The Complainant is Raja, France, represented by Domgate, France.
The Respondent is Raja Aji, raja.com, United States of America (“United States”), self-represented. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2019. On July 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 18, 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 July 29, 2019, providing the registrant and contact information disclosed by the Registrar, and requesting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 1, 2019. The Center verified that the 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 August 2, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 22, 2019. The Response was filed with the Center August 15, 2019. On August 22, 2019, the Complainant submitted an unsolicited supplemental filing in reply to the Response. The Center appointed Andrew F. Christie, Harini Narayanswamy, and Marie-Emmanuelle Haas as panelists in this matter on September 25, 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. On October 15, 2019, the Panel issued Administrative Panel Order No. 1 (the “Order”), in which the Respondent was requested to provide: (i) evidence of his legal name and country of residence, and of his acquisition of the disputed domain name in the early 1990s; and (ii) explanation of his purpose in acquiring, and holding/maintaining, the disputed domain name, and of how he has used the disputed domain name since acquisition of it. The Order also invited the Complainant to make a submission in reply to the evidence and information submitted by the Respondent in response to it. The Respondent submitted a response to the Order, the Complainant submitted a reply to the Respondent’s response, and the Respondent submitted observations in response to the Complainant’s reply. 4. Factual Background The Complainant is a French company that sells packaging, warehouse, and office supplies. It was founded in 1954 by Rachel Marcovici in partnership with Janine Rocher, under the name of “Cartons RAJA”. They combined the first letters of their first names (“RA” and “JA”) to create “RAJA”. The name of the company was changed to “RAJA” in 1989, to reflect the diversification of its products. In the 1990s it began to expand internationally, and currently comprises 21 subsidiary companies in 18 countries and 11 distribution hubs. The group’s net sales in 2018 was EUR 631 million, and it is currently Europe’s number one packaging supplier. The Complainant is the owner of a number of trademark registrations in many European countries, including French trademark number 1477327 for the word trademark RAJA (dated July 13, 1978, and originally registered as trademark number 1058399) and International trademark number 611484 for the word trademark RAJA (registered on December 21, 1993). The Complainant is the owner of the domain name The Respondent is an individual who goes by the name of Raja Aji. The disputed domain name was registered on August 10, 1995. It resolves to a parking page with a number of links to a range of goods and services, including packaging goods and services. 5. Parties’ Contentions A. Complainant – Complaint The Complainant contends that the disputed domain name is identical to the Complainant’s trademarks because it is made up of its registered trademark RAJA, followed by the extension “.com”. The inclusion of the gTLD denomination “.com” shall be disregarded because it is a functional necessity. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) in email exchanges between the Complainant’s representative and the Respondent between March 2016 and October 2018, in which the Complainant’s representative made several offers to buy the disputed domain name, the Respondent, while replying that the disputed domain name was not for sale, never explicitly stated that he did not want to be contacted anymore, and was therefore hoping to receive a higher offer; (ii) the disputed domain name resolves to a Sedo parking page website with pay-per-click (“PPC”) links in different sectors of activity, including links that connect to the Complainant’s website and those of some of its competitors, and this cannot be considered as evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services; (iii) it has not been proven that “Raja” is the first name of the Respondent and, in the present circumstances, this is not enough to consider the Respondent has a right or legitimate interest in the disputed domain name; (iv) the word “raja” has no meaning in French or English, and an Internet search on “www.google.com” for the term “raja” on June 6, 2019, showed an almost entire first page of results relating to the Complainant; and (v) the Complainant has never licensed or otherwise authorized the Respondent to use the RAJA trademark as a domain name and, in particular, for conducting Internet users to competitive websites. The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) due to the notoriety of the Complainant it can be supposed that the Respondent knew of its existence and registered the disputed domain name with the objective to make money with it; (ii) the use of the disputed domain name, which intentionally trades on the fame of the Complainant, cannot constitute a bona fide offering of goods and services; (iii) the disputed domain name is parked with Sedo, a provider that generates sponsored links, some of which are packaging-related, which suggests knowledge of the Complainant and its activities in this sector as the word “raja” is not a descriptive term for things relating to packaging; (iv) the Respondent’s use of the disputed domain name is to attract those who might be interested in the Complainant’s trademark and to direct them to other products and suppliers, some of which directly compete with the products sold by the Complainant, and all of which provide the Respondent with