex.
In 1999, Group Danone acquired 91% of the shares in the Complainant. In 2001, Arcor Group became the controlling shareholder in the Complainant with a 51% interest; Group Danone retaining 49% of the shares. According to the Complaint, that reorganization led to the Complainant significantly expanding its business outside Argentina. Nowadays, the Complainant exports its products to some 120 countries including Germany, Brazil, China, India, Italy, Japan, Mexico, the United Kingdom of Great Britain and Northern Ireland, Portugal and the United States.
The Complainant has registered BAGLEY as, or as part of, a trademark in many countries around the world. According to the Complaint, the Complainant has over 140 registered trademarks which feature BAGLEY. The Complaint actually includes evidence of registered trademarks in Chile, Colombia, Peru, Paraguay, Brazil, Uruguay, Ecuador, El Salvador, Spain, Bolivia (Plurinational State of), Mexico, Panama, Venezuela (Bolivarian Republic of). A number of these are for the word BAGLEY alone; many are for the packaging of various products which feature BAGLEY as the house mark, albeit in a smaller size to the product brand.
Consistently with the expansion of the business internationally consequent upon the involvement in the business of Arcor Group, most of the trademarks registered outside Argentina included in the Annexes to the Complaint appear to have been filed and registered after 2002. Notable exceptions are the registrations in Brazil, where registrations date from 1976 and 1989 and El Salvador with a registration in 1998. Many of the trademarks registered in Argentina also appear to have been filed after 2002 although there are also a number registered before then; the first of which, according to the Complaint, was registered in 1940.
According to the Complaint, the word BAGLEY has always been used as part of the corporate name of the business since it was founded by Mr. Bagley in 1864.
The Respondent has registered numerous domain names: according to the list included in Annex 5 to the Complaint, more than 500. The Respondent registered the disputed domain name on September 27, 1999. Since that date, it has been used to resolve to a website which displays pay-per-click (PPC) advertising. 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(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 has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant's trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of a number of registered trademarks for BAGLEY alone and many others where the word is included in a registered trademark for what appears to be the packaging for different lines of biscuit or other products which the Complainant produces. The fact that many of these trademarks were registered after the disputed domain name was registered is irrelevant to this stage of the inquiry. However, the Panel notes that there are at least several registered before the disputed domain name was registered and that the registrations which pre-date the registration of the disputed domain name include registrations in Argentina, Brazil and El Salvador.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top Level Domain (gTLD) component as a functional aspect of the domain name system: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. As already noted, such matters, if relevant, may fall for consideration under the other elements of the Policy.
Disregarding the ".com" gTLD, the disputed domain name is identical to the Complainant's registered trademarks for BAGLEY. Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant's trademarks and the requirement under the first limb of the Policy is satisfied. B. Registered and Used in Bad Faith
In the circumstances of this case, it is appropriate to consider next the third requirement under the Policy. Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
In this part of the case, the Complainant points out that it is a leading Argentine company specializing in the production of biscuits, crackers and other flour based products. It exports these products worldwide. As noted above, it appears that there has been a significant expansion of its export activities since the Arcor Group acquired its interest in the Complainant in 2001. The Complaint does claim, however, that it has been selling its products "in several countries" in addition to Argentina for "more than 70 years". As a result, the Complainant contends that its trademark has achieved wide notoriety in Argentina as well as "in a wide range of countries". Accordingly, it submits that the Respondent must have been aware of the trademark when it registered the disputed domain name. The Complainant then contends that the requirement for there to be use in bad faith is satisfied by resolution of the disputed domain name to a web page which consists of "mere sponsored links". The Complainant draws attention to the more than 500 other domain names which the Respondent has registered. The Complainant says that these reinforce that the Respondent is engaged in exploiting the first come, first served basis of the system for the registration of domain names to take advantage of its significance as someone else's trademark.
The Respondent denies any knowledge of the Complainant or its trademark when the Respondent registered the disputed domain name 17 years ago. It says its business model is to register domain names which are generic or common dictionary words or common first names or surnames. It says that it does this because common words best fulfill the purpose of a domain name – which is to provide an easy to remember address. As such, they are inherently valuable.
The Respondent points out that the word BAGLEY is a very common surname. It is a place name. It is also the name of a class of destroyer in the United States navy. There are more than 185,000 occurrences of the surname in a search of the United States Census and Voter Lists. According to the Respondent a Google search on BAGLEY yields over 11 million results, without the Complainant appearing in the first three pages of results.
