The Complainant is Tecme S.A., Argentina, represented by Clarke, Modet & Co., Argentina.
The Respondent is Stephen Bougourd, Jersey, 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 October 6, 2020. On October 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 8, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 9, 2020, 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 amendment to the Complaint on October 9, 2020. The Center verified that the Complaint together with the amendment to 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 October 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 3, 2020. On October 8 and 18, 2020, the Center received email communications from the Respondent and the Response was filed with the Center on October 31, 2020. The Center appointed W. Scott Blackmer as the sole panelist in this matter on November 10, 2020. 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 business corporation organized under the law of Argentina and headquartered in Córdoba, Argentina. Established in 1966, the Complainant is a leading manufacturer of mechanical ventilators used in hospital intensive care units, which it produces in Argentina and, since 2015, in the United States of America (“United States”) and exports to more than 50 countries. Production has increased in 2020 in response to the COVID-19 pandemic, under cooperation agreements with CNH Industrial and Veng to reach even larger markets. The Complainant operates a principal website at “www.tecmeglobal.com”. As the Respondent points out, there are no archived screenshots of this website available from the Internet Archive’s Wayback Machine before 2018. The Complainant holds the following trademark registrations: MARK JURISDICTION REGISTRATION NUMBER REIGSTRATION DATE TECME Argentina 2392525 September 10, 2010 TECME Argentina 2392526 September 10, 2010 TECME United States 5037307 September 6, 2016 TECME COMMITTED TO LIFE Argentina 3021087 September 24, 2019 TECME COMMITTED TO LIFE Argentina 3021088 September 24, 2019 TECME COMMITTED TO LIFE European Union 018137266 February 4, 2020 TECME Brazil 917671120 February 27, 2020 The Registrar reports that the Domain Name was created on March 6, 2000 and is registered to the Respondent Mr. Bougourd, an individual residing in the Bailiwick of Jersey. The Domain Name resolves to a parking page advertising the Registrar’s services. The Complainant demonstrates from screenshots archived by the Internet Archive’s Wayback Machine that the Domain Name has been similarly parked since at least December 2014. 5. Parties’ Contentions A. Complainant The Complainant argues that it has been using “TECME” as its company name since 1966, as shown by its bylaws attached to the Complaint, and has an international reputation built on that name. The Complainant asserts that the Respondent is not known by a name corresponding to the Domain Name and has no known trademark rights in that name, which is identical to the Complainant’s name and mark. As the mark is not a dictionary word in Spanish or English, the Complainant infers that the Respondent chose the Domain Name only to exploit the Complainant’s reputation and has parked the Domain Name for speculative gain. B. Respondent The Respondent, who is not represented by counsel, does not challenge the Complainant’s trademark registrations but notes that they post-date the Domain Name registration by many years. The Respondent avers that he had no knowledge of the Complainant until receiving notice of this UDRP Complaint. The Response attaches several examples of businesses using “techme” in their names or domain names, with “tec”, an abbreviation for technology in several languages, joined to “me” as a personal pronoun or with other signification, such as “www.techme.net”, “www.techme.eu”, “www.techme.de”, “www.techme.io”, “www.techmestore.com”, and “www.techmeitalia.com”. The Respondent states that he registered the Domain Name 20 years ago to use in connection with his computer training business, Technology Made Easy, abbreviating the name to the Domain Name string “tecme”. The Response attaches evidence that the Respondent registered the business name “Technology Made Easy” with the Greffe Judiciare of Jersey on December 16, 1996, for the business of “advice and assistance with computers and accounting”. According to the Respondent, he opened an office and started working full-time at that business in 2000, when he registered the Domain Name. The Response attaches a screenshot from the Wayback Machine dated January 4, 2004 of the Respondent’s former website associated with the Domain Name, headed “Technology Made Easy” and advertising the Respondent’s services as “Jersey’s QuickBooks Specialist”. The website had several pages and displayed the Respondent’s contact information. The Respondent explains that he shifted focus to training small businesses in the use of QuickBooks and set up a new company, QBTec Limited, in 2005, with a corresponding domain name. He has maintained the Domain Name, however, for email accounts, and may choose to reestablish a website using the Domain Name. The Respondent denies being a domain name speculator or cybersquatter. He states that he holds fourteen domain names, all related to family or business interests, and has never sold one. He denies prior knowledge of the Complainant and any interest in exploiting or damaging the Complainant’s reputation. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following: (i) the 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 domain name; and (iii) the domain name has been registered and is being used in bad faith. Under paragraph 15(a) of the Rules, “[a] Panel shall decide a 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 The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Complainant holds registered trademarks consisting of, or prominently featuring, the letters “TECME”, which is identical to the string of letters comprising the Domain Name. As usual, the generic Top-Level Domain (“gTLD”) “.com” is disregarded as a standard registration requirement. See WIPO Overview 3.0, section 1.11.2. For purposes of this element of the Complaint, the timing of the trademark registrations is not relevant, and the Panel concludes that the first element is established on these facts. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the respondent may establish rights or legitimate interests in the domain name, by demonstrating any of the following: (i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) that the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Complainant in this proceeding has demonstrated trademark rights, the lack of permission to use its mark, and the Respondent’s current lack of a substantive website associated with the Domain Name. This shifts the burden to the Respondent to produce evidence of rights or legitimate interests. The Respondent plausibly recounts that he acquired the Domain Name as the abbreviated form of a business name that he registered in 1996. If he were still using that business name, this would likely suffice to establish his rights or legitimate interests in the Domain Name, but it does not appear that he has done so since 2005. It is generally held that the Respondent’s rights or legitimate interests must be current at the time of the UDRP proceeding. See WIPO Overview 3.0, section 2.11; ELCOMAN Srl v. Marc Ellis,WIPO Case No. D2020-1628. The Panel concludes, therefore, that the Complainant prevails on the second element of the Complaint. C. Registered and Used in Bad Faith The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name): “(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” These examples are not exhaustive, and the Complainant suggests that the Respondent is simply holding onto the Domain Name for “speculative” purposes, in the hope that it may someday profit from its implied association with the Complainant, meanwhile blocking the Complainant from using a potentially valuable resource. The Complainant’s arguments are simply not persuasive. First, it has not established that it even had a trademark to attack at the time the Respondent registered the Domain Name in 2000, ten years before the first trademark registration. The record does not include evidence of sales, advertising, and market or media recognition at that time to support a case for common law protection (see WIPO Overview 3.0, section 1.3). Second, assuming the Complainant made such a case, there is no evidence that the Complainant had an online presence in 2000 that the Respondent would have discovered while registering the Domain Name, or that there is any reason to doubt the Respondent’s assertion that he had no knowledge of the Complainant at that time. The Complainant sells medical devices to hospitals; the Respondent is a computer-proficient accountant. Thus, the Respondent’s denial of prior awareness is entirely plausible. Finally, the Respondent had a plausible reason for using that string as an abbreviation for an actual business name that he registered beforehand, and the Respondent put up a website using that name for a time and continues to use the Domain Name for business emails. Given these circumstances, the Panel considers the Respondent’s account plausible and finds that the Complainant has not met its burden of establishing the likelihood of bad faith in both the registration and use of the Domain Name. The Complaint fails on the third element. 7. Decision For the foregoing reasons, the Complaint is denied. 8. Reverse Domain Name Hijacking Although the Respondent did not request a finding of Reverse Domain Name Hijacking, the Panel considers this an appropriate case to enter such a finding. Paragraph 15(e) of the UDRP Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking (‘RDNH’) or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. As set out in WIPO Overview 3.0 section 4.16, reasons articulated by panels for finding RDNH include “ (ii) facts which 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, including relevant facts on the website at the disputed domain name or readily available public sources such as the WhoIs database, (iii) unreasonably ignoring established Policy precedent notably as captured in this WIPO Overview – except in limited circumstances which prima facie justify advancing an alternative legal argument …”. The Complainant here was fully aware that its trademark registrations postdated the Domain Name registration, on the other side of the world, by a decade. Yet the Complainant neglected to submit evidence to support prior rights in an unregistered mark (see WIPO Overview 3.0, section 1.3). The Complainant should have recognized that establishing bad faith in the registration of a 20-year-old Domain Name would require persuasive evidence that the registrant was likely to have knowledge of the Complainant at that time, a Complainant in a specialized industry, one which lacked even an online presence at the time. The Complainant cited archived screenshots to show that the Respondent had parked the Domain Name for years but failed to discover or disclose that earlier screenshots showed that the Respondent actually operated a website for a business with a name for which the Domain Name was a logical abbreviation. Altogether, the Complaint displays a remarkable lack of realism that warrants an unsolicited finding of reverse domain name hijacking. W. Scott Blackmer
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Date: November 24, 2020
Full & Egal Universal Law Academy