The Complainant is Food and Wine Travel Pty Ltd of Mildura, Victoria, Australia, represented by IP Wealth Pty Ltd, Australia.
The Respondent is Michael Keriakos, Keriakos Media Ventures of New York, United States of America, represented by Lurie Friedman LLP, United States of America. 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 September 27, 2016. On September 27, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 27, 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 October 6, 2016. In accordance with the Rules, paragraph 5, the due date for Response was initially October 26, 2016. In October 25, 2016, the Center received a request for extension to file a Response. The Center granted the automatic four calendar day extension for response, and an additional two calendar day extension. The due date for Response was thereafter November 1, 2016. The Response was filed with the Center on November 1, 2016.
The Center appointed Nick J. Gardner as the sole panelist in this matter on November 16, 2016. 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 an Australian business and as its name suggests is a company which specializes in organizing travel directed at food and wine related activities. It has been in business since 2008 and its average annual turnover in the last five years has been approximately AUD 3 million.
The Complainant is the owner of Australian Registered Trademark No. 1285381 registered on 17 February 2009 (the “Trademark Registration”). The Trademark Registration comprises three coloured logos together with the words “food and ” laid out in coloured and stylized form with the “.” being in a significantly smaller font size than the other words. The Trademark Registration is in respect of various services, including but not limited to, arranging, reservation and booking of travel, tours, holidays, vehicle hire, accommodation, and food and drink experiences, and information thereto.
The Complainant has conducted its business via its website which is linked to the domain name . The Complainant has utilised the domain name since at least October 2008. However from October 2009 to 30 March 2016 it also owned the Disputed Domain Name. During that period the Disputed Domain Name was linked by redirection to the Complainant’s website at “www.foodandtravelwine.”.
The Complainant’s registration of the Disputed Domain Name expired on or about 30 March 2016. This was unintentional as the Complainant had intended that it should be renewed. The reasons this happened do not matter, although the Complaint says that it was through no fault of its own.
On or about May 11, 2016, the Respondent purchased the Disputed Domain Name from the Registrar for a price of USD 2,500. Since that date it has been linked to a parking page which is automatically generated by the Registrar.
By July 2016 the Complainant had realized the Disputed Domain Name had not been renewed and had been re-registered by the Respondent. The owner of the Complainant then approached the Respondent, sending the following email:
“Dear Mike,
I am contacting you from Australia and had been interested in the domain www.. I have done some searches and see that you or your business, Keriakos Media Ventures, is the registrant of the domain name and that it is currently a parked domain. Is the domain one that you plan on using for a website or is it something that you would be willing to transfer for a reasonable price?
Thanks and I look forward to receipt of your reply.
Kind Regards,
[name redacted]
Owner/Manager
International Travel & Cruise Consultant
Mildura Travel & Cruisewww.milduratravelandcruise.”
The Respondent replied as follows:-
“We paid a lot for it recently but also own gourmet - we may be willing to transfer one for low 6 figures.
Prob not what u had in mind...”
No further communication took place. 5. Parties’ Contentions A. Complainant
The Complainant’s case can be summarised as follows.
a) The Disputed Domain Name is confusingly similar to the Trademark Registration as (i) the dominant elements of the Trademark Registration are the words “food and wine travel”, and (ii) the Disputed Domain Name comprises those words.
b) The Respondent does not have any rights or legitimate interests in the Disputed Domain Name.
c) The Respondent’s registration of the Disputed Domain Name was in bad faith as it was an opportunistic attempt to profit from the Complainant’s inadvertent failure to renew the Disputed Domain Name. The Complainant relies on the email exchange set out above and the fact the Disputed Domain Name has not been used by the Respondent except in respect of a parking page. B. Respondent
The Respondent has produced a very detailed Response with accompanying documentary evidence, and set out numerous authorities in relation to its case. It is not necessary to repeat all that the Respondent has said here. The salient points the Respondent makes are as follows.
The Respondent says that it agreed to obtain the Disputed Domain Name in May 2016 as a bona fide purchase associated with its business developing portal sites suitable for use by companies in the travel business. It says this purchase was in connection with a proposed venture with the well-known company Time Inc. and specifically in relation to Time Inc.’s “Food & Wine” publishing brand. It further says that since the Respondent has demonstrated intent to use the Disputed Domain Name in connection with a bona fide offering of goods or services, the fact that it resolves to a parked page does not negate the Respondent’s legitimate interest in it.
It says it found the Disputed Domain Name to be available, paid USD 2,500 for it and did not believe anyone else could have prior rights in given it comprises entirely generic or descriptive words. The Respondent sets out in detail, with numerous examples, arguments that the words “food”, “wine” and “travel” are entirely descriptive terms and disputes that the Complainant has any rights in those words either individually or in combination.
It also points out that the Complainant has consistently only ever used as its primary domain name and uses that domain name on all its advertising and publicity.
The Respondent says that the email exchange relied on by the Complainant was made following an unsolicited approach which did not identify the Complainant or is alleged rights, and is not evidence at all of it having registered the Disputed Domain Name on an opportunistic basis. It points out it did not approach the Complainant, and did not pursue the email exchange further. It says it was entitled to ask what it liked for the Disputed Domain Name as it had purchased it in good faith.
