The Complainant is FLM (Maindron Group) of Treillières, France, represented by Legrand Lesage-Catel Gaultier, France.
The Respondent is Michael Maindron of Clayton, Missouri, United States of America (“US”). 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 January 31, 2017. On January 31, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 31, 2017, 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 February 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 22, 2017. The Response was filed with the Center on February 22, 2017.
The Center appointed Steven A. Maier as the sole panelist in this matter on March 10, 2017. 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 registered in France. It is a supplier of specialist preservation and insulation materials including timber treatment products.
The Complainant is the owner of French trademark number 4261716 for the combined trademark MAINDRON (in word and graphical form) registered with effect from April 4, 2016 in Classes 37, 40 and 42.
The disputed domain name was created by a prior third party on March 1, 2007. It appears to have been acquired by the Respondent on or around January 27, 2016.
There is no evidence before the Panel that the disputed domain name has ever resolved to any active website. 5. Parties’ Contentions A. Complainant
The Complainant states that it was founded in 1984. Its submits a registration document for a company named S.E. Maindron dated July 23, 1991 and an undated promotional brochure in the name of Maindron which states that it has provided its specialist services for over 30 years. It also submits an article dated December 8, 2000, from an online publication “LeM” which refers to Georges Maindron, the manager of the Maindron enterprise.
The Complainant submits that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant refers to its registered trademark MAINDRON and submits that the disputed domain name is indisputably identical to that trademark.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant submits that the disputed domain name has never been used in connection with any bona fide offering of goods or services or in connection with any noncommercial purpose. The Complainant disputes the true identity of the Respondent and submits that, in the absence of any use of the disputed domain name, the Respondent cannot claim commonly to have been known by the disputed domain name.
The Complainant contends that the disputed domain name has been registered and is being used in bad faith. The Complainant submits evidence that it sought to purchase the disputed domain name through the registrar GoDaddy on January 4, 2016 and was informed that the owner was asking USD 15,000. On January 7, 2016, however, GoDaddy informed the Complainant that its service was closed as it had not been able to negotiate an acceptable price with the seller. On January 20, 2016, the Complainant acquired the Respondent’s email address from GoDaddy and on January 28, 2016, obtained a response from that email address as follows:
“Thanks for your offer, but we are no longer the owner of the domain. It’s sold. BTW, Maindron is a generic family name. Many people have offered to buy it. You have no exclusive rights to use it.”
The Complainant states that it has carried out a “W” search which reveals over 2,000 domain names, with no particular relation to one another, associated with the Respondent’s email address.
The Complainant submits that it is evident from the above that the Respondent acquired the disputed domain name for the purpose of selling it to a party that could have rights in it for consideration in excess of the Respondent’s registration costs.
The Complainant requests a transfer of the disputed domain name. B. Respondent
The Respondent submits that the Complainant is attempting improperly to pry the disputed domain name away from the Respondent. He states that the Complainant only registered the trademark MAINDRON after failing to buy the disputed domain name from the Respondent in March 2016 and is now using that trademark in bad faith to attempt to acquire the disputed domain name.
The Respondent submits that he has rights and legitimate interests in the disputed domain name because it is a generic surname which anyone is entitled to register. He states that he acquired the disputed domain name for the purpose of a website providing generic information about the Maindron surname and that he will develop that website when he has the time and funds in the future. He states that there is no requirement for a domain name registrant to offer goods and services under a trademark that matches that domain name.
The Respondent denies that the disputed domain name was registered in bad faith. He points out that the Complainant’s trademark was not registered until April 2016 and submits that the he could not therefore have had the Complainant’s trademark in mind at the date he registered the disputed domain name. The Respondent repeats that he intends to use the disputed domain name for the purposes of a legitimate future website project and that he is under no obligation to use the disputed domain name immediately. 6. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has demonstrated that it is the owner of registered trademark rights in respect of the mark MAINDRON. While that trademark was not registered until April 2016, the respective dates of registration of the trademark and the disputed domain name are not of relevance to the threshold test under paragraph 4(a)(i) of the Policy. The disputed domain name is effectively identical to the Complainant’s trademark and the Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. B. Rights or Legitimate Interests
The Respondent claims rights and legitimate interests in the disputed domain name on the basis that he legitimately acquired it for the purposes of developing a website dedicated to the Maindron surname at some point in the future. It is the task of the Panel to determine, on balance, whether this explanation is credible or whether the Respondent in fact acquired the disputed domain name in order to target the Complainant’s trademark.
While the Respondent submits that anyone is entitled to register a generic surname, the Panel finds that the name Maindron is not generic in the sense of being a “dictionary” word, and that even if it were, the Respondent would not have rights or legitimate interests in the disputed domain name in circumstances where he had registered it with the purpose of targeting the Complainant’s trademark (see e.g., paragraph 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
The Panel finds that the Complainant approached the prior registrant of the disputed domain name via GoDaddy in January 2016, that a price of USD 15,000 was requested for the disputed domain name at that time, and that the disputed domain name was transferred to the Respondent very shortly thereafter. In the view of the Panel, this raises the prospect that the Respondent acquired the disputed domain name with the objective of selling it to the Complainant for consideration in excess of the costs of registration.
In the view of the Panel, the email dated January 28, 2016 from the prior owner of the disputed domain does nothing to dispel any inference that the transfer of the disputed domain name to the Respondent was directly connected with the Complainant’s interest in the disputed domain name.
Under paragraph 4(c)(ii) of the Policy, a respondent may demonstrate rights or legitimate interests in a domain name where:
“… you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights.”
The Respondent in this case is purportedly an individual named Maindron. While the Complainant has expressly disputed that this identity is real, the Respondent does not address this point in his Response and provides no evidence that Maindron is genuinely his surname. The Panel finds this omission remarkable in view of paragraph 4(c)(ii) of the Policy.
Considering the evidence in the round, the Panel does not accept the Respondent’s submissions and finds on balance that the Respondent’s registration of the disputed domain name was connected with and targeted at the Complainant’s interest in the disputed domain name as expressed to its previous owner. The Panel has seen no evidence to support the Respondent’s identity and finds his explanation of his intentions in acquiring the disputed domain name to be improbable.
In the circumstances the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Panel repeats its findings of fact as set out above.
The Respondent submits that he cannot have registered the disputed domain name in bad faith as he registered it (in January 2016) prior to the Complainant’s registration of its trademark in April 2016. However a trademark need not be registered in order to give rise to protectable rights and unregistered trademark rights may exist where a name has become distinctive of a particular business through commercial use. In this case, the Complainant has provided somewhat limited evidence of its business and trading history, but sufficient to satisfy the Panel that it was actively trading under the MAINDRON name and mark at the time the disputed domain name was registered, and that some level of unregistered rights existed in the mark at that time.
The Panel has also concluded on balance that the Respondent’s registration of the disputed domain name was connected with and targeted at the Complainant’s interest in the disputed domain name as expressed to its previous owner. In other words, the Panel finds it more likely than not that the Respondent was aware of the Complainant’s identity and interest in the disputed domain name at the date of his acquisition of the disputed domain name, and registered the disputed domain name in the circumstances set out in paragraph 4(b)(i) of the Policy, namely, primarily for the purpose of selling it to the Complainant for valuable consideration in excess of his documented out-of-pocket costs directly related to the disputed domain name.
The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, , be transferred to the Complainant.
Steven A. Maier
Sole Panelist
Date: March 15, 2017
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