Bounz B.V. v. Whois Privacy Services Pty Ltd. / Stanley Pace
Case No. D2015-1230
1. The Parties The Complainant is Bounz B.V. of Badhoevedorp, the Netherlands, represented by Muller & Eilbracht B.V., the Netherlands.
The Respondent is Whois Privacy Services Pty Ltd. of Queensland, Australia / Stanley Pace of Texas, United States of America, represented by Law Office of Howard M. Neu, United States of America.
3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2015. On July 16, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 17, 2015, 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 July 20, 2015 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 July 21, 2015.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced July 24, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, 2015. The Response was filed with the Center on August 13, 2015.
The Center appointed Alistair Payne, Willem J. H. Leppink and Richard G. Lyon as panelists in this matter on September 15, 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 produces and services high quality trampolines and designs and implements trampoline courts. It also operates a business that offers various services including ways of combining exercise sports and entertainment, with a focus on gymnastics and trampoline jumping. The Complainant has franchised its concept and operates in various locations in the Netherlands and each year also operates for a period in Belgium. The Complainant commenced its business in 2010 under the BOUNZ mark and opened its first location in 2011. It owns various trade mark registrations for, or that incorporate, the word mark BOUNZ, including in particular a combined word/device Benelux Trade mark registration under number 891361, filed on October 27, 2010 and Community word mark registration number 10895191 for BOUNZ, filed on May 18, 2012. The Complainant maintains a website for its business at its current domain name that it acquired on September 11, 2008 and owns numerous other domain names worldwide that resolve to its main website.
The disputed domain name was first registered on May 5, 2003. The Respondent Mr. Stanley Pace swears on affidavit that he acquired it on June 12, 2008. It was subsequently moved by the Respondent to the Registrar on April 4, 2009. On or about September 30, 2011 the Respondent, Mr. Stanley Pace, changed the registration for the disputed domain name from his own name into the name of the other Respondent Whois Privacy Services Pty Ltd. The disputed domain name has been parked with Sedo.com and resolves to a “pay per click” parking page, the content of which is discussed in Section 6-C below.
5. Parties’ Contentions A. Complainant The Complainant submits that it owns registered trade mark rights in the BOUNZ mark, including in particular a combined word/device Benelux Trade mark registration under number 891361, filed on October 27, 2010 and Community word mark registration number 10895191 for the mark BOUNZ, filed on May 18, 2012. It says that the substantive element of the disputed domain name is identical to this trade mark in which it owns registered rights. It also says that it registered the trade name Bounz for a foundation in the Netherlands in 1987 and subsequently registered the domain name in September 2008.
The Complainant submits that the Respondent has never used or has not prepared demonstrably to use the disputed domain name in connection with a bona fide offering of goods or services and has in fact only used it in relation to a “pay per click” parking website. It says that use of the disputed domain name to resolve to this website is not legitimate as it only serves to divert Internet users and to cause confusion with the Complainant’s business. In addition the Complainant says that the Respondent is not known by the disputed domain name and that the Complainant has not authorised or licensed the Respondent’s use of its BOUNZ mark. Lastly under this head it says that the Respondent is not making a fair or noncommercial legitimate use of the disputed domain name.
As far as bad faith is concerned the Complainant says that the Respondent has a long history of registering temporarily lapsed or infringing domain names as an internationally operating professional domain name broker and has been found to have made bad faith registrations in various previous cases.
The Complainant says that the Respondent registered the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name to a third party in excess of the out-of-pocket costs for registration. The Complainant says that it enquired several times by email through a third party as to whether the disputed domain name was available for sale but received no reply. Subsequently it was made available on Sedo.com for a minimum bid of USD500, a much higher price than mere out of pocket costs.
The Complainant further asserts that considering the fame and reputation attaching to its trade mark, the Respondent must have had knowledge of its trade marks and trade name BOUNZ at the date of the acquisition of the disputed domain name by Whois Privacy Services Pty Limited on September 30, 2011 and by Stanley Pace on June 9, 2014 and that its intention was either to disrupt the Complainant’s business or to confuse and divert Internet users to its website for commercial purpose, such as by creating advertising income or selling or renting the disputed domain name. This says the Complainant amounts to registration and use in bad faith.
B. Respondent The Respondent submits that it registered the disputed domain name on June 12, 2008, three years before the Complainant applied for any trade mark for BOUNZ. Further, says the Respondent, the Complainant registered its trademark in Belgium, Luxembourg and Europe and as the Respondent lives in Texas there was no way that he could or should have known of the Complainant’s mark at that date.
