WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ferrer Internacional, S.A. v. Domain Admin, Level2 LLC
Case No. D2018-0670
1. The Parties
The Complainant is Ferrer Internacional, S.A. of Barcelona, Spain, represented by EMME & PI The Trademark Company, S.L.P., Spain.
The Respondent is Domain Admin, Level2 LLC of Los Angeles, California, United States of America (“United States”), represented by ESQwire.com PC, United States.
2. The Domain Name and Registrar
The disputed domain name <sugarex.com> is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2018. On March 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 26, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 April 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 25, 2018. Following a request from the Respondent, the Center granted the automatic four calendar day extension for response under paragraph 5(b) of the Rules. The new due date for Response was April 29, 2018. The Response was filed with the Center on April 27, 2018.
The Center appointed Luca Barbero, Edoardo Fano and The Hon Neil Brown Q.C. as panelists in this matter on May 22, 2018. 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.
In light of the complexity of the case, the due date for decision, initially set on June 5, 2018, was extended to June 15, 2018.
4. Factual Background
The Complainant is a Spanish pharmaceutical company which was founded in 1959 and is currently active in several countries in America, Europe, Africa, Middle East and Far East.
In the second half of the 70s, the Complainant founded two chemical companies: Exquim, S.A. (in 1976), dedicated in the manufacture and commercialization of fine chemical raw, and Interquim, S.A. (in 1978) specializing in the production and sale of active pharmaceutical ingredients. The chemical division of the Complainant, Ferrer HealtTech of Exequim, S.A., manufactures and supplies, among others, ingredients for both human and animal feeding, including the intensity sweetener and flavor enhancer Sugarex.
The Complainant is the owner of several trademark registrations for SUGAREX, including the following:
– Spanish trademark No. 1741631 for SUGAREX (word mark), filed on the January 28, 1993, and registered on the June 22, 1993, for the following goods in class 31: “Additives to fodder, not for medical purposes”;
– International trademark No. 603557 for SUGAREX (word mark), filed on June 30, 1993 and currently in force in Italy, Bulgaria, Czech Republic, Hungary, Latvia, Lithuania, Poland, Romania, Slovenia and Slovakia, for the following goods in class 31: “Additives to fodder not for medical purposes”;
– European Union Trade Mark No. 000409441 for SUGAREX (word mark), filed on November 29, 1996 and registered on September 7, 1998 for the following goods in class 31: “Aromatic preparations for use in foodstuffs for animals”;
– United States trademark No. 5243962 for SUGAREX (word mark), filed on April 19, 2016 and registered on July 18, 2017, for the following goods in class 31: “Non-mediated additives for animal feed”. Such registration replaced prior United States trademark registrations for SUGAREX (word mark) which are no longer in force (Nos. 2749748, filed on May 8, 2002, in class 31, and 3809706, filed on September 8, 2009, in class 31).
The Respondent is a United States company that owns and manages thousands of premium “.com” domain names.
The disputed domain name <sugarex.com> was registered on September 30, 2013, according to the WhoIs records, and is pointed to a web page providing pay-per-click links related to food and culinary items. On the top of the website, the statement “This premium domain name may be listed for sale. Click here to inquire” is displayed, with a link to an internal page of the website of the broker Uniregistry allowing to submit inquiries on the disputed domain name.
5. Parties’ Contentions
The Complainant states that its trademark SUGAREX is an internationally well-known trademark in the sector of animal health and nutrition, being present in the market in Spain since 1963 and internationally since the 80s and 90s, including in the United States, where the first SUGAREX trademark was filed and registered before the registration of the disputed domain name.
