Max Mara Fashion Group, S.r.l. v. Ashantiplc Ltd
Claim Number: FA1208001458069
Complainant is Max Mara Fashion Group, S.r.l. (“Complainant”), represented by Judith L. Grubner of Arnstein & Lehr LLP, Illinois, USA. Respondent is Ashantiplc Ltd (“Respondent”), represented by John Berryhill, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <persona.com>, registered with Backslap Domains, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge they have no known conflict in serving as Panelists in this proceeding.
Flip Jan Claude Petillion and Honorable Bruce E. Meyerson (Ret.) as Panelists and Nathalie Dreyfus as Chair.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 14, 2012; the National Arbitration Forum received payment on August 14, 2012.
On August 15, 2012, Backslap Domains, Inc confirmed by e-mail to the National Arbitration Forum that the <persona.com> domain name is registered with Backslap Domains, Inc and that Respondent is the current registrant of the name. Backslap Domains, Inc has verified that Respondent is bound by the Backslap Domains, Inc registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 20, 2012 within the 5 day rules provided by UDRP Rule 4(b), Complainant has filed an Amended Complaint to remedy a deficiency in the Complaint. More precisely, Complainant was asked to amend its Complaint to identify Respondent and its contact information using the current WHOIS information for reference.
On August 20, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 10, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@persona.com. Also on August 20, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on September 10, 2012.
On September 17, 2012, an Additional Submission was filed by Complainant . It was received in a timely manner according to Forum Supplemental Rule 7.
On September 24, 2012, an Additional Submission was filed by Respondent. It was received in a timely manner according to Forum Supplemental Rule 7.
All submissions were considered by the Panelists.
On September 12, 2012, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Flip Jan Claude Petillion and Honorable Bruce E. Meyerson (Ret.). as Panelists and Nathalie Dreyfus as Chair.
Complainant requests that the domain name be transferred from Respondent to Complainant.
i. Respondent registered the disputed domain name with the primary purpose of selling the domain name.
ii. Respondent is diverting Internet users looking for Complainant to Complainant’s competitors in the fashion industry.
iii. Respondent is commercially gaining from the pay-per-click advertising to Complainant’s competitors.
iv. Respondent had actual and constructive knowledge of Complainant’s rights in the PERSONA mark when it registered the domain name on September 23, 1995.
i. As noted above, in April 2006, a UDRP panel found that Respondent has rights and legitimate interests in the disputed domain name due to Respondent’s domain name containing a common and generic term that are open for registration by anyone. Respondent’s legitimate interests and rights in the domain name have not disappeared from then until now.
ii. Respondent has historically used the disputed domain name, since July 2003 when Respondent acquired the domain name, for personal dating advertisement websites. Respondent has utilized several different domain landing services, but personal advertisements have almost always been displayed on the resolving website.
iii. Respondent does not understand how Complainant got the screenshot of Respondent’s website as it is depicted because Respondent’s website has always been configured to dating and personal service advertisements.
1. Complainant does not explain how or when it took the screenshot that is purported to be of Respondent’s landing page. However, Respondent has utilized a “two step” lander in which Internet users are initially presented with an array of pre-loaded search terms, and not third-party advertisements.
iv. Respondent’s use of this common phrase for the ordinary and non-proprietary associations it conjures up is a common theme in this type of dispute.
Complainant
1. Complainant is not bound by the previous decision rendered in respect to the domain name <persona.com>. In any event the circumstances of the case were different. The previous complainant had trademark rights only in the US and the domain name was registered prior to such trademarks.
2. Respondent has refused to sell the website to Complainant for a four-figure offer and is holding out for an exorbitant price in “seven figures”, far in excess of its out of pocket costs directly related to the domain name.
3. Respondent is in the business of “monetizing” its domain name.
4. Where a term is inherently distinctive, bad faith may be inferred from such distinctiveness.
5. Internet users can utilize the search function of Respondent’s website to generate search results.
6. On February 7, 2011 Respondent’s website prominently advertised clothing with a picture of dresses on hangers and a variety of click-through categories not related to personal advertisements.
7. There is no evidence Respondent provides personal advertisements and dating services.
8. “persona” is not descriptive of dating services. It does not mean “personals” or “personal ads”.
9. Respondent changed its website after filing of the Complaint. The website now contains the heading “persona.com. The leading Persona Site on the Net”.
10. Respondent is not entitled to register Complainant’s trademark simply because there are many possible meanings or use for it, or Respondent believes the word to be generic or descriptive.
11. Respondent is responsible for the content displayed through the domain name it registers.
12. Laches does not apply to these proceedings.
13. There is no reverse domain name hijacking by Complainant because Complainant meets at least first criterion of the UDRP rules.
Respondent
2. Complainant cites Vanity Shop of Grand Forks, Inc. v. Vanity.com, Inc. FA 1443435 (Nat. Arb. Forum June 20, 2012) ordering transfer of the domain name <vanity.com> but does not indicate this dispute was submitted to a US Court which has the immediate effect of suspending the UDRP decision rendered.
