IMB Textil S.A. v. Domain Administrator, Name Administration Inc. (BVI)
Case No. D2014-1057
1. The Parties The Complainant is IMB Textil S.A. of São Paulo, Brazil, represented by Kirker & Co Ltd., Switzerland.
The Respondent is Domain Administrator, Name Administration Inc. (BVI) of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by John Berryhill, Ph.d., Esq., United States of America.
2. The Domain Name and Registrar The disputed domain name
is registered with Uniregistrar Corp (the “Registrar”).
3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2014. On June 19, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 21, 2014, 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. On June 24, 2014 the Center sent a communication to the Complainant requesting to provide the missing Complaint and Annexes. On June 27, 2014, the Center sent a further communication to the Complainant notifying it that the Complaint was administratively deficient in that it had identified the wrong Registrar. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 1, 2014.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
On July 2, 2014 the Center received an informal communication from the Respondent requesting the Complainant to provide them with some annexes.
On July 3, 2014 the Center received a communication from Respondent’s Authorized Representative requesting the Center to direct all future correspondence in this matter be sent to the contact details provided for the Respondent's representative.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 3, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 23, 2014. The Response was filed timely with the Center.
The Center appointed Warwick A. Rothnie, Luiz E. Montaury Pimenta and Richard G. Lyon as panelists in this matter on August 25, 2014. 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 Brazilian company. According to the Complaint, it has several stores in Brazil and Venezuela from which it sells clothing. The Complainant also claims that it exports its clothing to several other South American countries, Portugal and Australia.
According to the Complaint, the Complainant has been selling its clothing in Brazil by reference to the brand PUKET since 1987. More recently, it has assigned rights to a parent company which is working on a franchising program.
The Respondent is in the business of registering domain names such as dictionary words, descriptive phrases and geographic terms to monetize them.
In the present case, the Respondent registered the disputed domain name on May 15, 2003. Materials submitted in the Response and archived on the Wayback Machine at “www.archive.org” show that, since it was registered, the disputed domain name has resolved to a website which has links (presumably pay-per-click links) to searches related to Puket (or Phuket) in Thailand and general information related to Thailand. By September 2013, there was a change in the website. While still retaining links related to Puket (or Phuket) and Thailand, the website also included a banner across the top “Click here to buy Puket.com for your website name!”.
5. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
In support of its claim to trademark rights, the Complaint includes in Annexes 6 and 7 a list of trademarks for, or containing PUKET, which the Complainant says it has registered in various countries including Brazil. These trademarks do include Brazilian Registered Trademark No. 813607477 in class 25 for PUKET which was apparently filed on June 30, 1997 and registered on October 19, 1993. A large number of the claimed trademarks, however, are described in the Annexes as “pending”.
The first difficulty is that the evidence of these trademarks does not include registration certificates or printouts from online Registers such as that found through TESS at “www.uspto.gov”. Rather, the annexes are print outs of what appear to be the internal listing maintained by the Complainant’s law firm or trademark attorneys.
Paragraph 3(b)(xv) of the Rules requires a complainant to:
Annex any documentary or other evidence, including a copy of the Policy applicable to the domain name(s) in dispute and any trademark or service mark registration upon which the complaint relies …. (emphasis supplied).
This Panel considers that the Complainant’s (or its law firm’s) internal listing of trademarks would typically not be sufficient to satisfy the requirements of the Policy and the Rules. The Panel also notes that the materials in the Complaint do not include figures for sales revenues or advertising expenditures under or by reference to the trademark PUKET. Nor does the Complaint include examples or illustrations of the trademark in use. Thus, the Complaint falls well short of satisfying the requirements to prove ownership of an unregistered trademark: see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.7.
It is unnecessary for the Panel to decide this case on the basis of lack of proof of trademark rights, however, in view of the conclusions the Panel reaches in relation to the third limb under the Policy to which the Panel now turns.
B. Rights or Legitimate Interests
In view of the conclusions the Panel reaches in relation to the third limb under the Policy it is unnecessary to decide this case under the second limb of the Policy.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements: both registration and use must be shown to have been in bad faith.
Generally speaking, a finding that a domain name was registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
In the present case, the disputed domain name consists of the letter string “puket” plus the generic Top Level Domain (gTLD) “.com”. Disregarding the gTLD component, the letter string “puket” is in fact the name of a well-known island in Thailand. In making that finding, the Panel acknowledges that there is at least one other commonly used spelling for that place, Phuket. However, “Puket” is also quite widely used.