The Complainant submits the following documents and statements to demonstrate the renowned status of its trademark SUGAREX:
i) reports, attached to the Complaint as Annexes 15 and 16, showing a list of countries where the SUGAREX products are marketed and the respective sales figures related to the years 2011-2012 and 2016-2017;
ii) printouts of the Complainant’s website “ www.ferrer.com“ showing the countries in which the Complainant is currently present, including the United States;
iii) examples of advertising of the SUGAREX products in journals of the sector;
iv) marketing plan related to the SUGAREX range of products for 2010;
v) pictures of the SUGAREX stands at trade fairs and exhibitions that the Complainant attended, including VIV ASIA 2003, EXPOAVIGA 2004, VIV ASIA 2007, VIV EUROPE 2010 and EUROTIER 2016;
vi) a description of the history of the Complainant and of its products available on the Complainant’s website “ www.ferrer.com“;
vii) comparative studies commissioned to the Animal Technology Institute of Taiwan and the results of an Experimental report prepared by the Technische Universität München (TUM);
viii) printouts of the Complainant’s account and pages on the following social networks: LinkedIn, YouTube, Google+ and Instagram.
The Complainant contends that the disputed domain name is identical to its trademark since the Top-Level Domain “.com” is irrelevant when determining whether a disputed domain name is identical or confusingly similar to a protected mark. The Complainant also states that the identity between the disputed domain name and the Complainant’s trademark can generate a risk of association amongst Internet users, who could be induced to believe that the disputed domain name and the contents included in the respective webpage are associated or related in some way with the Complainant and the Complainant’s trademark.
The Complainant states that the Respondent has no rights or legitimate interests in the domain name because:
i) the Respondent does not have any trademark or service mark that includes SUGAREX, as proved by the results of a search by applicant made by the Complainant in the WIPO Global Brand Database and in the EUIPO database;
ii) the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks and it has not permitted the Respondent to use any domain name incorporating the trademark SUGAREX;
iii) there is no evidence that the Respondent has used or has made demonstrable preparations to use the disputed domain name, or any name corresponding to the disputed domain name, in connection with a bona fide offering of goods or services, before it received any notice of this dispute. On the contrary, the Respondent is using the disputed domain name with the purpose of attracting, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademark SUGAREX and diverting Internet users to third parties’ websites, and is also trying to sell the disputed domain name;
iv) it cannot be proved that the Respondent has been commonly known by the disputed domain name since the Respondent has no trademark rights on SUGAREX and there is no results online that proves the association between the trademark SUGAREX and the name of the Respondent;
v) the Respondent does not make a legitimate, fair or noncommercial use of the disputed domain name. On the contrary, it has a clear intent, for commercial gain, to misleadingly divert consumers to third parties’ websites and to try to sell the disputed domain name.
The Complainant alleges that the Respondent registered the disputed domain name in bad faith for the following reasons:
i) the disputed domain name was registered on September 30, 2013, many years after the registration of the Complainant’s trademark SUGAREX;
ii) in 2013, the Complainant’s trademark SUGAREX was internationally well-known, so there is no doubt that the Respondent certainly knew it and registered the disputed domain name despite the lack of any rights or legitimate interests, with the only aim of using the reputation of the trademark SUGAREX for its own commercial gain.
The Complainant alleges that the disputed domain name was used in bad faith since:
i) the Respondent is using the disputed domain name in connection with a website displaying pay-per-click links not related to the Complainant’s activity and products, thus capitalizing on the reputation of the Complainant’s trademark by earning pay-per-click revenues for redirecting Internet users to third parties’ websites;
ii) the Respondent intentionally attempted to attract for commercial gain, Internet users to its website or other online locations, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website. The Complainant further states that the Respondent not only does not use the disputed domain name to distinguish its goods or services, but is also using it to take advantage of the reputation of the Complainant’s trademark by attracting Internet users that search for the Complainant’s SUGAREX products;
iii) the Respondent offers the disputed domain name for sale to the general public, as demonstrated by the message displayed at the top of the website available at the disputed domain name, providing also a link that redirects to another webpage where it appears that the disputed domain name is on sale in the Uniregistry market. The Complainant also submits, as attachment to the Complaint, some correspondence exchanged between the Complainant and Uniregistry, in which the latter requested the amount of USD 19,500 to transfer the disputed domain name to the Complainant. The Complainant contends that such sale offer clearly indicates that, when the Respondent registered the disputed domain name, it bore in mind the possibility of selling it to the Complainant for a sum far in excess of the usual out-of-pocket expenses related to the disputed domain name.
