The Complainant is Tambour Ltd of Kfar Neter, Israel, represented by Preminger & Co, Israel.
The Respondent is Alexander Lerman of Berkley, California, United States of America (“United States”), represented by John Berryhill, Ph.d., Esq., United States. 2. The Domain Name and Registrar
The disputed domain name is registered with Uniregistrar Corp (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2019. On January 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 31, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 1, 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 February 4, 2019.
The Center verified that thе Complaint, together with the amended 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 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 26, 2019. Pursuant to paragraph 5(b) of the Rules, the Center received a request by the Respondent for a four-day extension to the Response filing timeline. The Response was filed with the Center on March 3, 2019.
The Center appointed Assen Alexiev, Jonathan Agmon, and Tony Willoughby as panelists in this matter on March 22, 2019. The Panel finds that it was properly constituted. Each member of 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 Israeli company established in 1936 under the name Tambour Ltd. It operates six factories in Israel in Akko, Askar, Ashkelon, Kibbutz Gesher, and Migdal Ha’emek, which produce decorative paint products and exterior coating, metal paints and industry paints, gypsum boards and blocks, metal studs, emulsions, construction products, construction and infrastructure accessories, glues, sealants and inks, plaster and gypsum-based construction products, electrostatic powders for advanced dyeing of aluminum and metals.
The Complainant is the owner of the following trademark registrations for “Tambour” (the “TAMBOUR trademark”):
- the trademark TAMBOUR with registration No. 278543, registered as of February 3, 2016, for goods in International Class 2;
- the trademark TAMBOUR with registration number IV/17198/2015, registered in Myanmar on January 12, 2016, for goods in International Class 2; and
- the International trademark TAMBOUR with registration No. 1275532, registered on October 21, 2015, for goods in International Class 2.
The official website of the Complainant is located at the domain name .
The disputed domain name was registered on March 12, 2005. It resolves to a landing page containing an invitation to interested parties to buy the disputed domain name. 5. Parties’ Contentions A. Complainant
The Complainant submits that it is the biggest paint manufacturer in Israel and one of the leading in the world with branches and sales all over the world and in 4 continents.
According to the Complainant, the disputed domain name is identical to the Complainant’s TAMBOUR trademark.
The Complainant asserts that the Respondent does not have rights and legitimate interests in the disputed domain name. The Respondent is not affiliated to the Complainant, is not commonly known by the disputed domain name, and does not have any trademark rights in it. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, which resolves to a parking page offering it for sale. The Complainant points out that the Respondent is the registrant of hundreds of domain names, that it is a long-time investor in popular and generic domain names, and that its business is to acquire and sell them. The Complainant adds that the Respondent also participates in domain name industry events in order to sell its domain names to the highest bidder. The Complainant submits that with the aim to avoid this proceeding, the Complainant was prepared to pay to the Respondent a minimal fee as a nuisance value for the transfer of the disputed domain name, but the Respondent tried to manipulate the situation for its own benefit. In the pre-Complaint correspondence between the Parties, the Respondent demanded USD 20,000 for the transfer of the disputed domain name.
The Complainant contends that the disputed domain name was registered and used in bad faith by the Respondent. According to the Complainant, the pre-Complaint correspondence between the Parties shows that the disputed domain name was registered or acquired only for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in extreme excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name. The Complainant also argues that the non-use of the disputed domain name does not prevent a finding of bad faith under the doctrine of passive holding and alleges that the Respondent conceals its identity and uses false contact details in breach of its registration agreement for the disputed domain name. B. Respondent
The Respondent does not dispute that the Complainant has rights in the TAMBOUR trademark for paint products, and agrees that the disputed domain name is identical to it. However, the word “Tambour” is not uniquely or exclusively associated with the Complainant. According to the Respondent, it is a generic term in several languages and has several generic meanings in relation to musical instruments, woodworking, embroidery, and architecture in English, French, and German, and is widely used by a variety of third parties. According to the Respondent, many third parties use the word “tambour”, and a global search of trademarks renders 84 currently-registered “TAMBOUR” trademarks to 32 different entities around the world, including third parties’ trademarks registered in Israel.
The Respondent confirms that it owns a portfolio of domain names and monetizes dictionary word domain names in association with topics for which those words are generic, as has been the case with the Respondent’s registration and use of the disputed domain name. The Respondent asserts that it is making a general offer of sale of domain names consisting of terms that might be of interest to a variety of entities, which is not an activity that is condemned by the Policy unless it is accompanied by some indicia of bad faith.
