The Complainant is Pharmactive Biotech Products, S.L., Spain, represented by PONS IP, Spain.
The Respondent is HugeDomains.com, United States of America (“United States”), represented internally. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 28, 2020. On December 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 30, 2020, 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 January 8, 2021, 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 13, 2021. 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 January 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 7, 2021. The Response was filed with the Center on February 6, 2021. The Center appointed Assen Alexiev, Alejandro Touriño, and Tony Willoughby as panelists in this matter on March 10, 2021. 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 a Spanish company. It develops and manufactures innovative natural ingredients and delivers them to companies in the nutraceutical, pharmaceutical, and veterinary industries for marketing and distribution. The Complainant was the first company to market saffron extract for mood improvement under the brand Affron. This product is a premium saffron ingredient standardized to 3.5% Lepticrosalides, by high-performance liquid chromatography (“HPLC”), a complex of bioactive compounds responsible for the beneficial properties and organoleptic properties of this product. According to the social listening platform Scooper, the Affron product is the most published saffron extract in the world, reaching in 2020 a potential audience of 6 million. The product has been recognized as the Ingredient of the Year for Cognitive Function at The NutraIngredients USA Awards and the NIE USA Awards in 2020. The Complainant is the owner of the following trademark registrations of the sign “Affron” (the “AFFRON trademark”): - the Spanish trademark AFFRON with registration No. M2985980, registered on November 14, 2011 for goods in International Class 5; - the International trademark AFFRON with registration No. 1111760, registered on January 11, 2012 for goods in International Class 5; - the European Union trademark AFFRON with registration No. 016304586, registered on May 17, 2017 for goods in International Class 5; and - the United Stated trademark AFFRON with registration No. 6203958, registered on November 24, 2020 for goods in International Class 5. The disputed domain name was registered by the Respondent on October 23, 2013. At the time of filing of the Complaint, it resolved to a website containing an offer for its sale. The disputed domain name is currently inactive. 5. Parties’ Contentions A. Complainant The Complainant submits that the term “Affron” is widely known due to the duration (since 2012), intensity, and geographical scope of its use to identify the products distributed by the Complainant under it, and the targeted public identifies “Affron” as a term associated with the Complaint. According to the Complainant, under article 6bis of the Paris Convention for the Protection of Industrial Property, article 9 of Regulation (EU) 2015/2424, and article 34 of the Spanish Law 17/2001 on Trademarks, the registration of the AFFRON trademark confers on the Complainant the exclusive right to use this trademark, and the Complainant is entitled to prevent third parties from using a sign that is identical with, or similar to, the AFFRON trademark irrespective of whether such sign is used in relation to goods or services which are identical with, similar to or not similar to those for which the AFFRON trademark is registered, where the latter has a reputation in the Union and where use of the third party’s sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the AFFRON trademark. The Complainant states that the disputed domain name is identical to the AFFRON trademark, because the trademark is completely contained in the disputed domain name. The Complainant maintains that “Affron” is not a common name or term and is not associated with any product, service or company other than those of the Complainant. According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name, because there is no relationship between the Parties and the Complainant has not authorized the Respondent to use the AFFRON trademark, which was registered prior to the registration of the disputed domain name. The Complainant adds that the Respondent has not been known under the name “Affron” and has no trademark rights in it. The Complainant also notes that the Respondent is not using the disputed domain name, and the associated website only shows an advertisement that the disputed domain name is for sale for the price of USD 5,195. The Complainant contends that the disputed domain name was registered and is being used in bad faith. According to it, the Respondent was or should have been aware of the Complainant’s AFFRON trademark prior to registering the disputed domain name, because the term “Affron” does not mean anything per se and there is broad knowledge of the Complainant’s activity under the AFFRON trademark, which was registered long before the disputed domain name. The Complainant adds that Internet searches of the term “Affron” yield results associated to the Complainant or the Complainant’s AFFRON trademark, and this should have led the Respondent to carry out a precautionary check whether this word was not subject to exclusive rights of the Complainant. The Complainant contends that the Respondent has registered the disputed domain name with the purpose of disrupting the Complainant’s activity, to prevent the Complainant from registering the disputed domain name, and to create confusion with the Complainant’s AFFRON trademark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website. According to the Complainant, any person searching for “Affron” in a search engine would be directed to the website at the disputed domain name and may believe that this website is somehow linked to the Complainant because the AFFRON trademark of the Complainant is fully incorporated in the disputed domain name. The Complainant further notes that the disputed domain name was registered in 2013, but the associated website has no content other than an offer for sale of the disputed domain name. According to the Complainant, the Respondent is a cybersquatter that registers, traffics in Internet with domain names in bad faith in order to get profit from the goodwill of a