The Respondent states that it purchased the disputed domain name on November 8, 2017 through the provider SnapNames, which sold it from its internal domain name portfolio. The Respondent points out that it acquired the disputed domain name in good faith from the prior owner because it is related to the nearly 100-Billion Dollar sugar industry, with many possible references, including but not limited to “Sugar Expositions” or “Sugar Exchange”.
The Respondent informs the Panel that, since 2003, it has registered hundreds of common-word and combined letter domain names for investment and development and continues to register inherently valuable short “.com” domain names, in part, because the decisions of impartial panels of legal experts have found in favor of such a business strategy of domain investing.
The Respondent ascertained through its searches that the disputed domain name was first registered in 2001 and had at least five owners over the past 17 years.
The Respondent states that it believed that no party could claim exclusive rights into the disputed domain name because the Complainant’s trademarks are conspicuously absent from Google search results as well as from the Complainant’s own website (where two limited references appear on inner landing pages at “www.ferrer.com/ferrer-healthtech/animal-nutrition” and what appears to be a broken page at “www.ferrer.com/sugarex”). It also points out that a Google search shows several results for “sugarex” or “sugar ex” not related to the Complainant or its products, with extensive references to Sugar Expos or Conferences in Viet Nam, Colombia, Brazil and Peru.
The Respondent does not dispute the validity of the Complainant’s trademarks for the purpose of paragraph 4(a)(i) of the Policy but notes that the widespread third-party use and common use of the term “sugarex” is wholly unrelated to the Complainant, facts which are relevant to the discussions of the Respondent’s rights and legitimate interests in the disputed domain name and its lack of bad faith registration and use.
The Respondent contends that it has rights and a legitimate interest in the disputed domain name for the following reasons:
i) the registration of descriptive term domain names, such as the disputed domain name, ipso factoestablishes the Respondent’s legitimate interest, provided the domain name was not registered with a trademark in mind;
ii) the Complainant has failed to show that its trademark would be well-known all over the world. The Complainant’s foreign trademark and lack of brand recognition (outside of, perhaps a discreet industry use), support a finding that the Respondent did not target the Complainant;
iii) the Respondent has provided sworn testimony that it had no knowledge of the Complainant or its trademark and did not register the disputed domain name to target the Complainant. Indeed, the Respondent states that it registered the disputed domain name due to its descriptive nature and relationship to international sugar industry and registered also several additional non-trademark domain names relating to “sugar”, including: <medsugar.com>, <sugarshak.com> and <sugarandspicecakes.com>. Additionally, the Respondent informs the Panel that it has also registered other domain names related to “expos” or “expositions” such as: <museexpo.com>, <expodem.com>, <rockex.com> and <coffeeexpo.com>;
iv) the Respondent purchased the disputed domain name, which cannot be associated with a single entity, from its prior owner, a circumstance which would indicate that the disputed domain name was free for use and registration;
v) the Respondent is using the disputed domain name in connection with the bona fide provision of advertising services, parking company’s links which are auto-generated by an established third-party domain monetization service, are constantly changing and are not related to the Complainant. Moreover, the Complainant has neither plead, nor is there evidence, that the Respondent targeted the Complainant in any way. Rather the Respondent, like many other investors over the decades, decided to purchase an inherently valuable domain name because it was available for registration;
vi) the fact that the Respondent responded to the Complainant’s inquiry to purchase the disputed domain name is not improper and it does not make its use of the disputed domain name illegitimate. On the contrary, a business based on reselling domain names satisfies the legitimate interest prong of the Policy, provided there is no evidence that a trademark was targeted by the registrant.