The Respondent submits that it acquired the disputed domain name in 2005 upon its expiration from a prior term of registration and not by the Complainant as claimed in an exhibit to the Complaint. The Respondent maintains that the disputed domain name was registered primarily for its dictionary meaning and commercial value as a dictionary word. After the registration, the Respondent has used the disputed domain name for paid advertising relating to generic meanings of the word “tambour” and not for purposes related to the Complainant’s TAMBOUR trademark or to its paint products. The Respondent points out that the Complainant does not allege that the Respondent uses or has used the disputed domain name for targeting of the Complainant or that the Respondent’s registration and use of the disputed domain name has had anything to do with the Complainant.
The Respondent denies the Complainant’s allegation that the Complainant’s approach to the Respondent and offer to purchase the disputed domain name in 2018 suggests that the Respondent had registered the disputed domain name in 2005 primarily for the purpose of selling it to the Complainant. The Respondent points in this regard to its email correspondence with the Complainant, where the Respondent states that “for its dictionary meaning (DRUM) in the French language, the [disputed] domain name is worth at least $20K to us”. According to the Respondent, the bona fide nature of the Respondent’s use of the disputed domain name is not affected by whether or not the Respondent is interested in selling it or by the price at which it is offered, since the Respondent’s use of the disputed domain name has been consistent with its various claimed dictionary meanings, and as a dictionary word the disputed domain name has commercial value entirely independent of the Complainant’s trademark rights in respect of paint products. The Respondent comments that its willingness to respond to the Complainant’s inquiry in 2018 is a ridiculous premise for alleging that the Respondent obtained the disputed domain name in 2005 targeting the Complainant. The Respondent submits that the Complainant’s reference to the “passive holding” doctrine ignores the relevant context of an inherently distinctive mark, instead of a dictionary word; the use of false contact details instead of the Respondent’s actual details; and the non-participation of the respondent in the respective proceeding, instead of the Respondent’s participation in the present proceeding.
The Respondent disputes the Complainant’s statement in its email to the Respondent in 2018, where the Complainant alleged that it had previously held the registration of the disputed domain name and challenges the Complainant to produce any evidence for this. The Respondent points out that it has had the disputed domain name for thirteen years and submits that the Complainant’s claim to prior registration of the disputed domain name is either a lie or an admission that the Complainant has known that the Respondent has registered and used the disputed domain name for the last 13 years.
The Respondent goes on to state that over the years it has received many solicitations to purchase the disputed domain name from various parties. In 2006, the Respondent was approached by an Israeli ICANN-accredited registrar with an offering to purchase the disputed domain name on behalf of an unidentified client. According to the Respondent, it is likely that this inquiry in 2006 to have been made on behalf of the Complainant. In view of this, the Respondent submits that the Complainant has been fully aware of the Respondent’s use of the disputed domain name and challenges the Complainant to specifically deny that the 2006 inquiry from Israel was not made on behalf of the Complainant as the unidentified customer. 6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical 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 respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith. A. Identical or Confusingly Similar
The Complainant has provided evidence of and has thus established its rights in the TAMBOUR trademark.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the general Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain name.
The relevant part of the disputed domain name is therefore the element “tambour”, which is identical to the TAMBOUR trademark. In view of this, the Panel finds that the disputed domain name is identical to the TAMBOUR trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Complainant asserts that the Respondent does not have rights or legitimate interests in the disputed domain name because it is not making a legitimate noncommercial or fair use of it. The Complainant’s point is that the Respondent is a domain name investor who only acquires and sells domain names without developing or using them, and that during the correspondence between the Parties exchanged prior to the filing of the Complaint, the Respondent demanded at least USD 20,000 for the transfer of the disputed domain name.
The Respondent contends that it has acquired the disputed domain name because of its value as a dictionary word, and that the Respondent has never targeted the Complainant or its TAMBOUR trademark.
Having reviewed the evidence submitted by the Respondent in this regard, the Panel is satisfied that the disputed domain name indeed reflects a dictionary word in certain languages and that it is apparently being used by many entities for different purposes more or less related to its dictionary meaning. The Complainant has not presented any evidence that its TAMBOUR trademark is well-known in Israel or recognized outside Israel as associated with the Complainant. Rather, the evidence attached to the Response shows that even in Israel there are third parties’ trademark registrations for TAMBOUR for other classes of goods and services, and this trademark is not unique to the Complainant.