3. Respondent has used the domain name for personal advertising for nine years.
4. Complainant filed its complaint with unreasonable delay
5. There can be reverse domain name hijacking even on trademark owners’ side.
For the reasons set forth below, the Panel finds Complainant has failed to provide the required elements of its claim.
Paragraph 15(a) of the Rules instructs this Panel to "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 requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Preliminary Issue: Laches
Although certain panels have found that, under certain circumstances, the doctrine of laches could apply as a defense, the Panel finds that it could certainly not apply in the present case. See Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defence of laches has no application.”); see also Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum Feb. 13, 2006) (finding that the laches defense was inappropriate under the Policy and that the time frame within which the complainant brought the proceeding was of no consequential value); see also Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (“Respondent’s efforts at arguing related equitable defenses such as estoppel and acquiescence are equally misplaced as these legal arguments are not contemplated by the Policy. Moreover, recognition of these arguments in accordance with Respondent’s desires requires the Panel to make a legal determination regarding the continuing validity of Complainant’s DISNEY mark. Such action is beyond the scope of the UDRP proceeding and if Respondent desires such an outcome it should avail itself of the proper judicial proceedings by which such a result might be accomplished.”).
The Panel also finds that the doctrine of laches cannot apply as a defense here. See Computop Wirtschaftsinformatik GmbH v. Domain Administrator, Claim Number: FA1106001394450 (Nat. Arb. Forum June 22, 2011) (finding that Laches is a doctrine that may result in the denial of an equitable claim where the complaining party unreasonably delays in asserting the claim and the delay has resulted in prejudice to the opposing party.). The applicability of the doctrine of laches in UDRP proceedings has been the subject of some debate. Although a majority view holds that laches does not apply in these cases, e.g., Tom Cruise v. Network Operations Center / Alberta Hot Rods, D2006-0560 (WIPO July 5, 2006), certain panels have recognized that unreasonable delay in initiating a complaint is a proper issue to consider. E.g., The New York Times Co. v. Name Administration, Inc., FA 1349045 (Nat. Arb. Forum Nov. 17, 2010).
If the laches doctrine were taken into consideration in assessing the merits of the case, a majority of the Panel does not believe that Complainant’s delay in bringing this Complaint should bar relief in the present case. Respondent’s domain name has been hosted by two companies which provide pay-per-click advertisements on the resolving website. The practice of companies that provide these services is not to charge the domain name owner for the hosting service, but to share revenues with the owner of the domain name. Although Respondent will presumably lose revenue from the loss of the domain name, it is most likely that other than the cost of acquiring the domain name, Respondent has incurred no other expenses in connection with its ownership of the domain name. Thus, a majority of the Panel concludes that Respondent has not suffered any material prejudice from the Complainant’s delay in bringing this proceeding. For the foregoing reasons, a majority of the Panel refuse to deny the Complaint on the ground of laches.
Preliminary issue: Res Judicata
As defined by the Panel in Creo Prods. Inc. v. Website In Development, D2000-1490 (WIPO Jan. 26, 2001), a refiled complaint is “a subsequent complaint (whether or not precisely the same in substance) in relation to the same domain name, that is filed by the same complainant against the same respondent to a previous complaint.”
Complainant argues that it has rights in the PERSONA mark through its trademark registration with the USPTO (Reg. No. 1,207,303 registered September 7, 1982). The Panel finds that Complainant’s trademark registration for the PERSONA mark with the USPTO is sufficient for Complainant to establish rights in the mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant argues that the <persona.com> domain name is identical to Complainant’s PERSONA mark. The Panel notes that the lone addition to the PERSONA mark is the generic top-level domain (“gTLD”) “.com.” Therefore, the Panel finds that Respondent’s <persona.com> domain name is identical to Complainant’s PERSONA mark under Policy ¶ 4(a)(i). See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
Complainant has proven this element.
The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Respondent asserts that it has rights and legitimate interests in the <persona.com> domain name. Respondent contends that Respondent has historically used the disputed domain name, since July 2003 when Respondent acquired the domain name, for a personal dating advertisement website. Respondent asserts that it has utilized several different domain landing services, but personal advertisements have almost always been displayed on the resolving website. Respondent argues that it does not understand how Complainant got the screenshot of Respondent’s website as it is depicted because Respondent’s website has always been configured to dating and personal service advertisements. Respondent argues that Complainant does not explain how or when it took the screenshot that is purported to be of Respondent’s landing page. Respondent notes, however, that Respondent has utilized a “two step” lander in which Internet users are initially presented with an array of pre-loaded search terms and not third-party advertisements like those depicted in Complainant’s screenshot. See Respondent’s Exhibit G. Respondent points to its Exhibits E-F which are a collection of screenshots from the Internet archive “Wayback Machine” and the <screenshots.com> website, which Respondent claims to show that Respondent has used the domain name for advertising personal and dating websites. Lastly, Respondent argues that a prior UDRP panel has decided that Respondent’s use of the domain name was legitimate. See Eye Acad. of Am. Ltd. v. Ashantiplc Ltd., FA 644205 (Nat. Arb. Forum Apr. 6, 2006). The present Panel agrees with Respondent and finds that the use of the domain name for dating and personal advertisements can indeed be a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See EU Prop. Portfolio Ltd. v. Salvia Corp., FA 873726 (Nat. Arb. Forum Feb. 7, 2007) (holding that the respondent’s website usage of pay-per-click links was a bona fide offering of goods and services).