The Respondent claims that there is no evidence of bad faith registration or use because:
i) the Respondent registered the disputed domain name since it incorporated a descriptive term that became available when its prior owner decided to sell the disputed domain name;
ii) using the disputed domain name in connection with its common meaning and offering it for sale is a signal that there is no competing third-party trademark claim;
iii) the lack of the Complainant’s exclusive rights is supported by the fact that the multiple prior owners owned the disputed domain name for the past 17 years and, during such period of time, there was no indication of alleged infringement or third-party claim;
iv) there is no evidence that the Respondent had knowledge of the Complainant’s trademark when it purchased the disputed domain name, as reference to the Complainant’s trademark is conspicuously absent online and seems to be only in use within the discreet animal feed industry. Therefore, the Respondent did not target the Complainant at the time of registration;
v) the Complainant is mistaken that responding to an inquiry to purchase a domain name is evidence of the Respondent’s bad faith, and the Complainant’s unsolicited offer to purchase the disputed domain name is itself an acknowledgement of the Respondent’s legitimate interest in the disputed domain name;
v) the Complainant’s delay in taking action against any of the many registrants of the disputed domain name over the past 17 years raises the inference that the Complainant did not truly believe that the disputed domain name was registered or used in bad faith or “its intellectual property”. The Respondent concludes that the Complainant slept on its rights and filed the Complaint only after it was unsuccessful in purchasing the disputed domain name from the independent broker.
The Respondent requests that the Panel issue a finding of Reverse Domain Name Hijacking since there is no basis for this claim and the Complainant (through its counsel) knew or should have known that before filing that Complaint. It also states that any amount of due diligence would have shown that the Complainant could not prove two of the three requirements, and that this is a “Plan B” case, calculated and designed to steal a highly valuable and highly aged domain name from its rightful owner after failing to acquire the disputed domain name in the marketplace.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of numerous trademark registrations for SUGAREX in several countries of the world, as mentioned under Section 4 above.
As highlighted in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the first element functions primarily as a standing requirement, and the threshold test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
In the case at hand, the Complainant’s trademark SUGAREX is entirely reproduced in the disputed domain name, with the mere addition of the Top-Level Domain “.com”, which is commonly disregarded under the first element confusing similarity test (section 1.11 of the WIPO Overview 3.0).
Therefore, the Panel finds that the Complainant has proven that the disputed domain name is identical to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant is required to make a prima facie case that the Respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the Respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; Banco Itau S.A. v. Laercio Teixeira, WIPO Case No. D2007-0912; Wal-Mart Stores, Inc. v. WalMart Careers, Inc., WIPO Case No. D2012-0285.
Based on the records, it is clear that there is no relation between the parties and that the Complainant has not authorized the Respondent to use its trademark SUGAREX or to register and use the disputed domain name. There is also no evidence that the Respondent might be commonly known by the disputed domain name or might have acquired trademark rights in the term “sugarex”.
As mentioned above, the Respondent claimed to have registered the disputed domain name for its inherent value as a common word domain name with many possible references – including “Sugar Expositions” or “Sugar Exchange” – and pointed it to a webpage displaying pay-per-click links and a message indicating that the disputed domain name may be for sale.
As stated in section 2.10.1 of the WIPO Overview 3.0, “merely registering a domain name comprised of a dictionary word or phrase does not by itself automatically confer rights or legitimate interests on the respondent; panels have held that mere arguments that a domain name corresponds to a dictionary term/phrase will not necessarily suffice. In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights. (…) Panels have assessed cases involving common phrases (whether spelled out or numerical) corresponding in whole or in part to numbers (e.g., 24/7 or 365) in a similar manner as dictionary terms. Panels also tend to look at factors such as the status and fame of the relevant mark and whether the respondent has registered and legitimately used other domain names containing dictionary words or phrases in connection with the respective dictionary meaning”.
In addition, section 2.9 of the WIPO Overview 3.0 states that: “Applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. (…) Panels have recognized that the use of a domain name to host a page comprising PPC links would be permissible – and therefore consistent with respondent rights or legitimate interests under the UDRP – where the domain name consists of an actual dictionary word(s) or phrase and is used to host PPC links genuinely related to the dictionary meaning of the word(s) or phrase comprising the domain name, and not to trade off the complainant’s (or its competitor’s) trademark”.
There was a thorough discussion amongst the members of the Panel as to the nature of the disputed domain name and the inferences that can be drawn in the assessment of the Respondent’s legitimate interest, also in view of the Respondent’s use of the disputed domain name.