In the present case, the Panel does not consider it can go behind the Respondent's denial of knowledge of the disputed domain name when it registered the disputed domain name in 1999. On the record in this case, the denial is not implausible. First, as noted above, the disputed domain name consists of a common surname. It has a wide range of uses quite unassociated with the Complainant or its business. Secondly, it appears from the record that the significant expansion outside Argentina of the Complainant's business has taken place since the Arcor Group acquired its shareholding in 2001. The Complainant does claim that it has been operating "in several countries" in addition to Argentina for "more than 70 years". However, which countries they are is not identified. Nor is the date when the Complainant's products went on sale there or, most importantly, the volume of sales and advertising involved. In these circumstances, the Complaint falls well short of providing sufficient evidence to conclude that the Complainant's trademark is notorious around the world or, in particular, was so well known that the Respondent must have known of it when the disputed domain name was registered in 1999.
Thirdly, the Complainant's reliance on the early decision J Crew International Inc. v ,WIPO Case No. D2000-0054 does not assist it. The Panel notes that the decision ordering transfer was a majority decision. Secondly, the majority proceeded on a theory of constructive notice of the complainant's trademark under United States trademark law. However, that theory of constructive notice has not found general acceptance under the Policy: see WIPO Overview 2.0 paragraph 3.4.
Fourthly, the record shows that the Respondent does have a business based on registering many different domain names. The Complainant asserts that many of these are either trademarks or generic words. Many, if not most, of the domain names in evidence do appear to fit the business model described by the Respondent. The evidence before the Panel, however, does not allow the Panel to conclude that many, or even a significant proportion, of the 500 domain names are in fact the trademarks of third parties or registered because they are someone else's trademark. First, many of the domain names registered by the Respondent do appear to be descriptive or capable of being applied to many different businesses or activities. Secondly, for example, there is no evidence identifying which trademark any particular domain name is said to be based on. Nor is there any evidence about how the Respondent is using that domain name.
Finally, the evidence before the Panel does not disclose that the Respondent has been attempting to take advantage of the disputed domain name for its significance as the Complainant's trademark. On the record in this case, however, there is no showing that the Respondent has attempted to target the Complainant or the Complainant's trademark, although the disputed domain name has been registered since 1999. Moreover, the use of the disputed domain name by the Respondent is consistent with its status as a common surname, a place name and a name used by many businesses on the Internet.
In these circumstances, the Panel finds that it has not been shown that the Respondent registered the disputed domain name in bad faith. The Complainant has failed therefore to satisfy the third requirement under the Policy. Accordingly, the Complaint must fail and no good purpose would be served by considering the question of rights or legitimate interests under the Policy. C. Reverse Domain Name Hijacking
The Respondent contends that the Complaint has been brought in bad faith and, accordingly, the Complainant should be sanctioned by a finding of reverse domain name hijacking.
Paragraph 15(e) of the Rules provides, in part:
"If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding."
Paragraph 1 of the Rules defines "Reverse Domain Name Hijacking" to be "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name".
The Respondent argues that the Complainant should have known from the outset that the Complaint must fail and it was a bald attempt to wrest a highly valuable domain name from its rightful owner.
The question of reverse domain name hijacking in the present case is not particularly straightforward. In particular, the Panel notes that, while the use of a domain name for PPC advertising is not automatically contrary to the Policy, its use is often highly problematic. The first factor which strikes the Panel is that the disputed domain name was registered in September 1999; that is, almost 17 years ago. Although opinions differ on this question, it has often been decided by UDRP panels that laches does not preclude the filing or success of a complaint under the Policy: WIPO Overview 2.0 paragraph 4.10; delay has, however, frequently been taken into account in determining questions of rights and legitimate interests and bad faith. In the present case, however, the Complainant has not disclosed when it first discovered that the Respondent had registered the disputed domain name and what, if any, action was taken as a result. Secondly, as noted above, it appears from the Complaint that the Complainant's business has undergone a very substantial expansion since the Arcor Group became its main shareholder. That occurred well after the disputed domain name was registered. It is true that the Complainant does claim to have been operating "in several countries" before that expansion commenced. As noted above, however, the information included in the Complaint falls well short of what is required to show that those operations were of such a scale that they are likely to have come to the Respondent's attention. For example, which countries they were, from when and on what scale has not been addressed. Taken together, these matters lend the Complaint a very speculative air. On the other hand, the evidence is consistent with the Complainant genuinely believing that its trademark was being compromised by the registration and use of the domain name and that it was entitled to bring this proceeding to bring that state of affairs to an end.
While the Panel finds these matters troubling, in the end the Panel, not without considerable reservations, is unable to find that the circumstances warrant a finding of reverse domain name hijacking. 6. Decision
For the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Presiding Panelist
Alvaro Loureiro Oliveira
Panelist
The Hon Neil Brown Q.C.
Panelist
Date: July 11, 2016
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