Respondent also argues that the term of the <persona.com> domain name is common and generic, and therefore, Complainant does not have an exclusive monopoly on the term on the Internet. Respondent argues that, in April 2006, a UDRP panel found that Respondent had rights and legitimate interests in the disputed domain name due to Respondent’s domain name containing a common and generic term that is open for registration by anyone. Respondent contends that Respondent’s legitimate interests and rights in the domain name have not disappeared from then until now. The Panel agrees with Respondent and finds that Respondent can establish rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii) as it is making use of the disputed domain name in connection to its generic meaning. See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).
Complainant has failed to prove this element.
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Since Respondent has rights or legitimate interests in the <persona.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
The Panel further finds that Respondent has not registered or used the <persona.com> domain name in bad faith because it finds that Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
Respondent first argues that Complainant has not proven that Respondent registered the disputed domain name “primarily for the purpose of selling... to the complainant who is the owner of the trademark... or a competitor of the complainant.” Respondent argues that Complainant has never contacted it regarding the transfer of the disputed domain name and that, if Respondent wanted to sell the domain name, it would have done so when it was offered amounts as high as $30,000 for the domain name. Complainant did not produce evidence about the circumstances in which its offer was made and then turned down. There is no evidence showing, on the balance of probabilities, that Respondent registered the disputed domain name primarily for the purpose of selling it to Complainant. Therefore, the Panel finds that Respondent has not registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(i). See JCM Germany GmbH v. McClatchey Jr., D2004-0538 (WIPO Sept. 17, 2004) (holding that the respondent did not violate Policy ¶ 4(b)(i) by attempting to sell the disputed domain name for profit because the respondent did not register the domain name with the intent to sell it to the complainant or one of its competitors); see also Bayerische Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that the respondent’s statement that it did not intend to create harm or confusion and its offer to relinquish the disputed domain names in exchange for reimbursement of its out-of-pocket costs was evidence that the respondent was not acting in bad faith).
The Panel finds that Respondent has not registered or used the disputed domain name in bad faith under Policy ¶ 4(a)(iii) where it is using the disputed domain name to advertise unrelated dating websites, various categories of goods and services and has not targeted Complainant’s company or mark. See Schering Aktiengesellschaft v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that because “Respondent neither offered the Domain Name for sale, nor wanted it to disrupt Complainant’s business, [nor] prevent Complainant from reflecting the mark in its domain,” it did not register or use the domain name <metagen.com> in bad faith); see also McMullen Argus Publ’g Inc. v. Moniker Privacy Servs., D2007-0676 (WIPO July 24, 2007) (“Complainant must do more than just show pay-per-click use to establish bad faith... pay-per-click websites are not in and of themselves unlawful or illegitimate”).
Respondent contends that the <persona.com> domain name is comprised entirely of a common term that has many meanings apart from use in Complainant’s PERSONA mark. Moreover, Respondent contends that the registration and use of domain name comprising such a common term is not necessarily done in bad faith. The Panel finds that a respondent is free to register a domain name consisting of common terms and that the domain name currently in dispute contains such a common term. Accordingly, the Panel also finds that Respondent did not register or use the <persona.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis."); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).
Complainant has failed to prove this element.
Reverse Domain Name Hijacking
To establish reverse domain name hijacking, it must be shown that Complainant proceeded in bad faith. See OneWest Bank, FSB v. Dave and Michelle Clements d/b/a One West Real Estate, FA 1445278 (Nat. Arb. Forum July 9, 2012)(finding that since the Panel has found that Complainant has satisfied one element of the Policy it finds that Complainant has not engaged in reverse domain name hijacking); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy). Further, Complainant’s failure to satisfy its burden of proof under the Policy does not necessarily imply a finding of reverse domain name hijacking. See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith). The Panel does not find any sign of bad faith conduct on the part of Complainant. Therefore, the Panel rejects the request for a finding of reverse domain name hijacking. See Mosaic Int’l, LLC v. PZ -- No Auction, FA 1307578 (Nat. Arb. Forum Apr. 7, 2010). The Panel finds Reverse Domain Hijacking has not been proven.
The Panel finds that the circumstances of the case of the prior UDRP dispute about the domain name were different. Complainant could not predict the outcome of its complaint and since there was no res judicata issue the Complainant was not bound to cite the decision rendered in such a case. Complainant did not substantiate its assertions in respect of its offer being turned down to purchase the domain name and did not explain the process adopted for the preparation of its Annex E. However, these elements are not sufficient to establish bad faith on Complainant’s side.
The Panel thus finds that the required bad faith element has not been proven.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <persona.com> domain name REMAINS WITH Respondent.
Nathalie Dreyfus (Chair)
Flip Jan Claude Petillion
Bruce E. Meyerson
Dated: October 4, 2012
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