The Complainant is Arne Jacobsen Design I/S of Virum, Denmark, represented by Horten Advokatpartnerselskab, Denmark.
The Respondent is Domain Administrator, DomainM of Potomac, Maryland, United States of America (USA), represented by Erika L. Sullivan, USA. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 March 22, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 11, 2017. On April 11, 2017, the Respondent filed a request for an additional time to file the Response. In accordance with paragraph 5(b) of the Rules, the Center granted an extension of four calendar days. The Response was filed with the Center on April 15, 2017.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on May 1, 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 Danish company. According to the Complaint, it holds the intellectual property rights deriving from the activities of the well-known architect, Arne Jacobsen. Mr. Jacobsen died in 1971.
Mr. Jacobsen was a Danish proponent of the style associated with Mies van der Rohe and Walter Gropius. Amongst the buildings which Mr. Jacobsen designed are the National Bank of Denmark, the Royal Danish Embassy in London and St Catherine’s College in Oxford in the United Kingdom of Great Britain and Northern Ireland. Mr. Jacobsen also designed a number of striking furniture items, including the Series 7 chair, the Drop chair, the Ant chair and the Egg chair. A cutlery set Mr. Jacobsen designed for Georg Jensen featured in the Stanley Kubrick film, “2001: A Space Odyssey”. In his lifetime, Mr. Jacobsen was awarded an Honorary Fellowship of the American Institute of Architects.
The Complaint provides evidence of ownership of two registered trademarks for ARNE JACOBSEN:
(a) European Union Trademark No. 010434959 for a range of goods and services in International Classes 6, 8, 9, 11, 20, 21, 34 and 35, which was registered on December 25, 2012 from an application filed on November 22, 2011; and
(b) European Union Trademark No. 015816218 for a range of goods in International Classes 11 and 14, which was filed on September 12, 2016 and registered on January 6, 2017.
The Respondent describes itself as a “Domain investor”, by which it appears to mean that it registers domain names with the intention of reselling them.
The Respondent registered the disputed domain name on September 23, 2011. The disputed domain name resolves to a website which offers, and so far as the record goes has always offered, the disputed domain name for sale for USD 24,888. As the nature of the website is a point in contention between the Parties, the Panel will discuss it further below. 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
It is not in dispute between the Parties that the disputed domain name is identical to the Complainant’s trademark (disregarding the generic Top-Level Domain component). B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition and also in the Third Edition (respectively, “WIPO Overview 2.0” and “WIPO Overview 3.0”).
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. The disputed domain name is not derived from the Respondent’s name. The Complainant points to the offer of the disputed domain name for sale which far exceeds the “out of pocket costs” of registering a domain name and says that Respondent’s website is not good faith use of the disputed domain name.
The circumstances set out in paragraph 4(c)(ii) above do not apply in this case. Further, the offering of the disputed domain name for sale, particularly as part of a business as a “Domain investor” is not “a noncommercial use” for the purposes of Policy, paragraph 4(c)(iii).
The real point in contention between the Parties is whether the registration of the disputed domain name for the purpose of reselling it is a good faith offering or fair use. The Respondent points out that many panels have recognised that registering a domain name for the purpose of reselling it is a legitimate activity under the Policy. The Respondent says that is the case “so long as it was not registered for the sole purpose of being sold to the trademark holder” (emphasis supplied).
The Respondent says further that it has registered many thousands of domain names which are combinations of first and last names. It says it did not know whom the Complainant was when it registered the disputed domain name and did not register it solely for the purpose of reselling the disputed domain name to the Complainant (emphasis supplied).
First, the Panel does not agree with the Respondent that it has a right to register any domain names for resale provided only that its sole purpose is not to resell the disputed domain name to the Complainant. The example of a right or legitimate interest provided by Policy, paragraph 4(c)(i) (set out above) specifies a safe harbour for use in connection with a good faith offering of goods and services; not a use with mixed motives. A use with mixed motives, or at least where bad faith was not a trivial or insignificant factor, falls outside the example.
Further, as the Respondent notes, the question of good or bad faith often comes up at the third stage of the inquiry. In that context, paragraph 4(b)(i) identifies as an example of registration and use in bad faith “circumstances indicating that [the Respondent] has registered or [the Respondent has] acquired the [disputed] domain name primarily for the purpose of selling, renting, or otherwise transferring the [disputed] domain name registration to the Complainant….”. That is, the purpose of registration and use in bad faith can be made out where the bad faith is not the Respondent’s sole purpose. Paragraph 4(b)(i) of the Policy, of course, is an example only.
In support of its position, the Respondent relies on the reference in Trade Me Limited v. Vertical Axis, Inc.,WIPO Case No. D2009-0093 to the presence or absence of a fully functioning website as an indicator of rights or legitimate interests. The Respondent says that the disputed domain name resolves to a fully functioning website which has navigation, articles and a search function and so is sufficient to qualify it as having a right or legitimate interest in the disputed domain name and establish the Respondent’s bona fides under paragraph 4(c) of the Policy.
The Panel finds that case is a very different case to the present case. Bearing in mind that the domain name in question in that case consisted of two common English words and the applicant’s business activities were localized in New Zealand and remote from the respondent’s location, the learned three member panel accepted that the respondent had not been shown to have registered the domain name in bad faith. Accordingly, the complaint was dismissed.