income; (v) it is in the disputed domain name owner’s interest to choose keywords that are most likely to produce sponsored links that are most relevant to Internet users who have typed the disputed domain name into their browser, and the more relevant the links, the more likely it is that they will be clicked upon and the greater the click-through revenue that is generated; (vi) by placing the disputed domain name with a domain name parking service with commercial links to the Complainant’s competitors, the Respondent deliberately attracted, for commercial gain, Internet users to the parking page by trading on a likelihood of confusion with the Complainant’s trademark; and (vii) because the owner of the disputed domain name did not ask the Complainant’s representative to stop contacting him with offers to buy it, this confirms that the disputed domain name was registered for the purpose of selling it to the owner of the trademark, or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs. B. Respondent – Response The Respondent contends the following: (i) his name is “Raja Aji”, he acquired the disputed domain name in the early 1990s, and has not engaged in any trading, squatting, or other abuse of the disputed domain name; (ii) when he was contacted by the Complainant’s representative (although the person did not identify his association with any business) in 2016, with an offer to buy the disputed domain name, he informed him that it was not for sale, and this remained his position even though larger amounts of money were offered to him by the Complainant’s representative; (iii) during the last 12 months his earnings from the advertisements on the parking page to which the disputed domain name resolves was USD 123.30, which is quite low compared to the hundreds of thousands of dollars offered by the Complainant; (iv) “ad companies personalize the ads shown”, such that a packaging company employee is likely to be shown packaging-related advertisements on any page they visit; (v) “raja” is a very common name in the world, and traffic to the disputed domain name is from all over the world; (vi) contrary to the Complainant’s contention, the Merriam-Webster American dictionary does have a definition for the word “raja”; and (vii) “raja” is a generic name, and trademark law is clear that a company cannot claim as its proprietary mark a generic term. C. Complainant – unsolicited supplemental filing The Complainant’s unsolicited supplemental filing responding to the Respondent’s Response made the following points: (i) the Respondent never clearly replied that he does not want to be contacted with a larger offer for the disputed domain name; (ii) the Respondent has never indicated what good faith use he intends to have; (iii) the existence of PPC links attached to the disputed domain name that direct Internet users to the websites of the Complainant and its competitors is evidence of the Respondent’s knowledge of the Complainant’s trademark and the Respondent’s bad faith; (iv) redirecting the disputed domain name to a Sedo PPC parking page is clear proof of the Respondent’s bad faith; (v) “raja” is a distinctive term concerning the Complainant’s activity and several trademarks have been registered around the world, confirming that the term “raja” is distinctive for packaging products; and (vi) the notoriety of the Complainant is confirmed by the gross sales stated in the Complaint. D. Respondent – response to the Order In response to the Order, the Respondent provided: (i) a copy of his United States passport showing that his legal given name is “Rajasimha” and that his legal surname is “Aji”; and (ii) a self-generated Quicken report showing payments to the various registrars of the disputed domain name between 1997 (when Network Solutions started charging for domain names) and 2011. The Respondent asserted that: (i) he acquired the disputed domain name “back in the early to mid nineties, when domains were free to register”, that being the early days of the Internet when email was one of its primary uses; (ii) at the time he “thought it would be cool” to have a permanent email address that was not tied to an ISP and that was a “vanity” email address; (iii) he, his family, and his friends had used email addresses using the disputed domain name over the last few decades; (iv) he still gets contacted by people with whom he worked long ago, who remember his memorable email address; and (v) he wants to continue this use of the disputed domain name “in perpetuity”. E. Complainant – reply to Respondent’s response to the Order In reply to the Respondent’s response to the Order, the Complainant asserted: (i) the Respondent’s name is not “Raja”, but “Aji Rajasimha”; (ii) the disputed domain name is not identical to the Respondent’s name, but only corresponds to the first four letters of the Respondent’s given name; (iii) the Respondent does not indicate how he used the disputed domain name as a website and does not indicate what good faith use he intends to have for it; and (iv) the Respondent refers to a use of the disputed domain name for email addresses “which is questionable”, and has not provided any proof of such use. F. Respondent – observations on Complainant’s reply The Respondent submitted the following unsolicited observations on the Complainant’s reply: (i) it is common practice the world over for people to use diminutives of their legal name; (ii) “Raja” is his common name, which he has used since childhood in his personal and professional life, including on Linkedin and UltraSignup; (iii) email was the original “killer app” of the Internet and there is no requirement to create a website for every domain name; (iv) he has repeatedly demonstrated good faith by acquiring and holding a single domain name of personal significance, not negotiating with the Complainant in spite of its repeated offers to purchase the disputed domain name for very large sums of money, and by telling the Complainant and other would-be purchasers that the disputed domain name is not for sale; (v) it is the Complainant who is demonstrating bad faith by not accepting that not everything is for sale, and by using this case to “pressure or force me” to sell the disputed domain name to it; and (vi) monetizing the disputed domain name by resolving it to a parking page is a valid secondary use of it because the disputed domain name is used for a lawful purpose, namely email addresses. 