trademark belonging to someone else. B. Respondent The Respondent states that the disputed domain name is not identical or confusingly similar to the Complainant’s AFFRON trademark. According to the Respondent, the AFFRON trademark is not distinctive, and the Complainant does not have worldwide exclusive rights to the term “Affron”. The Respondent maintains that it has rights and legitimate interests in the disputed domain name. It notes that the Complaint is mostly based on the deceptive proclamation that Complainant created the term “Affron” and is the only entity to use it anywhere in the world. Contrary to this, “Affron” is a common name given to many individuals worldwide and the name of numerous companies throughout the world and also the name of a physical location in Florida, United States. The Respondent notes that the previous registrant of the disputed domain name was an Indian company that was not related to the Complainant, which had registered and used the disputed domain name until 2004. The Respondent submits that a party that chooses to register a common term as a trademark may not use the Policy to bar others from using the same common term in a domain name, and the Complainant cannot claim an exclusive worldwide right to use the term “Affron” when other businesses are already using it and hundreds of people throughout the world have “Affron” as their first or last name. It is not a violation of the Policy to register a domain name that contains a trademark of another when this trademark is made up of generic words or commonly used terms. The Respondent states that the Complainant must prove that the Respondent knew of the Complainant’s trademark and had the intent to profit from such trademark, but has not provided any evidence in this regard. The Respondent maintains that it is using the disputed domain name in connection with a bona fide offering of goods or services and had never heard of the Complainant prior to receiving the Complaint. The Respondent submits that it is a well-known and reputable reseller of Internet domain names, and owns a portfolio of more than 3,700 domain names that consist of generic names corresponding to the legal name of hundreds and thousands of people worldwide, and more than 5,100 domain names that consist of surnames. The Respondent states that it registered the disputed domain name when its previous owner let it expire in October 2013, and acquired it due to the fact that “Affron” is a common first name and last name, so anyone using that name would be interested in acquiring the disputed domain name to pursue their business or online activities. According to it, common words are legitimately subject to registration on a first-come, first-served basis, and their sale is a bona fide offering of goods and services under the Policy. The Respondent denies that it has registered and used the disputed domain name in bad faith. It asserts that the Complainant’s AFFRON trademark is not distinctive and unique, and is not a made-up word, but has been around for centuries as a name, and the Complainant does not have the exclusive right to own and use it. When a domain name, consisting of the name of a person is registered in good faith and is not used to target the Complainant or their trademark and business, then that registration does not support an actionable claim for a UDRP complaint. The Respondent asserts that it had never heard of the Complainant and of its AFFRON trademark prior to receiving the Complaint. It points out that most of the evidence submitted by the Complainant is dated 2019 and 2020, years after the Respondent had registered the disputed domain name, and there is no evidence showing that the Respondent would have known of the Complainant or of the Complainant’s AFFRON trademark when the Respondent registered the disputed domain name. The Respondent asserts that it did not register the disputed domain name to target the Complainant’s trademark or its product or to sell it to the Complainant or to its competitors, and that it has never interfered with the Complainant’s business or communicated with the Complainant. The fact that Respondent is offering the disputed domain name for public sale is irrelevant as the Respondent’s business practice is legitimate and accepted pursuant to the Policy. The Respondent submits that the Complainant has filed the Complaint in bad faith with the intent to harass the Respondent and attempt to steal the disputed domain name and requests that the Panel make a finding of Reverse Domain Name Hijacking by the Complainant. The Complainant has made the false, unresearched and misleading statement that it is the only entity in the world that uses “Affron”, and has attempted to falsify the facts and evidence in an abuse of the Policy. The Respondent further notes that the Complainant is represented by a professional intellectual property law firm, and should be fully aware that making up facts is an abuse of the Policy, and that the Complainant could not prove any of the required elements of the Policy. Nevertheless, the Complainant violated and abused the administrative proceeding by bringing a groundless, frivolous, and meritless Complaint against the Respondent. 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 disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has provided evidence of various registrations of the AFFRON trademark in a number of jurisdictions and has thus established its trademark rights for the purposes of the Policy. The Respondent disputes that the Complainant has exclusive rights over the term “Affron”, but this argument does not affect the Panel’s finding under this element, because the AFFRON trademark of the Complainant has been validly registered. The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). 