The Complainant is Saint Gobain Do Brasil Productos Industriais e Para Construçao Ltda. of São Paulo, Brazil, represented by Ricci Advogados Associados, Brazil.
The Respondent is NULL NULL, Sandfort of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Lewis & Lin, LLC, United States of America ("United States"). 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 Med.iation Center (the "Center") on August 17, 2017. On August 17, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 23, 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 September 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 26, 2017. The Response was filed with the Center on September 26, 2017.
The Center appointed Alistair Payne as the sole panelist in this matter on October 18, 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, based in Brazil, is a member of the multinational Saint-Gobain group which operates in the building and construction sector. The Saint-Gobain Group has operated in Brazil since 1937 and has owned trade mark registrations for BRASILIT since 1939 including, in particular, device mark registration 002924691 and word mark registration 006971318. The Complainant also owns the domain names and .
The Respondent, a domain name broker with an address in the United Kingdom but now based in Denmark, registered the disputed domain name on March 21, 2000. 5. Parties' Contentions A. Complainant
The Complainant submits that it has operated in Brazil in the building services and construction sector since 1939. It says that its BRASILIT mark, for which it owns various trade mark registrations, including those noted above, is a well-known trade mark in the building and construction sector and is pronounced in the Portuguese language using a "z" sound which means that there is no phonetic difference between the Complainant's BRASILIT trade mark and the disputed domain name.
The Complainant submits that the Respondent is not associated with it in any way or authorised to use or register the BRAZILIT 1 trade mark. It therefore says that it has no legitimate interest in acquiring or maintaining the disputed domain name. It asserts that the disputed domain name is a clear imitation of the Complainant's fanciful and famous mark and that the Respondent accordingly had no reason to register the disputed domain name and did so in bad faith for its own profit motive.
While acknowledging the majority panel approach that registration in good faith followed by bad faith use cannot deem the original registration to be in bad faith, the Complainant relies upon the lines of authority in past panel decisions that are based on paragraph 2 of the Policy concerning the registrant's warranty not to knowingly use a domain name in violation of applicable laws or regulations and the Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions,WIPO Case No. D2009-0786 line of decisions that a good faith registration can be retrospectively rendered as bad faith as a consequence of subsequent use in bad faith. The Complainant submits that the Respondent has acted in bad faith and for its own purposes by using the Complainant's trade mark in the disputed domain name to resolve to a parking website at which it offers to sell the disputed domain name at a profit and by using the disputed domain name passively to obtain benefits through a website created to be confused with the Complainant's website. It submits that the disputed domain name was registered primarily for the purpose of selling it to the Complainant as the owner of the well-known mark, or to one of its competitors. It says that the disputed domain name is nominally similar and phonetically identical to its well-known mark and that the Respondent is using it to profit illegally from the Complainant's trade mark. B. Respondent
The Respondent submits that on March 21, 2000 he registered 17 domain names in the format "[countryname]IT.com" together with the disputed domain name and that it has subsequently registered a number of other "IT" related domain names together with numerous categories of generic domain names. He says that he did this not to trade off the Complainant's rights but rather to register a series of descriptive domain names as part of his business plan. He says that he worked full time on several dotcom ventures involving these domain names from December 1999 – March 2001 and following the bursting of the dotcom bubble he experienced difficulties in executing his business model but continued renewing his domain name registrations so as to maintain the option of launching a domain name business at a later stage. He notes that in 2010 and in order to make money off his domain names, he began offering them for sale along with many other generic domain names.
The Respondent submits that he is a Danish citizen and operates an office in Denmark. He says in a signed statement that he had no knowledge of the Complainant or any of its trade marks at the time that he registered the disputed domain name and only learned of the Complainant upon being served with the Complaint. He notes that the Complainant's registered trade mark rights are limited to Brazil and that it does not allege that it owns rights in Denmark. The Respondent also notes that it is his practice to clear all domain names before acquiring them by performing a trade mark search and that at the time of registration of the disputed domain name nobody in the world was trading under "Brazilit" to his knowledge.
