Brian Fera v. Media Options S. A




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ARBITRATION
AND
MEDIATION CENTER



ADMINISTRATIVE PANEL DECISION


Brian Fera v. Media Options S.A.

Case No. D2015-1470




1. The Parties
The Complainant is Brian Fera of Heppenheim, Germany, represented by Boie & Hermann Rechtsanwälte, Germany.
The Respondent is Media Options S.A. of Panama City, Panama, represented by Greenberg & Lieberman, LLC, United States of America (“USA”).

2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2015. On August 19, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 20, 2015, 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 August 21, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 10, 2015. Further to a request by the Respondent of August 21, 2015, the Center granted an extension for Response until September 15, 2015. The Response was filed with the Center September 15, 2015.
The Center appointed Tony Willoughby, The Hon Neil Brown Q.C. and Thomas Hoeren as panelists in this matter on October 13, 2015. 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, based in Germany, is the registered proprietor of the following trade mark registrations:
German Trade Mark Registration No. 2904354 dated February 26, 1994 (registered April 4, 1995) WICOM (word) for various goods and services in classes 1, 9, 37 and 42;
International Trade Mark Registration No. 736998 WICOM (word) dated March 3, 2003 in the same classes and for similar goods and services;
United States Trade Mark Registration No. 2995701 WICOM (word) dated July 29, 2002 (registered September 13, 2005) in class 9 for laboratory equipment.
The Domain Name was first registered on April 29, 1995. From at least 20031 until late 2014 the Domain Name was held in the names of first Waterloo Industries of Waterloo, Iowa, USA and then MasterLock Company of Wisconsin, USA, an associated company. Towards the end of 2014 the Domain Name was transferred to the Respondent.
The Respondent is a domain brokerage house based in Central America. Based on evidence supplied by the Respondent, in 2014 it was instructed by MasterLock Company to find a buyer for the Domain Name. The Respondent found a buyer, a Gibraltar company, and on September 24, 2014 MasterLock Company (the seller), the Gibraltar company (the buyer) and the Respondent (the broker) entered into a tri-partite agreement for the sale of the Domain Name for USD 375,000. This arrangement involved the Respondent, acting as financier for the transaction, paying the seller the full purchase price and taking control of the Domain Name. The buyer was to have paid the purchase price (plus interest) to the Respondent by October 31, 2014, but the buyer defaulted, so the Domain Name defaulted to the Respondent, the seller already having received the purchase price from the Respondent.
The Domain Name is currently connected to the Respondent’s website advertising its brokerage services.
On July 9, 2015, the Complainant entered into an email exchange, which was initiated by someone called “Mike” using a “gmail” email address. The opening message read: “Hello Brian, Selling WI.com and it would be perfect for your company. Let me know if you are interested?” The Complainant replied: “Hello Mike, maybe depending on how much you ask for the domain.” Mike replied: “Hi Brian, I was looking for USD700k but I am willing to negotiate and get a sale. Let me know your best offer?” The Complainant replied: “Hi Mike, could we agree on USD400.” Mike responded: “Hi Brian You meant USD400k lol. How about USD650k?” The correspondence concluded with the Complainant’s response: “Hi Mike, no we are talking by wrong dimension taking into account that WICOM is a protected trade mark and we can sue and get it by court order … (we did this already before). I would be willing to pay something to avoid law suit but it must be reasonable.”

5. Parties’ Contentions
A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to his WICOM registered trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith.
The section of the Complaint dealing with the third element of the Policy reads as follows:
“The domain name is used in bad faith by the Respondent (who is a domain broker), because the domain name was acquired primarily for the purpose of selling the domain name registration to the owner of the trademark, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name. For example, on Jul 9, 2015, the Respondent has tried to sell the domain for around $700k to the Complainant.” [The email correspondence in question is annexed to the Complaint]
B. Respondent
The Respondent denies the Complainant’s allegations.
The Respondent asserts that for the purposes of the assessment of identity/confusing similarity under paragraph 4(a)(i) of the Policy, the comparison should be between the Complainant’s trade mark, WICOM, on the one hand and the Domain Name at the second level, WI, on the other hand. The Respondent points to the fact that ordinarily the generic “.com” top level domain identifier is ignored for this purpose.
The Respondent points to the nature of the brokerage operation described in section 4 above and contends that that gave it rights and legitimate interests in respect of the Domain Name.
The Respondent states that until it received the Complaint it had never heard of the Complainant or his WICOM trade mark. It states that the email correspondence exhibited to the Complaint evidencing the sales approach to the Complainant, had nothing to do with the Respondent. The correspondence in question was initiated by someone using a gmail address, whereas the Respondent only corresponds via its MediaOptions.com email channel. It acquired the Domain Name legitimately by way of the terms of the brokerage deal described at section 4 above and has never used the Domain Name in any way that could remotely be said to be in bad faith, let alone bad faith towards the Complainant of whom it had never heard until it received the Complaint.
The Respondent contends that the Complainant is guilty of Reverse Domain Name Hijacking.

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:


(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
Moreover, in writing its decision, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence namely:
“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.”

Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.”

B. Identical or Confusingly Similar

Domain names the subject of proceedings under the Policy consist of two levels, a top level and a second level. In this case the top level is the generic “.com” top level domain identifier. The second level comprises the letters “WI”.