In the present case, while it may be accurate to describe the website which the disputed domain name resolves to as featuring articles, links and a search function, the content of the Respondent’s website is essentially directed to selling what it refers to as “premium domains”; it is effectively (if not purely) devoted to trading in domain names:
- At the top of the page to which the disputed domain name resolves there is the Respondent’s logo, its tag line “Accept No Alternatives” and contact details for customer support.
- Next, there is a menu bar with links or tabs for “Learn”, “Search”, “Categories”, “About”, “Contact”, “Resources”, “Testimonials”, “Blog” and “Print”.
- Next, by far the most prominent feature is a “banner”: Domain for sale “ArneJ - $24,888 USD” BUY NOW.
- Next, there is a table setting out “What are the Advantages of a Premium Domain?” and reasons why the Respondent’s services should be used “#1 in Premium Domains”.
- Next there is a search box for “Search for a Premium Domain”.
- Next, under the Heading “Truth in Numbers”, there are statistics about the Respondent’s operations. At the time this decision was being prepared, these included that the Respondent had added 3140 domains in the past month and the average price was USD 7,362.
- Next follows an article “What’s in your Domain Name?” This includes the initial text:
“A super premium .Com domain name from DomainM means instant branding, search engine, and marketing benefits. We make it safe, easy and affordable for you to own ArneJ right away.”
“Click here to purchase ArneJ.”
“DomainM domains are carefully selected for branding excellence by top appraisers, so you will find only the most prized and premium assets for sale.”
- Under the heading “Why ArneJ?” the text continues:
“Great brand recognition and memorability from advertising, marketing, and your website landing pages.”
“This domain is likely to hold and increase its value over time. Poor domain names lose traffic and new customer conversions to better domain named companies, Microsoft Research calls this effect ‘domain bias in web search.’ ArneJ is a category killer domain that may be commonly used around the world. Such a name offers your company a clear competitive advantage online and off.”
“ArneJ is relatively easy to spell / highly memorable. Trust and recognition from such a great name drives higher click through rates. Only one person or entity can have it and utilize it online and offline for marketing and advertising (and maintain all future resale rights at any price or profit level).”
“Establish your company, product or service dominance with an outstanding .Com brand. For existing brands, it is the ideal opportunity to re-enforce and protect your brand.”
- At the foot of the page are listed three or four individuals by the name “Arne Jacobsen” at three different locations in the USA and involved in three different businesses.
In short, the substance of the website to which the disputed domain name resolves is connected to selling the disputed domain name, not some good faith offering of other goods or services.
Buying and selling domain names can itself be a legitimate activity under the Policy. Whether the Respondent’s conduct in this case qualifies as legitimate activity turns on the question of bad faith under the third limb of the Policy.
Before turning to that issue, the Panel notes that the Complainant’s registered trademark were not applied for, or registered, until after the Respondent had registered the disputed domain name. However, Mr. Jacobsen was active in the fields of architecture and design from the 1920s. While a search of any trademark registers would not have disclosed the existence of any registered trademarks in the Complainant’s name, even the most rudimentary Internet search would have disclosed Mr. Jacobsen and his legacy.
In these circumstances, subject to consideration of the question of good faith under the third limb of the Policy, the Panel considers that the Complainant has established the Respondent has no rights or legitimate interests in the disputed domain name. It is to that issue that the Panel now turns. C. Registered and Used in Bad Faith
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.
Here, the Respondent points out that it has registered many thousands of domain names which include first and last names and denies any knowledge of the Complainant.
A denial of knowledge of the Complainant or its trademark can be determinative where the denial is not implausible or contradicted by other evidence. Moreover, in a proceeding such as the present where there is no discovery or cross-examination of witnesses, the Panel will be slow to reject such a denial.
The terms “arne” and “jacobsen” appear to be, respectively, a forename and a surname, but there is no evidence about how commonly they occur, individually or together.
Secondly, there is the high price the Respondent is offering the disputed domain name for sale for. This is a price which the Respondent’s own materials state has been arrived at by being:
“carefully selected for branding excellence by top appraisers, so you will find only the most prized and premium assets for sale”.
With all due respect to the three individuals identified on the Respondent’s website,1 there does not appear to be anything about any of them, or the number of them, which would warrant the price the Respondent is seeking for the disputed domain name. The feature of the disputed domain name, if anything, which makes it a “super premium” domain name is its association with Mr. Jacobsen the architect and designer and, through him, the Complainant and its trademark.
In that connection, the Panel is not willing to accept the claimed lack of knowledge of the Complainant and its trademark when it appears that the Respondent’s own researchers were able to identify three individuals in the USA and even the most rudimentary search would have disclosed the Complainant’s predecessor and his legacy.
Accordingly, the Panel finds that the disputed domain name was registered in bad faith. The use made of it – offering it for sale at the high price already indicated – is use in bad faith under the Policy. 6. 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.
Warwick A. Rothnie
Sole Panelist
Date: May 23, 2017
1 There are four names, but the third and fourth appear to be the same individual from their location, position and the similarity of the corporate vehicles’ names.
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