In the course of that discussion, reference was made to the prior case Compart AG v. Compart.com / Vertical Axis, Inc., WIPO Case No. D2009-0462 (the “Compart case”), concerning the domain name <compart.com>, in which the respondent alleged that the domain name was generic and pointed it to a parking page with pay-per-click links not relating to the supposed meaning of the term encompassed in the domain name. The panel in that case found that, regardless of whether the word “compart” was a “common or more obscure English language word”, the respondent’s website, which included advertisements related mostly to automobile parts, did not amount to a legitimate use because the respondent was not using the domain name in any way that was related to its asserted generic meaning.
One of the Panelists in this case finds that the reasoning of the Compart case could be applied also to the present dispute, since the term “sugarex” incorporated in the disputed domain name does not appear to be a common dictionary word in the English language and, in any case, the Respondent’s use as shown by the screenshots submitted by the Parties is not consistent with the Respondent’s asserted meaning of the disputed domain name as a contracted version of “sugar exposition” or “sugar exhibition”, since the links displayed therein do not relate to such alleged generic expressions.
Another Panelist, who would have found for the Respondent on this issue, finds that the circumstances of the present case differ from those of the Compart case, for two reasons. First, the domain name in that case was not a generic word and, therefore, the only conclusion that could be reached was that the respondent had registered a non-generic word which was a copy of the trademark and probably meant to be so. In the instant case, instead, the disputed domain name is constituted of a common English term, combining the word “sugar” with the suffix “ex”, which only pinpoints a use of the word, i.e. the notion of an expo. This Panelist understands that the word “sugarex” could easily be understood to mean “sugar exposition”, “sugar exhibition”, or any one of a number of ways in which modern parlance expresses the notion of a substance being located in a specific place, such as “sugar central”, “sugar depot” or “the sugar place”. The second difference advanced by that Panelist between the circumstances of the present case and the Compart case mentioned above is the fact that, whatever the word “compart” meant, the domain name <compart.com> was being used for auto parts which did not come within the genus of the Complainant’s products (software), whilst, in the present case, the links displayed on the website to which the disputed domain name resolves all fit, more or less comfortably, within the genus of the disputed domain name, because they all relate to food or culinary items and, as English-speaking lawyers say, it does no violence to the language to see those items under the “sugarex” heading.
Another Panelist is of the view that “sugarex” is not a common dictionary word – although it obviously appreciates the generic nature of the term “sugar” encompassed therein – but, in view of the Respondent’s use of the disputed domain name in connection with generic links not related to the trademark SUGAREX, the fact that the Complainant’s trademark appears to be known only in the Complainant’s specialized sector and the circumstance that, as highlighted from search engines searches for “sugarex”, several other entities use the same sign to identify their activities and services related to sugar, is not persuaded that the Respondent intended to target the Complainant and its trademark.
Whatever the conclusion may be under this Section, as highlighted in the paragraphs below, the Panel finds that the Complaint should be denied since the Complainant has not proven the third requirement prescribed by the Policy.
C. Registered and Used in Bad Faith
As indicated above, according to the current WhoIs records, the disputed domain name was registered in 2013, but the Respondent declared to have acquired it from a prior owner in November 2017.
According to section 3.9 of the WIPO Overview 3.0, “the transfer of a domain name registration from a third party to the respondent is not a renewal and the date on which the current registrant acquired the domain name is the date a panel will consider in assessing bad faith”.
At the time of the acquisition of the disputed domain name by the Respondent, the Complainant had already obtained, since several years, registrations for its trademark SUGAREX in various countries of the world, including the United States, where the Respondent is based. The evidence submitted by the Complainant also shows that the trademark SUGAREX was used in connection with the Complainant’s products since at least 2003, appearing in specialized press, trade fairs and exhibitions.
The Complainant claims that its trademark is internationally well-known and that the Respondent, who trades on domain names, registered the disputed domain name to take advantage of its reputation. On the other hand, the Respondent states that it was unaware of the Complainant’s trademark, and that it could not have had knowledge of it since the Complainant’s trademark is not known beyond its sector, is not displayed on the first pages of the Google search engine when searching for “sugarex” or “sugar ex” and can hardly be found on the Complainant’s website.