The Respondent makes many more points in support of its arguments but it is not necessary to consider those further – where relevant they are addressed below. 6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements:
i. the Disputed Domain Name is identical to or confusingly similar to a trademark or service mark in which the Complainant has rights;
ii. the Respondent has no rights or legitimate interests in the Disputed Domain Name;
iii. the Disputed Domain Name has been registered and is being used in bad faith A. Identical or Confusingly Similar
Whilst a considerable amount of material has been deployed by both parties dealing at length with this issue the Panel regards it as relatively straightforward. The Complainant is the proprietor of the Registered Trademark and the dominant elements of that trademark are, in the Panel’s opinion, the words “food and wine travel”. Given that the Disputed Domain Name manifestly comprises those words, the Panel has no hesitation in concluding the Disputed Domain Name is similar to the Registered Trademark. Similarity between a domain name and a device mark which includes words or letters is a readily accepted principle where the words or letters comprise a prominent part of the trademark in question – see for example EFG Bank European Financial Group SA v Jacob Foundation,WIPO Case No. D2000-0036 and Sweeps Vacuum & Repair Centre, Inc. v Nett Corp, WIPO Case No. D2001-0031. Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled. The fact that the words concerned are themselves descriptive or generic may of course be relevant to other issues the Panel has to decide (see below). B. Rights or Legitimate Interests
In view of the Panel’s finding in relation to bad faith (see below), the Panel does not need to decide this issue. C. Registered and Used in Bad Faith
This is a case where the Complainant (or those retained by it) inadvertently failed to renew the registration of the Disputed Domain Name with the result that it lapsed and became available for registration by purchase from the Registrar. The Respondent subsequently obtained it, in return for payment of USD 2,500 to the Registrar. There is no doubt that there can be case where the opportunistic re-registration of a lapsed domain name will be in bad faith – typically where the new registrant realizes that the previous registrant has likely inadvertently failed to renew the domain name, and anticipates it will be able to capitalize on the ability of the domain name to attract residual traffic and/or will be able to resell it back to that registrant once it realizes its mistake – see for example Rug Doctor L.P. v. Domain Strategy, Inc., WIPO Case No. D2002-0355 and Culture and Sport Glasgow t/a Glasgow Life v. Yemliha Toker,WIPO Case No. D2015-2191.
The Panel has concluded that the present case is not such a case and that the record does not establish a basis for finding of bad faith on the part of the Respondent. This is for the following reasons:
- The Panel considers that the Disputed Domain Name contains a combination of generic or descriptive words (food, wine and travel) which are not so obviously an unusual combination so as to alert any purchaser to the likelihood that another entity may have, or claim to have, prior rights in that combination of words.
- There are (not surprisingly) numerous businesses both in the United States of America and Australia (and no doubt elsewhere) which use the words “food, “wine” and “travel” in promoting their businesses. The Respondent’s belief that no one entity was likely to have rights that would preclude it from obtaining the Disputed Domain Name was in the Panel’s view a reasonable one.
- The Respondent credibly says that it considered the Disputed Domain Name comprised a combination of generic words which it considered were unlikely to be owned by any other organisation. It says that until this Complaint was filed it was not aware any other organisation claimed rights in the Disputed Domain Name.
- The Respondent has shown that it is a bona fide business, specifically involved in the business of partnering with travel media sites to build, manage and maintain online travel agency portal web sites.
- The Respondent purchased the Disputed Domain Name in an arms length transaction for a not insignificant sum directly from the Registrar.
- The Respondent has provided credible evidence to show it purchased the Disputed Domain Name in contemplation of some sort of commercial venture with Time Inc., in relation to Time Inc.’s “Food & Wine” media brand. Correspondence to this effect with Time Inc. has been placed in evidence.
- Further even if the Respondent had been aware of the previous ownership of the Disputed Domain Name and had investigated, it would have found the Complainant utilized as its primary domain name, which would not necessarily have alerted it to the Complainant’s claim to have rights in nor suggested that the Complainant’s failure to renew was obviously inadvertent, nor that opportunistic possibilities might arise to attract traffic or resell the Disputed Domain Name to the Complainant.
In reaching this conclusion the Panel has considered the email exchange relied upon by the Complainant (above). The Respondent is correct to point out this was an unsolicited approach and did not identify the Complainant or its claimed rights. If, as the Panel concludes, the Respondent’s registration of the Disputed Domain Name was unobjectionable, it is then entitled to suggest whatever price it may like and the fact that price is high is not itself sufficient to support a finding of bad faith – see Barlow Lyde & Gilbert v. The Business Law Group,WIPO Case No. D2005-0493. The fact that the Respondent did not pursue the email exchange further suggests to the Panel that its primary motive was not to resell the Disputed Domain Name but to use it in the way it has explained.
Further the fact that the Disputed Domain Name has been linked to a parking page since its acquisition by the Respondent does not in the Panel’s view support a finding of bad faith. It is only a relatively short time since the Respondent acquired the Disputed Domain Name and it seems likely it will take the Respondent time to develop its planed venture with Time Inc. – linking the Disputed Domain Name to a parking page in the meantime does not establish bad faith.
As a result, and applying the principles in the above noted UDRP decisions, the Panel declines to find that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has not been fulfilled.
The result of the Panel’s finding is that the Complainant is unable to recover the Disputed Domain Name, despite having owned it for many years. That will no doubt disappoint the Complainant but is a consequence of its failure (for whatever reason) to renew the Disputed Domain Name. The Policy is not intended to provide a remedy for that sort of mistake, save in the narrow circumstances where it can be shown that such a mistake has been capitalized on by a respondent who has acted in bad faith. This is not such a case. 7. Decision
For the foregoing reasons, the Complaint is denied.
Nick J. Gardner
Sole Panelist
Date: November 21, 2016
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