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 “affron”, which is identical to the AFFRON trademark. Therefore, the Panel finds that the disputed domain name is identical to the AFFRON trademark in which the Complainant has rights. B. Rights or Legitimate Interests As summarized in sections 2.1 and 2.10.1 of the WIPO Overview 3.0, panels acting under the Policy have accepted that aggregating and holding domain names (usually for resale) consisting of acronyms, dictionary words, or common phrases can be bona fide and is not per se illegitimate under the Policy. In order to find rights or legitimate interests in a domain name comprised of a dictionary word or a common phrase, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning or common phrase and not to trade off third-party trademark rights. The majority of the Panel agrees with this view and considers that the same principles apply where a domain name reseller registers a personal name or surname used by different unrelated persons because it considers that domain name is likely to be of value to such persons, and without having an intent to target a specific trademark holder. The evidence in the case shows that the Respondent has been in the business of registering and holding domain names for resale for a long period of time, and that it holds a large number of domain names reflecting personal names and surnames. There is no dispute between the Parties that the disputed domain name has been held and offered for sale by the Respondent for over 7 years, without ever being used for an active website. The AFFRON trademark is validly registered and gives rise to the exclusive right of the Complainant to use it in the respective jurisdictions in relation to the products and services that fall within its scope of protection. However, as shown by the Respondent, “Affron” has long been used also as a personal name or surname or as part of company names by different people and companies unrelated to the Complainant. This satisfies the majority of the Panel that the term “Affron” is not exclusively associated with the Complainant and with its product and that third parties may legitimately use the disputed domain name as long as they do not target the Complainant and its AFFRON trademark. The Respondent denies that it was aware of the Complainant and of its AFFRON trademark when it registered the disputed domain name or at any time up to the filing of the Complaint, and there is no evidence in the case file to suggest otherwise, so the majority of the Panel sees no reason to question that denial. There is also no evidence that the Respondent has specifically targeted the Complainant in relation to the registration and use of the disputed domain name. Taking the above into account, the majority of the Panel sees no reason to regard the Respondent’s conduct as illegitimate and finds that the Complainant has failed to establish that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith As discussed in the section on rights and legitimate interests above, the Complainant has failed to establish that the term “Affron” is uniquely associated with it and its product. There is no evidence before the majority of the Panel to show that the Complainant has any reputation outside the specialized field in which it operates, and the earliest evidence about the use and public recognition of its Affron product dates from 2018. There is no evidence that the wider public in general, or the Respondent in particular, must have known of the Complainant at the time when the disputed domain name was registered in 2013. See FPT Industrie S.p.a. and REM Industrie S.r.l. v. HugeDomains.Com,WIPO Case No. D2017-0842, and Tenaris Connections BV v. Domain Admin, HugeDomains.com, WIPOCase No. D2018-1849. If the Respondent had no knowledge of the Complainant or of the AFFRON trademark when it registered the disputed domain name, it cannot have done this in bad faith. If it had conducted a trademark search in the United States, its home territory, it would have found no registration of the mark. The only United States registration of the mark was registered on November 24, 2020 in class 5 for various dietetic substances. The Respondent would have had no cause to question the legality of his registration and planned use of the disputed domain name. There is also no evidence that it has used it in bad faith, as it has not sought to target the Complainant, but has only offered the disputed domain name for sale to the general public without contacting the Complainant. The majority of the Panel finds nothing wrong with offering for sale a domain name which has been registered in good faith, and seeking a price in excess of the costs of registration. See Tenaris Connections BV v. Domain Admin, HugeDomains.com,WIPO Case No. D2018-1849. In view of the above, the majority of the Panel finds that the Complainant has failed to establish that the disputed domain name was registered and is being used in bad faith. 7. Reverse Domain Name Hijacking Reverse Domain Name Hijacking (“RDNH”) is defined under the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Paragraph 15(e) of the 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 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 section 4.16 of the WIPO Overview 3.0, reasons articulated by panels for finding RDNH include: (i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant’s lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith (such as registration of the disputed domain name well before the complainant acquired trademark rights, (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, (iv) the provision of false evidence, or otherwise attempting to mislead the panel, (v) the provision of intentionally incomplete material evidence – often clarified by the respondent, (vi) the complainant’s failure to disclose that a case is a UDRP refiling, (vii) filing the complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis, (viii) basing a complaint on only the barest of allegations without any supporting evidence”. The mere lack of success of the Complaint is not in itself sufficient for a finding of RDNH. The majority of the Panel does not consider the Complainant’s conduct warrants a finding of RDNH. The Complainant has overstated its case, and failed to consider fully the consequences of the fact that there was no evidence of the Respondent having targeted the Complainant. However, it appears to the majority of the Panel that the Complainant has been under a mistaken impression as to the exact identities of the Respondent and of the Registrar (as their physical addresses coincide) and may have believed that HugeDomains.com is a third party platform rather than the registrant of the disputed domain name, and as a result may have been unable to take into account the nature of the Respondent’s business and the other facts material to the outcome of this case, and to understand that it could not succeed as to two of the required three elements under the Policy. 