Paragraph 4(a)(i) of the Policy does not discriminate between the levels. The Panel’s task is to assess identity and confusing similarity comparing the Domain Name as a whole (i.e., ) with the Complainant’s trade mark, WICOM.
That said, when dealing with domain names in the generic top level domains such as “.com”, “.net”, “org” etc., panels have traditionally discounted the generic top level domain identifier when making the assessment and precisely because the top level domain identifier is generic and of neutral effect when considering the significance of the domain name at the second level.
In this case, however, in the context of the Complainant’s WICOM trade mark, the “.com” top level identifier is not purely generic. It renders the Domain Name as a whole visually very similar to the Complainant’s trade mark in a way that the Domain Name at the second level does not. Accordingly, in this case, when considering whether the Domain Name is identical or confusingly similar to the Complainant’s trade mark, it is not appropriate for the Panel to ignore the effect of the “.com” top level identifier.
In light of the Respondent’s arguments to the contrary, the Panel refers to:
(i) project.me GmbH v. Alan Lin, WIPO Case No. DME2009-0008 (“In this Panel’s opinion, to ignore the [country code Top-Level Domain (ccTLD)] identifier in all cases when considering identicalness or similarity of a “.me” domain name to a trademark is to ignore the commercial reality that, in the “.me” domain name space, the ccTLD identifier is likely to be a key part of the domain name. Thus, it is this Panel’s view that a determination of identicalness and similarity of a “.me” domain name may in appropriate cases be based on a consideration of the domain name as a whole – that is, of the domain name including the “.me” suffix.”); and
(ii) Tesco Stores Limited v. Mat Feakins, WIPO Case No. DCO2013-0017 (“In the Panel’s view, if the TLD suffix is part of the Complainant’s trademark, whether forming part of one word, or a second and distinct word, it may be taken into account for comparison purposes.”).
As can be seen, in both the above cases the top level domain identifier featured significantly in the panels’ assessment of identity/confusing similarity.
The Panel finds that the Domain Name, which is identical to the Complainant’s trade mark save for the dot, is confusingly similar to a trade mark in which the Complainant has rights.

C. Rights or Legitimate Interests

The Respondent, a domain name broker, has produced evidence to show that it acquired the Domain Name pursuant to a brokerage agreement (see section 4 above). The Panel accepts that the Respondent had financed the deal by paying to the seller, the previous owner of the Domain Name, the full purchase price and had taken control of the Domain Name pending reimbursement by the purchaser. The purchaser defaulted, failing to reimburse the Respondent. In consequence, as provided for in the brokerage agreement, which was exhibited to the Response, the Domain Name remained in the hands of the Respondent.

There is nothing to suggest that the previous owner had registered or acquired the Domain Name in bad faith, it having acquired it from an associated company, Waterloo Industries, a company with an obvious interest in the acronym “WI”. Indeed, the same can be said for the Respondent’s client, the immediately preceding owner, MasterLock Company of Wisconsin, as Wisconsin is commonly abbreviated to “WI”.
Furthermore, while the Complainant has produced some potentially incriminating email correspondence from someone purporting to be able to sell the Domain Name to the Complainant (set out in full in section 4 above), the Panel accepts the Respondent’s explanation that it had nothing to do with that correspondence. The Respondent states that it does not communicate with clients or potential clients otherwise than by its MediaOptions.com email channel. The Panel further accepts the Respondent’s claim that until it received the Complaint it had never heard of the Complainant or his WICOM trade mark.
The Respondent is in the business of buying and selling domain names and assisting others to do so and the fact that the Domain Name is connected to a website offering domain names for sale in no way impacts on the Respondent’s bona fides.
The Complainant has failed to satisfy the Panel that the Respondent has no rights or legitimate interests in respect of the Domain Name.

D. Registered and Used in Bad Faith

The section of the Complaint dealing with this element of the Policy reads verbatim as follows:


“The domain name is used in bad faith by the Respondent (who is a domain broker), because the domain name was acquired primarily for the purpose of selling the domain name registration to the owner of the trademark, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name. For example, on July 9, 2015, the Respondent has tried to sell the domain for around $700k to the Complainant.”
For the reasons set out above, the Panel is satisfied on the evidence before it that the Respondent acquired the Domain Name in good faith by way of a normal business transaction and that the Complainant and his trade mark would not have featured in the Respondent’s deliberations at that time. Indeed, as indicated, the Panel accepts the Respondent’s assertion that it had not heard of the Complainant or his WICOM trade mark prior to receipt of the Complaint.
Moreover, there is nothing in the evidence before the Panel to suggest that the Respondent has used the Domain Name in bad faith or proposes to do so.
E. Reverse Domain Name Hijacking
While the Complaint has failed, that of itself is not enough to justify a finding “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.”
Looking at the matter from the Complainant’s point of view when he launched this administrative proceeding, he was faced with a Domain Name which is substantially identical to his trade mark, the Domain Name was in the hands of a domain name dealer, which had recently acquired the Domain Name and the Complainant had not unreasonably assumed that the person who had emailed him on July 9, 2015 offering to sell him the Domain Name was acting on the Respondent’s behalf.
Significantly, the Complainant had no reason to know of the factual background leading up to the Respondent’s acquisition of the Domain Name and had no reason to know that the email correspondent was someone acting on his own account having nothing to do with the Respondent.

The Panel is satisfied that the Complainant launched this proceeding in good faith with a view to protecting his trade mark rights and genuinely believing that he was entitled to succeed.



7. Decision
For the foregoing reasons, the Complaint is denied as is the request for a finding of Reverse Domain Name Hijacking.

Tony Willoughby

Presiding Panelist



The Hon Neil Brown Q.C.

Panelist


Thomas Hoeren

Panelist


Date: October 16, 2015

1 The Respondent asserts that the Domain Name was originally registered by Waterloo Industries, but the Panel in double-checking the background facts via DomainTools found that the Domain Name was originally registered by Western Interactive Inc. of California, USA and transferred to Waterloo Industries in 2003. Nothing turns on this discrepancy.



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