The members of the Panel concur that the Complainant has demonstrated that its trademark SUGAREX is used and known in the animal feed industry but have different views regarding the relevance of such circumstance in the demonstration of the bad faith requirement in the present case.
One of the Panelists is of the view that the Respondent registered and used the disputed domain name in bad faith because, according to paragraph 2 of the Policy, the Respondent (especially being active in the domain name industry) should have represented and warranted that, when registering the disputed domain name, it was not infringing upon or otherwise violating the rights of any third party, including the Complainant’s trademark rights in SUGAREX, based on several trademark registrations all over the world, which predate the registration date of the identical disputed domain name of several years. This Panelist also finds that, since the trademark SUGAREX is widely known in its sector, the Respondent knew or should have known the Complainant’s rights in the trademark SUGAREX (section 3.2.2 of the WIPO Overview 3.0), and that the request for a high price for transferring the disputed domain name to the Complainant formulated in the correspondence submitted by the Complaint is a rather clear sign that the disputed domain name was registered primarily for the purpose of selling it, without checking first if it consisted of a third party’s trademark.
The other two Panelists find that, since – based on the records – the Complainant’s trademark appears to be known essentially in the highly specialized animal feed industry and is not extensively featured and promoted on the Internet, the Respondent, which does not operate in the same sector, could hardly have become aware of the Complainant’s trademark at the time of registration. Moreover, even though the Respondent could have detected the Complainant’s trademark through searches on online trademark databases, the mere fact of a domain name proving identical or confusingly similar to a third-party trademark pursuant to a search does not mean that such registration cannot as such be undertaken or would automatically be considered to be in bad faith (see section 3.2.3 of the WIPO Overview 3.0 noting “the possibility of
co-existence of trademarks across jurisdictions and classes of goods and services, and the fact that trademarks which may be inherently descriptive in one context may be generic in another”).
Furthermore, as also highlighted by the Complainant, the disputed domain name has been pointed to a website displaying generic sponsored links that made no reference to the Complainant, its trademark and products. Therefore, these two Panelists find that, on balance of probabilities, the Respondent did not register the disputed domain name to target the Complainant and its trademark, but registered it, more likely, bearing in mind the inherent value of a domain name having various possible different meanings. In view of the above, also the request for a consideration exceeding the out-of-pocket costs sent by the broker in reply to the Complainant’s inquiry is not sufficient, in this case, to demonstrate the Respondent’s bad faith registration and use of the disputed domain name.
In view of the foregoing, the majority of the Panel finds that the Complainant has failed to demonstrate that the Respondent registered and used the disputed domain name in bad faith.
D. Reverse Domain Name Hijacking
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 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.”
The Rules define Reverse Domain Name Hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
The Panel also bears in mind that the Complainant in this case is represented by counsel and, therefore, it should be held to a higher standard (see section 4.16 of the WIPO Overview 3.0).
As highlighted in the Sections 6.C and 6.D above, this is a complex case in which the members of the Panel have different views. While one of the Panelists would have upheld the Complaint (and is thus contrary to a finding of Reverse Domain Name Hijacking), the majority of the Panel has found that the Complainant’s case was not demonstrated, at least with respect to the third requirement.
Likewise, with respect to Reverse Domain Name Hijacking, it is not surprising that differences of opinion and emphasis should emerge. On balance, the Panel does not deem it appropriate to issue such a finding since this is a borderline case, and due weight must be given to the Complainant’s prior trademark rights as well as to the possible different assessments of the asserted generic nature of the disputed domain name and the inferences that can be drawn from those assessments. Moreover, the evidence as a whole is open to the interpretation that the Complainant was motivated by a desire to protect its trademark rather than to harass the Respondent.
Accordingly the Panel declines the request to make a finding of Reverse Domain Name Hijacking.
For the foregoing reasons, the Complaint is denied. The request to issue a finding of Reverse Domain Name Hijacking is also denied.
The Hon Neil Brown Q.C.
Date: June 18, 2018