8. Decision For the foregoing reasons, the Complaint is denied. Assen Alexiev Alejandro Touriño Tony Willoughby Dissenting Opinion This panelist respectfully disagrees with the decision of the majority in this matter. While the majority of the Panel considers that second and third element are not met, this panelist dissents and considers that the Complainant has a valid trademark registration prior to the creation of the disputed domain name by the Respondent and is entitled to rely on it. In the view of the dissenting panelist, the Respondent is a well-known and reputable reseller of Internet domain names. Over the years many UDRP Panels have considered said business as legitimate under the Policy in cases where the reseller registers and sells domains consisting of “generic and commonly used terms”. However, this is not the case in the dissenting panelist’s view. As a professional reseller, it could have been easy for the Respondent to conduct a simple trademark review and find that the disputed domain name was identical to a pre-existing trademark. This is a requisite often asked by UDRP panels. Indeed, the Respondent should be or have been aware of the Complainant’s trademark at the time of registration of the disputed domain name. In the dissenting panelist’s understanding the Respondent has failed to explain that it has legitimate interest and that it is using the domain name in relation to as bona fide offering of goods. Essentially, the Respondent’s argument is based on the allegation that the disputed domain name contains a generic term and the Respondent engaged in a lawful business. The dissenting panelist respectfully does not consider that this bare assertion by the Respondent rebuts the Complainant’s prima facie case. The Respondent’s statement that the Complainant’s mark is generic should not advance its case, since there is a prior valid trademark registration by the Complainant, which must confer the right to the latter to admit the case. Rights or Legitimate Interests As noted by the panel in Majid Al Futtaim Properties LLC v. Medhat Eissa (WIPO Case No. D2015-1151) and Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624, “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion”. This proceeding was extended to ensure that the Respondent had adequate opportunity to answer the case against it. In the case at hand, the Respondent has provided no evidence to support this bare assertion. The Respondent’s statement that the Complainant’s mark is generic does not fit the case. The Complainant has a registered mark and is entitled to rely on it. Lastly, there is no other evidence in the case file which suggests that the Respondent might have a right or legitimate interest in the disputed domain name. Paragraphs 4(c)(ii) and (iii) of the Policy outline other circumstances by which the Respondent might demonstrate rights or legitimate interests. These include circumstances which are not met here. Indeed, the dissenting panelist has visited the website hosted at the disputed domain name in order to investigate whether there could be found any evidence as to Respondent’s rights or legitimate interests in the disputed domain name. No such evidence of any rights or legitimate interests were however found when the website was visited. There are no indications whatsoever that Complainant has granted Respondent any rights to use its service or trademarks, nor are there any indications that the Respondent is using the disputed domain name in connection with a bona fide offering of goods and services, or is making a legitimate, noncommercial and fair use of it. On the contrary, the disputed domain name is on sale for an amount in excess of any out of pocket expenses the Respondent can reasonably have incurred in acquiring the disputed domain name. Under these circumstances, the dissenting panelist is thus satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, for the purpose of paragraph 4(a)(ii) of the Policy. Registered and Used in Bad Faith In addition to the fact that the domain name is being offered for a sum in excess of any out of pocket expenses the Respondent can reasonably have incurred in acquiring it, the key point here falls under the failure of the Respondent to conduct a proper due diligence in advance of creating the disputed the domain name. The failure to conduct trade mark searches in advance may be evidence of bad faith within the meaning of paragraph 4(a)(iii) of the Policy (mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141). Some UDRP panels support that view on the basis that it constitutes “willful blindness” (Grundfos A/S v. Texas International Property Associates,WIPO Case No. D2007-1448). Some UDRP panels say that paragraph 2 of the Policy requires a registrant to satisfy himself/herself in advance that “the registration of the domain name will not infringe upon or otherwise violate the rights of any third party” thereby necessitating trade mark searches if a bad faith finding is to be avoided (Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964 and Grundfos, supra). This requirement of conducting trademark searches must be specially needed in cases like the one at hand where the Respondent is a “sophisticated” registrant (see, e.g., mVisible and Grundfos, supra). Hence, the dissenting panel believes that to deem bad faith within the meaning of paragraph 4(a)(iii) of the Policy for failing to conduct a trademark search may be proportionate in this case. The three-member panel in the mVisible case, supra, went even further holding not only that trademark searches may be necessary, but that they must also be “adequate” and that to be “adequate” “the searches should be properly done to make it likely that any existing trademark rights will be found”. Applying that process to this case, where the Respondent is a professional registrant, it is likely that the Respondent knew (or should have known) of the Complainant’s trademark when it registered the domain name. In line with said view, the dissenting panelist finds that the third element is also met. In light of the above findings, the dissenting panelist does not find that the Complaint was brought in bad faith or in an attempt at RDNH. Alejandro Touriño
Presiding Panelist
Panelist (Dissenting)
Panelist
Date: March 23, 2021
Dissenting Panelist
Date: March 23, 2021
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