29th Oct 2012
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Original Buff, S.A. v. Buff Blog
Case No. D2012-1578
1. The Parties
The Complainant is Original Buff, S.A. of Igualada, Spain, represented by UBILIBET, Spain.
The Respondent is Buff Blog of Quebec, Canada, represented by ESQwire.com Law Firm, United States of America.
2. The Domain Name and Registrar
The disputed domain name <buff.com> is registered with Rebel.com Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2012. On August 6, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced August 13, 2012. In accordance with the Rules, paragraph 5(a), the due date for a Response was September 2, 2012. The Response was filed with the Center on August 31, 2012.
The Center appointed Debrett G. Lyons, Albert Agustinoy Guilayn and The Hon Neil Brown Q.C. as panelists in this matter on October 9, 2012. 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 factual findings pertinent to the decision in this case are that:
1. The Complainant is a Spanish headquartered business established in 1984 that makes and sells headwear and other clothing by reference to the trade mark BUFF.
2. The Complainant owns, inter alia, EU trade mark registration 9201856 and Spanish trade mark registration 2699651, both for the word mark BUFF.
3. The disputed domain name was created on June 20, 1997.
4. The Respondent took a transfer of the disputed domain name in January 2007.
5. After that transfer but prior to the filing of the Complaint the domain name was parked at a website that carried various advertisement and links, some to clothing and headwear sold in competition with the Complainant’s goods.
6. There is no relationship between the parties.
5. Parties’ Contentions
The Complainant asserts trade mark rights in BUFF and alleges that the disputed domain name is identical to the trade mark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant alleges that the Respondent registered and used the disputed domain name in bad faith.
The Respondent accepts the existence of the Complainant’s trade mark rights and does not contest the claim that the disputed domain name and the trade mark are substantially identical. Nonetheless, it broadly denies the remaining allegations and, in particular, submits that:
– the word “buff” is an ordinary dictionary word in the English language and has not been monopolized by the Complainant;
– it has a right in the disputed domain name since it consists essentially of a dictionary word;
– it has a legitimate interest in the disputed domain name by reason of its business of registering dictionary words as domain names;
– it did not know of, or target, the Complainant at either the time it acquired the disputed domain name or at any time before notice of the Complaint and so did not register or use the disputed domain name in bad faith;
– the disputed domain name has been registered since 1997 during which time the Complainant took no action prior to the Complaint and so the principle of laches is engaged;
– the disputed domain name was transferred to the Respondent in 2007 and has remained with the Respondent for five years during which time the Complainant took no action prior to the Complaint and so the principle of laches is engaged;
– the equitable principle of laches has already been applied in UDRP proceedings and acts here either (a) to deny the Complaint, or (b) to create a rebuttable inference that the Complainant knew of the third party ownership of the disputed domain name and refrained from action because it had no sustainable complaint.
The Respondent petitions the Panel to deny the Complaint.
6. Discussion and Findings
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.”
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trade mark 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.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights. It is well established by former decisions under this Policy that a trade mark registered with a national authority is evidence of trade mark rights. Since the Complainant provides evidence of its trade mark registrations, the Panel is satisfied that it has trade mark rights (see State Farm Mutual Automobile Insurance Company v. Periasami Malain, NAF Claim No. 0705262 (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, NAF Claim No. 0174052 finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
The disputed domain name takes the trade mark and merely adds the gTLD “.com”. Applying the principles developed and now broadly accepted under the Policy, the Panel finds that the disputed domain is identical to the trade mark (see Rollerblade, Inc. v. McCrady, WIPO Case No. D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” may not affect the domain name for the purpose of determining whether it is identical or confusingly similar; see also Isleworth Land Company v. Lost in Space, SA, NAF Claim No. 0117330 stating that “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy 4(a)(i) analysis.”; Gardline Surveys Ltd. v. Domain Finance Ltd., NAF Claim No. 0153545 stating that “The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Respondent’s key argument throughout its submissions is that it does have a legitimate interest in the disputed domain name (and so by extension can not have acted in bad faith).
It has been observed by panelists in earlier UDRP decisions that there is a necessary connection between the elements of rights or legitimate interests, on the one hand, and bad faith, on the other. In particular, if it can be seen that a respondent has rights in a domain name, then it is generally difficult to assimilate that with a conclusion that the respondent had acted in bad faith (see, for example, Lockheed Martin Corporation v. Skunkworx Custom Cycle, WIPO Case No. D2004-0824; The Vanguard Group Inc. v. Investors Fast Track, NAF Claim No. 0863257.