The Respondent submits that this is a case of a trade mark owner improperly claiming rights to a domain name comprised of geographically descriptive wording that the Respondent has owned for 17 years. He notes that the Complainant never contacted him during this time, nor did it write to him in advance of issuing these proceedings, but instead initiated this meritless proceeding in a bad faith attempt to take the disputed domain name from the Respondent. He submits that the Complainant appears to concede that the Respondent registered the disputed domain name in good faith and that its arguments concerning subsequent use in bad faith and retroactive registration in bad faith as a consequence are ill-conceived and that in any event there is no evidence of use in bad faith on the record as the Respondent is not a competitor of the Complainant. Further, he says that there is no evidence that the disputed domain name was registered for the purpose of attracting Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's trade mark and the Respondent denies that he had any knowledge of the Complainant or of its mark at the time that he registered the disputed domain name. In addition, says the Respondent, this is not a case in which the factors indicating a bad faith passive holding are present.
Finally, the Respondent claims the Complaint was filed in an attempt at reverse domain name hijacking on the basis that the Complainant should have known that it could not demonstrate that the registration of the disputed domain name was obtained in bad faith and in circumstances that the Complainant had not even attempted to communicate with the Respondent beforehand. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns registered trade mark rights in its BRASILIT word mark registration 006971318. The element of the disputed domain name before ".com" differs from the Complainant's registered trade mark only by the replacement of an "s" for a "z". Both BRASILT and BRAZILIT are pronounced in English and according to the Complainant, in the Portuguese language, in the same way. The Panel finds therefore that the disputed domain name is confusingly similar to the Complainant's word mark registration for BRASILIT. As a result, the Complaint succeeds under this element of the Policy. B. Rights or Legitimate Interests
The Complainant submits that the Respondent is not associated with it in any way and is not authorised to use or register the Complainant's trade mark. It says that the Respondent has no legitimate interest in acquiring or maintaining the disputed domain name and asserts that the disputed domain name is a clear imitation of the Complainant's fanciful and famous trade mark and that the Respondent accordingly had no reason to register the disputed domain name and did so in bad faith for its own profit motive.
The Respondent submits on affidavit that he is Danish and operates from Denmark and that he had no knowledge of the Complainant or any of its trade marks at the time that he registered the disputed domain name. He notes that he only learned of the Complainant upon being served with the Complaint and that it is his practice to clear all domain names before acquiring them by performing a trade mark search. He submits that at the time of registration of the disputed domain name nobody in the world was trading under the "Brazilit" to his knowledge and that his registration of the disputed domain name was part of a bona fide project in 2000 to acquire a series of domain names based on country names and which incorporated the letters "IT". The Respondent submits that there was nothing illegitimate in its acquisition of the disputed domain name.
There is nothing on the record to suggest that when the Respondent registered the disputed domain name in 2000 that the Complainant's trade mark was known in Denmark or Europe, or that it was so well known that the Respondent would or should have been aware of its presence. The Respondent, a domain name broker, has provided a credible explanation for his registration of the disputed domain name and it is notable that there is no evidence of the Complainant's online presence at the date of registration of the disputed domain name. The Complainant submitted that it owns the domain name with a "validity date" (presumably expiry date) of January 27, 2018, and the domain name with a "validity date" of October 31, 2017. There is no indication as to when the Complainant first used these domain names, and there is nothing on the record that would indicate the Respondent would have known of the existence and or use, if any, of these domain names.
On this basis the Panel finds that the Complainant has not made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, and also for the reasons set out under Part C below, the Panel therefore finds that the Complaint does not succeed under this element of the Policy. C. Registered and Used in Bad Faith
As noted under Part 5.B above, the Respondent, a domain name broker based in Denmark, registered the disputed domain name in 2000. There is nothing to suggest that the Respondent was or should have been aware of the Complainant's use of the trade mark at that date. The Complainant does not appear to own registered trade mark rights outside Brazil and has only registered its own domain names incorporating its trade mark recently. The Complainant's explanation of its registration of a series of domain names incorporating country names and the abbreviation "IT" is in the Panel's view understandable and credible at that date.