6. Discussion and Findings A. Identical or Confusingly Similar Once the gTLD designation “.com” is ignored (which is appropriate in this case), the disputed domain name consists solely of the Complainant’s registered word trademark RAJA. The Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights. Accordingly, the Panel finds that the Complainant has established that the requirements of paragraph 4(a)(i) of the Policy are satisfied. B. Rights or Legitimate Interests The Respondent asserted that he registered the disputed domain name so that he could use it for “vanity” email addresses. Such an assertion is, in the Panel’s opinion, plausible. The Respondent further asserted that “my family, friends and I have used email addresses in this domain over the last few decades”. The Panel notes that the Respondent did not provide any evidence of such use. Furthermore, the Panel notes that the email communications provided by the Respondent, in which he replied (in the negative) to unsolicited offers to purchase the disputed domain name, did not appear to be from an email address using the disputed domain name, but rather appeared to be from a Gmail account. A MX lookup conducted by the Panel discloses that no MX records are set for the disputed domain name, showing that it is not currently being used for email. There is, therefore, no evidence that the Respondent has used the disputed domain name for email. The Respondent asserted that “Raja” is his common given name, it being the diminutive of his legal given name “Rajasimha”. Such an assertion is, in the Panel’s opinion, plausible. According to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.3: “Insofar as a respondent’s being commonly known by a domain name would give rise to a legitimate interest under the Policy, panels will carefully consider whether a respondent’s claim to be commonly known by the domain name – independent of the domain name – is legitimate. Mere assertions that a respondent is commonly known by the domain name will not suffice; respondents are expected to produce concrete credible evidence.” The Respondent provided links to a page on Linkedin and to a page on Ultra Signup (a consolidator of running race results) for a “Raja Aji”. There was no information on the Ultra Signup page that showed it was a page of the Respondent. There was, however, a photograph on the Linkedin page which, when compared with the photograph in the copy of the front page of the Respondent’s passport, appeared to establish that this was a page of the Respondent. There is, therefore, credible evidence that the Respondent is known professionally as “Raja Aji”. Accordingly, there is credible evidence to support the Respondent’s assertion that his motivation for holding the disputed domain name is because it matches to the given name that he uses. Importantly, there is no evidence that supports an alternative, non-legitimate, motivation for the Respondent holding the disputed domain name. In particular, there is no evidence that the motivation for the Respondent holding the disputed domain name is to benefit from the goodwill that another person – be that the Complainant or a third party – has in a trademark to which the disputed domain name is identical or confusingly similar. It is established by evidence that the Respondent has consistently, unambiguously, and steadfastly refused numerous unsolicited offers to purchase the disputed domain name, including a number of offers from the Complainant at a very high price. If the motivation for the Respondent holding the disputed domain name was other than as asserted by the Respondent, it would be expected that one of these offers would have been accepted. The Panel recognises that the Respondent has used the disputed domain name to resolve to a PPC parking page, but it considers that such use in this case is incidental and does not preclude a finding that the Respondent has rights or legitimate interests in the disputed domain name. While the matter is not without doubt, on balance and on the basis of the respectively submitted evidences, the Panel is of the view that the Respondent has rights or legitimate interests in the disputed domain name. These rights or legitimate interests arise from the fact that the disputed domain name is a plausible diminutive of the Respondent’s legal given name, the fact that there is credible evidence that the Respondent uses that diminutive for professional (and possibly for personal) purposes, and the absence of evidence supporting an alternative, non-legitimate, motivation for the Respondent holding the disputed domain name. Accordingly, the Panel finds that the Complainant has not established that the requirements of paragraph 4(a)(ii) of the Policy are satisfied. C. Registered and Used in Bad Faith Given the Panel’s finding that the Respondent has rights or legitimate interests in the disputed domain name, it does not need to, and does not, address whether the Complainant has established that the requirements of paragraph 4(a)(iii) of the Policy are satisfied. 7. Decision For the foregoing reasons, the Complaint is denied. Andrew F. Christie Harini Narayanswamy Marie-Emmanuelle Haas Date: November 5, 2019
Presiding Panelist
Panelist
Panelist
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