The website at the disputed domain name displays links in connection with topics relating to Thailand travel.
The evidence in this case is that the Respondent does seek to monetize the disputed domain name, but does so and has apparently done so since it registered the disputed domain name by seeking to exploit its significance as the name of the holiday destination in Thailand. There is no evidence that the Respondent has sought to take advantage of the disputed domain name’s association with the Complainant’s claimed trademarks. In those circumstances, the Panel is unable to find on the record in this case that the Respondent has registered the disputed domain name in bad faith. See e.g. Gold Medal Travel Group plc v. Damir Kruzicevic, WIPO Case No. D2007-1902.
Accordingly, on the record in this case, the Complaint must fail.
D. Reverse Domain Name Hijacking Paragraph 15(e) of the Rules provides (in part):
[…] 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.
In an appropriate case, therefore, a panel must consider and is required to make a determination whether or not the Complaint has been brought in bad faith. Paragraph 4.17 of the WIPO Overview 2.0 further explains:
“WIPO panels have found that the onus of proving complainant bad faith in such cases is generally on the respondent, whereby mere lack of success of the complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking. To establish Reverse Domain Name Hijacking, a respondent would typically need to show knowledge on the part of the complainant of the complainant's lack of relevant trademark rights, or of the respondent's rights or legitimate interests in, or lack of bad faith concerning, the disputed domain name. Evidence of harassment or similar conduct by the complainant in the face of such knowledge (e.g. in previously brought proceedings found by competent authorities to be groundless, or through repeated cease and desist communications) may also constitute a basis for a finding of abuse of process against a complainant filing under the UDRP in such circumstances.”
This of course is not an all-encompassing statement of the circumstances in which a finding of reverse domain name hijacking or bad faith by a complainant could be made. It does reflect, however, the general approach that has developed over the course of the Policy.
In the present case, there had been correspondence between the parties before the Complaint was filed. The Complainant has relied on part of that correspondence – an offer for sale – to try and establish bad faith on the part of the Respondent. In this Panel’s view, that offer did not assist the Complainant because the disputed domain name has value independently of its significance as the Complainant’s trademark. That is, it has value because it is the name of a popular tourist destination and, as the Panel has found above, the Respondent did not register the disputed domain name in bad faith.
The Respondent points to a different part of that correspondence. On March 21, 2014, the Respondent (or its broker) sent an electronic message to the Complainant seeking to justify its position:
“I am sorry we were unable to come to agreement about this domain name. ‘Puket’ is a common spelling of a well-known resort island in Thailand, and the owner has used the domain name to advertise Thailand travel for a very long time. The owner does not believe use of the domain name as a common geographic indicator has anything to do with your claimed trademark, and looks forward to addressing your UDRP complaint if necessary.”
Thus, the Complainant was warned before it filed the Complaint what the Respondent’s defence would be. Having received that warning, the Complainant could have taken fairly rudimentary steps to investigate the Respondent’s claims. At a minimum, it could have verified how the disputed domain name was in fact being used. A properly advised complainant should also have taken steps to investigate the claim that the Respondent had been using the disputed domain name in an unobjectionable way “for a very long time”. For example, The Wayback Machine maintained at “www.archive.org” is a well-known resource which can often provide some indication about how a domain name has been used at points in time in the past.
The Complainant, however, has not provided any explanation of what, if anything, it did to investigate the Respondent’s claims before bringing the Complaint. On the contrary, there is some indication in the correspondence that has been disclosed that the Complainant proceeded on the basis that many respondents do not defend complaints under the Policy; that is, as the Respondent contends, in the hope that the Respondent would not “show up”.
The Panel considers that, in the circumstances of this case as revealed in the record, the Complainant should have realized before filing the Complaint that its prospects of success were at best highly speculative. It has not sought to point to anything which contradicts the Respondent’s claims notified in the pre-Complaint correspondence. Rather, on the record before the Panel, the Complainant appears to have proceeded in the hope that the Respondent would not seek to defend the Complaint. Given the strong geographic significance of the disputed domain name and the absence of any evidence that the Respondent has sought to trade on the trademark significance of the disputed domain name, the Panel considers that is not an appropriate use of the procedure under the Policy. Accordingly, the Panel finds that the Complaint was brought in bad faith.
6. Decision For the foregoing reasons, the Complaint is denied.