The Complainant waited approximately 17 years before deciding to act and then filed a Complaint without sending a cease and desist letter to the Respondent. The Complainant submitted that it owns the domain name with a "validity date" of January 27, 2018 and the domain name with a "validity date" of October 31, 2017. As noted above, there is no indication as to when the Complainant first used these domain names, and there is nothing on the record that would indicate the Respondent would have known of the existence and use, if any, of these domain names. Even the Complainant itself has argued its case under this head on the basis that the Respondent has acted in retroactive bad faith or in breach of registration warranties but significantly has not attempted to argue that the Respondent's registration was in bad faith per se. This serves to reinforce the Panel's view that the Respondent did not register the disputed domain name in bad faith in 2000.
This limb of the Policy clearly adopts a conjunctive requirement that the Complainant must demonstrate that the disputed domain name has been both registered and used in bad faith. Previous panels, as noted at section 3.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), have not accepted the approach adopted by the panel in Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786 and this Panel takes a similar view. Nor does the Panel consider that the evidence on the record necessarily supports the Complainant's allegation that this is a case of the Respondent knowingly using the disputed domain name in violation of applicable laws or regulations under the warranty in paragraph 2 of the Policy.
Even though the Respondent has used the disputed domain name some 17 years after registration to resolve to a conventional SEDO parking page that features sponsored links and which offers the disputed domain name for sale, such use cannot, even if it did amount to use in bad faith under the Policy, render the Respondent's act of registration to be a retrospective act of bad faith. In the circumstances here it seems to the Panel more likely than not that this is a case of a domain name broker having registered in 2000 the disputed domain name as one of a series of domain names comprising country names and the letters "IT" on the basis that one day they may have some value. As discussed above there is very little if anything on the record to support a conclusion that the Respondent was aware of the Complainant's mark and even the Complainant appears to acknowledge this.
As a result the Panel finds that the Respondent has not registered the disputed domain name in bad faith and the Complaint fails under the Policy. D. Reverse Domain Name Hijacking
The Respondent has claimed that this amounts to a case of reverse domain name hijacking on the basis that the Complainant should have known that it could not demonstrate that the registration of the disputed domain name was obtained in bad faith and in circumstances that the Complainant had not even attempted to communicate with the Respondent beforehand.
The Panel notes that the Complainant is professionally represented and therefore should have been aware of the requirement for the Complainant to be able to demonstrate registration of the disputed domain name in bad faith. As discussed above, the Complainant's case was presented on the basis that even if there was no registration in bad faith that the bad faith use could retroactively deem the registration to have been made in bad faith. However, by the time that the Complaint was filed it was apparent from past panel decisions, as also noted in the WIPO Overview 3.0, that the bad faith requirement under the third element of the Policy is conjunctive and would require that the Complainant show that the disputed domain name had been both registered and used in bad faith. In the circumstances, as set out above, there was no reasonable prospect that the Complainant could show registration in bad faith and it is significant that it did not try to argue the case on this basis. In addition, the Complaint was filed some 17 years after the registration of the disputed domain name and in all of that time the Complainant neither contacted the Respondent nor bothered to send a pre-action letter. The Respondent maintains that it first learned of the Complainant's mark and business upon receiving the Complaint and there is nothing on the record to indicate the Respondent would have known of the Complainant's mark, or the Complainant's purported use of its and domain names. For these reasons the Panel finds that the Complainant's conduct constitutes an abuse of this administrative proceeding, and that the Complaint was brought in bad faith, in an attempt at reverse domain name hijacking. 7. Decision
For the foregoing reasons, the Complaint is denied.
Alistair Payne
Sole Panelist
Date: October 30, 2017
1 Though the Complainant refers to its BRASILIT trade mark, the Complaint also presents arguments referring to a "BRAZILIT trademark" in which the Complainant does not appear to have rights. The Panel will refer to the BRASILIT trade mark and the putative BRAZILIT trade mark hereinafter, where appropriate, as "Complainant's trade mark" or "the mark".
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