The Complainant has provided no evidence that when registering or using the disputed domain name the Respondent had knowledge of the Complainant or that it has targeted it with the content of the website at the disputed domain name or otherwise. The correspondence exchanged between the Parties prior to the dispute shows that it was initiated by the Complainant and that the Respondent did not offer the disputed domain name specifically to the Complainant but only indicated a price in response to the Complainant’s question about a possible sale of the disputed domain name. In its response to the Complainant, the Respondent stressed out that its valuation of the disputed domain name was based on its dictionary meaning in the French language. The Panel does not see how this exchange of correspondence could support a conclusion that the Respondent has targeted the Complainant or engaged in an illegitimate activity. It is well accepted that acquisitions of domain names by domain name investors would normally be legitimate as long as no third party trademarks are targeted.
In view of the above, the Panel finds that the Complainant has not established that the Respondent does not have rights and legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Complainant’s allegation that the disputed domain name was registered and is being used in bad faith by the Respondent is based on the pre-Complaint correspondence between the Parties where the Respondent indicated a significant price for the disputed domain name in response to a query by the Complainant. As discussed in section 6.B above, this correspondence was initiated by the Complainant and does not show that the Respondent has targeted the Complainant with the registration and use of the disputed domain name or that the disputed domain name was registered or acquired only for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant for valuable consideration in extreme excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name, as alleged by the Complainant.
The Complainant also argues that the non-use of the disputed domain name does not prevent a finding of bad faith under the doctrine of passive holding and alleges that the Respondent conceals its identity and uses false contact details in breach of its registration agreement for the disputed domain name. However, as pointed out by the Respondent, the doctrine of passive holding was developed and established in respect of circumstances that have not been shown to be present in this case. The disputed domain name is a dictionary word in some languages with uses by multiple parties; the Respondent has responded to the Complainant’s correspondence prior to the dispute and has submitted a Response in this proceeding; and there is no evidence that the Respondent has provided false contact details or concealed its identity. In view of this, the Panel’s view is that the doctrine of passive holding is not applicable to this case.
On the basis of all the above, the Panel finds that the Complainant has not established that the Respondent has registered and used the disputed domain name in bad faith. D. Reverse Domain Name Hijacking
The circumstances of this case have led the Panel to consider whether the Complainant has engaged in reverse domain name hijacking.
As summarized in Section 4.16 of the WIPO Overview 3.0, UDRP panels have found that a complainant has brought its complaint in bad faith when there are facts that demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as clear knowledge of respondent rights or legitimate interests or clear knowledge of a lack of respondent bad faith, facts that demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint, basing a complaint on only the barest of allegations without any supporting evidence, and filing of a complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis. Given the undertakings in paragraphs 3(b)(xiii) and (xiv) of the UDRP Rules, some panels have held that a represented complainant should be held to a higher standard.
The Complainant has not submitted any evidence in support of its bare claims for lack of rights and legitimate interests of the Respondent in the disputed domain name and for the Respondent’s alleged bad faith conduct. The pre-Complaint correspondence between the Parties shows that the Respondent brought the Complainant’s attention to the fact that the disputed domain name represented a dictionary word, and in any case the Panel is of the view that a trademark conscious brand owner should have been aware of the potential problems associated with adopting a dictionary word for its name and indeed the Complainant’s own website acknowledges that its name was derived from the dictionary word. However, the Complaint fails to address this issue. Had the Complainant acted diligently, it would have taken into account the lack of supporting evidence and the obvious potential defense that “tambour” is a dictionary word when deciding whether to file a complaint under the Policy against the Respondent. The Complainant is represented by counsel who must be taken to have studied to some degree the basic elements of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, and this is probably true since the Complaint includes references to this Overview. The Complainant’s counsel must have understood that the Complaint was bound to fail given the absence of any evidence to indicate bad faith on the part of the Respondent, but the Complainant was nevertheless filed after the unsuccessful attempt of the Complainant to acquire the disputed domain name.
Taking into account the above considerations, the Panel has reached the conclusion that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding, and so declares. 7. Decision
For the foregoing reasons, the Complaint is denied.
The Panel declares that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Assen Alexiev
Presiding Panelist
Jonathan Agmon
Panelist
Tony Willoughby
Panelist
Date: April 5, 2019
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