The Complainant is William Samy Etienne Grigahcine of Lisbon, Portugal, represented by Merkenbureau Knijff & Partners B.V., the Netherlands.
The Respondent is Contact Privacy Inc. Customer 0144192186 of Toronto, Canada / Bradley Merchant of Zionsville, Indiana, 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 January 18, 2019. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 18, 2019, the Registrar transmitted by email to the Center its verification response:
(a) it is the Registrar for the disputed domain name;
(b) disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint;
(c) the language of the registration agreement is English;
(d) the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to the disputed domain name.
The Center sent an email communication to the Complainant on January 23, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 23, 2019.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Policy, 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 January 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 14, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 15, 2019.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on February 28, 2019. 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
It appears that the Complainant is a member of a collective of four French DJs who are individually known as DJ Snake, Tchami, Mercer, and Malaa. (According to Wikipedia, DJ Snake is the stage name of the Complainant.)
The collective was “created” (to use the wording of the Complaint) in 2015. In 2016, they undertook a tour of the USA and in 2017 in Ibiza. In 2016, they also launched their own clothing brand and, in 2018, they released a limited collection with Levi’s.
Although the collective was not “created” until 2015, the Complainant registered European Union Trademark No. 010108281 for “Pardon My French” on October 26, 2011. It is registered in respect of goods in International Classes 16, 20 and 25. The Complainant is also the owner of United States Trademark No. 4,278,394, “Pardon My French” in respect of goods in International Classes 20 and 25. This trademark was filed on January 10, 2012, and registered on January 22, 2013.
The Complaint also includes evidence of a more recent International Registration and registration in the United States.
The disputed domain name was first registered on September 23, 2002.
Based on information obtained via the Wayback Machine at :
(a) the disputed domain name initially resolved to a webpage offering the domain name for sale via BuyD;
(b) then, for an indeterminate period prior to March 28, 2010, the disputed domain name resolved to a website with sponsored links or simply offering the disputed domain name for sale;
(c) between March 28, 2010 and October 28, 2012, the disputed domain name resolved to a website which the Complainant has described as a personal blog. The annexure provided to illustrate this, however, presents a default Wordpress template page with the narration “Not Found. Sorry, but you are looking for something that isn’t here.”;
(d) from June 23, 2013 to March 5, 2016, the disputed domain name resolved to an “Under Construction” webpage which also featured sponsored links;
(e) on March 7, 2018, the disputed domain name resolved to a page which the Complainant has described as a personal blog; and
(f) since December 22, 2018, the disputed domain name has resolved to what is in effect a blank Wordpress page. The page presented is another (different) template page with the narration “Nothing Found. It seems we can’t find what you’re looking for. Perhaps searching can help”. 5. Discussion and Findings
No response has been filed. The Complaint has been sent, however, to the Respondent at the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Respondent has been given a fair opportunity to present his or its case.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
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. 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 the registered trademarks identified in section 4 above.
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. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.11. 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. 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 trademarks. 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. 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. 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., WIPO Overview 3.0, section 2.1.
The Complainant states that he has not authorised the Respondent to use the trademark and there is no other business relation or affiliation between them. The disputed domain name is not derived from the Respondent’s name.
The Respondent cannot rely on paragraphs 4(c)(i) and (iii) of the Policy as the disputed domain name does not appear to be in use at all. The Wordpress page the disputed domain name resolves to presents a screen which states “Nothing Found”. The Respondent has not sought to claim use of the disputed domain name in some non-public way, nor that he is taking demonstrable steps to start using it.
In these circumstances, the Complainant has made out the required prima facie case under the second requirement of the Policy without rebuttal. 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. These are conjunctive requirements; both must be satisfied for a successful complaint: 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.
The difficulty here is that, as the Complainant acknowledges, the disputed domain name was first created in 2002. That was many years before the Complainant adopted his trademark.
The Complainant says that at the time the disputed domain name was first registered the evident intention was to sell it for a higher price. That, the Complainant contends, is registration in bad faith. Accepting that the disputed domain name was registered in 2002 to take advantage of the fact that it is “a common expression”, however, does not qualify as registration in bad faith. There can be no suggestion of taking advantage of the Complainant’s trademark rights when those rights have not accrued to the Complainant (and, in this case, did not accrue until some nine years later). See e.g., WIPO Overview 3.0, section 3.8.1.
Two main qualifications to that proposition have been recognised. First, panels have recognised that bad faith can arise where a respondent gets some sort of advance notice of a complainant’s plans and seeks opportunistically to take advantage before the complainant’s plans have come to fruition. See e.g., WIPO Overview 3.0, section 3.8.2. The Complainant has not advanced any basis for concluding that has happened in this proceeding.
Secondly, questions of registration in good (or bad) faith for a respondent who acquires a domain name at some time subsequent to the original creation date will be assessed at the date of that acquisition rather than the date of creation.
The history of the changing usage of the disputed domain name submitted by the Complainant from the Wayback Machine suggests the possibility that there has been a change in registrant at some point or points. Whether that has been the case and when, however, is not proven on the record before the Panel.
It is not clear why the Registrar cannot provide information about the date the Respondent first became the registrant. It is, to say the least, highly regrettable in this case. One might expect that information is part of rudimentary customer relations and good data management practice, if nothing else.
According to the WhoIs record, the most recent “update” was on August 25, 2018. There are many reasons why a WhoIs record may be changed, other than a change in registrant. The nature of the change, or changes, in question has not been disclosed. Further, at least on the materials submitted in the Complaint, the date of the last update to the WhoIs record does not appear to coincide with any change in the way the disputed domain name has been used. Although it is not necessarily conclusive, the current expiry date of the disputed domain name also coincides with the anniversary of the creation date.
In these circumstances, the Panel is unable to find that the Respondent registered the disputed domain name in bad faith. As this requirement must be established by the Complainant to succeed, therefore, the Complaint must fail. 6. Decision
For the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Sole Panelist
Date: March 15, 2019
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