The Respondent says that it continuously parked the disputed domain name with Sedo.com, a legitimate provider of domain name parking services and that its conduct has been entirely bona fide. The Respondent says that he is in the business of domain name acquisition for lease or email purposes and that he acquired the disputed domain name when it became available in good faith and without knowledge of the Complainant, or of its later acquired mark. In summary the Respondent says that the evidence demonstrates that he did not register the disputed domain name in bad faith as is required under the Policy.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns a combined word/device Benelux trade mark registration under number 891361, filed on October 27, 2010 incorporating the BOUNZ word mark and a Community word mark registration number 10895191 for BOUNZ, which was filed on May 18, 2012. As a result the Panel finds that the Complainant owns trade mark rights in the BOUNZ mark for the purposes of this element of the Policy. As the disputed domain name wholly contains the BOUNZ mark and features no other element apart from the “.com” suffix, the Panel also finds that the disputed domain name is identical to this mark.
As a result the Complaint succeeds under the first element of the Policy.
The Panel declines to make a finding in relation to the second element of the Policy in view of its findings concerning bad faith under the third element, as set out below.
C. Registered and Used in Bad Faith
The disputed domain name was first registered on May 5, 2003 but the Respondent, Mr. Stanley Pace, swears on affidavit that he acquired it on June 12, 2008. The Respondent says that he subsequently moved the disputed domain name to his usual registrar “fabulous.com” on April 4, 2009. Around September 30, 2011 he subsequently changed the disputed domain name into the name of the other Respondent Whois Privacy Services Pty Ltd. Mr. Pace says that he did this as a matter of course together with almost all his portfolio of domain names in order to avoid spam. The disputed domain name along with most of the other domain names in his portfolio was then parked with Sedo.com and resolves to a “pay per click” parking page.
The initial question for determination by the Panel is whether the relevant date of registration under this element of the Policy is June 12, 2008 or the date on which the disputed domain name was transferred to the privacy service around September 30, 2011? Notwithstanding section 3.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) in-house transfers can sometimes be deemed a new registration, for ex. See BMEzine.com, LLC. v. Gregory Ricks / Gee Whiz Domains Privacy Service, WIPO Case No. D2008-0882; ehotel AG v. Network Technologies Polska Jasinski Lutoborski Sp.J., WIPO Case No. D2009-0785. However panels have held such transfers do not restart the clock on measuring bad faith when a respondent offers a valid business reason for the transfer, e.g., Wall-Street.com, LLC v. Marcus Kocak / Internet Opportunity Entertainment (Sports) Limited, Sportingbet PLC, WIPO Case No. D2012-1193. The Respondent says on oath that he made that change on all or most of his domains to avoid spam, which the Panel considers to be a credible explanation and legitimate explanation for the change. The Complainant’s contention that the Respondent re-registered in order to avoid the Policy is unsupported by the evidence and amounts to conjecture. The fact that the Respondent may have been found in another UDRP case to be a serial cybersquatter does not persuade the Panel in the circumstances of this case that the Respondent acted in bad faith on his re-registration of the disputed domain name. Therefore the Panel accepts that the relevant date of registration for consideration under this element of the Policy was on June 12, 2008 being the date on which Mr. Pace has sworn on affidavit that he acquired the disputed domain name.
Although the Complainant says that it registered the trade name Bounz for a foundation in the Netherlands in 1987 and subsequently registered the domain name in September 2008, it appears that it did not commence any business under the BOUNZ mark until 2010 and its first business location was not opened until 2011. It did not file the first of its trade mark registrations, being its Benelux trade mark registration under number 891361, until October 27, 2010.
Mr. Pace was living in Texas at this time. In these circumstances, Mr. Pace’s sworn statement that he was unaware in June 2008 of the Complainant’s business or mark is entirely credible. Mr. Pace says on affidavit that although he checked on the Google search engine and searched the USPTO website before bidding for the disputed domain name, he found no evidence of potentially conflicting trade marks. In reality and based on the material before the Panel, Mr. Pace could have searched on any number of search sites or trade mark or business name registers in June 2008 but it is only if he had searched the business name register in the Netherlands that he might have even been alerted to the existence of the Complainant. Accordingly, the Panel finds that there is no evidence before it to suggest that Mr. Pace registered the disputed domain name in bad faith.
Although this technically ends the matter, as this element of the Policy requires a finding of both registration and use in bad faith, the Panel also finds that the Respondent has not used the disputed domain name in bad faith. It is well accepted by previous panels that using a domain name to resolve to a “pay per click” parking page is not per se use in bad faith. It is only when it is apparent that such use is actually targeting the complainant that it may amount to use in bad faith. Here the hyperlinks do not refer to the Complainant or its business, other trampoline companies, or products competitive of those of the Complainant. Most in fact refer to party rentals, or paraphernalia, or amount to plays on the word “bounce”. In this case the Panel finds that there is no evidence that the Respondent, who is involved on a large scale in the domain name broking and holding business, has ever actively targeted the Complainant.
Accordingly the Panel finds that the Respondent has not registered and used the disputed domain name in bad faith and the Complaint fails under this element of the Policy.
7. Decision For the foregoing reasons, the Complaint is denied.