Paragraph 4(c) of the Policy sets out certain circumstances which if found by the Panel to be proved demonstrate respondent’s rights or legitimate interests in the domain name for the purposes of paragraph 4(a)(ii) of the Policy. Those sets of circumstances are not exhaustive and other instances of legitimate interests might be in evidence however it is logical to first test the present facts against those given circumstances. They are that:
(i) before any notice to the domain name registrant of the dispute, the registrant used, or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the domain name registrant (as an individual, business, or other organization) has been commonly known by the domain name, even if the registrant has acquired no trade mark or service mark rights; or
(iii) the domain name registrant is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
None of those scenarios has an immediate connection with the facts of this case. For reasons which soon emerge, paragraph 4(c)(iii) of the Policy does not assist the Respondent in any sense. Paragraph 4(c)(ii) of the Policy has no application because the disputed domain name does not sufficiently correspond with the WhoIs identification of the Respondent as “Buff Blog” (a requirement on which UDRP panelists have agreed) and, in any event, the Response itself largely rests on the Panel’s acceptance of another party (unrelated in name) as the beneficial owner of the disputed domain name and as the controlling influence in how that name was acquired and used. It is to that matter which the Panel now turns its attention since its findings thereon bear on paragraph 4(c)(i) of the Policy and on the broader question of legitimacy.
The Response includes an unsworn statement by Kara Harz, who declares that she is the domain name manager for International Brands, Corp. Her declaration appears to be made on behalf of that company. The declaration is confusing. Ms Harz states that she made the declaration “in opposition to the Complaint brought by Selena USA, Inc.”. Nevertheless, the remainder of the declaration is appurtenant to the disputed domain name and the Panel treats the reference to Selena USA Inc. as a clerical error. Ms Harz states that her company’s main website is at “www.ibwa.com”. She declares that her company purchased the disputed domain name from its prior owner in January 2007 and that it was chosen because it incorporates the common dictionary word “buff”. She goes on to declare that the Respondent operates in Canada and does not operate in Spain and was not aware of the Complainant or its products before the filing of the Complaint.
The named Respondent has an address in Quebec, Canada. The website at “www.ibwa.com” is for a business by the name of International Brands which deals in domain names. Not provided in evidence but from the Panel’s own enquiries it is seen that <ibwa.com> was registered in 1998. The registrant of that domain name is listed as IBWA.com Inc., Domain Manager with an address in Quebec, Canada, albeit not the same address as that of the Respondent. Those same enquiries show that IBWA.com Inc. is listed as the owner of over 4000 domain names (see “http://whois.domaintools.com/ibwa.com”).
The Rules to the UDRP define “Respondent” as “the holder of a domain-name registration against which a complaint is initiated.” The Supplemental Rules implemented by WIPO give the term “Respondent” the same meaning (see paragraph 2 of the Rules). Nonetheless, former panels applying the Policy have been prepared to treat a party other than the named respondent (or complainant) as the relevant party where a compelling link to that other party is shown. In this case, the Panel is prepared to treat International Brands Inc./ IBWA.com Inc. as the beneficial owner of the disputed domain name and accepts the statement by Ms Harz that the name was acquired to add to the stable of domain names controlled by International Brands Inc./ IBWA.com Inc. References in this decision to the Respondent are therefore references to International Brands Inc./ IBWA.com Inc.
The Panel consequently finds that the Respondent has a genuine business as a domainer and takes note of the statement in the Response that the “Respondent targets only common dictionary words”. The Panel accepts the evidence from the Response that “buff” is a dictionary word with meaning as both a noun and verb in the English language.
Between purchase and the Complaint, there was no developed website corresponding with the disputed domain name. It was parked and, the Complainant alleges, was driving pay-per-click revenue through links to competitors in business to the Complainant. The Complainant states that:
It is now more than fifteen years since the domain name was registered, more than enough time to create a website. <buff.com> is still hosted in a parking. According to the information given in Sedo GmbH’s website, the company number one on domain name parking services, “If you have registered domain names, but they are not currently being used, then domain parking is a great way to put those domains to work earning you revenue.” On the other hand parking companies are also specialized on selling and buying domain names. Considering that, we suspect that Buff Blog Domain Administrator’s main aim is selling <buff.com>.
The information that appears on screen when you type the disputed domain name into a web browser is attached in the Notarial act attached as Annex EIGHT. As you will notice <buff.com> shows several links related to headwear; the world of Original Buff, S.A. Specifically you can choose, among others, between the following links: “Gorras” (“Caps” in English), “Tocados” (“Headdresses” in English), “Sombrero” (“Hat” in English), “Gorro” (“Cap” in English) or even direct references to Original Buff: “Bandana buff”, “Buff headwear sale”, “Buff original” or “Buff head scarf”. We understand that this shows clearly that the Respondent had and has knowledge of the existence of the brand “Buff”.
The Respondent sought to excuse that by relying on Ms Harz who declared that from January 2007 until recently the Respondent had a blog site, similar to the blogs on the Respondent’s other domains (exhibited in evidence) but that due to a DNS error the blog did not show at the time it was visited by the Complainant.
There is no doubt that these combined facts sent a mixed message to the Panel. There is little in the manner of a convincing case for the application of paragraph 4(c)(i) of the Policy. Even if it could be said that prior to notice of the dispute the acquisition of the disputed domain name was, per se, a preparation to use the disputed domain name in connection with a bona fide offering of services – in the sense that the Respondent’s business is all about the acquisition and resale or management of domain names – it is fairly plain that the actual use of the disputed domain name in connection with sponsored advertisements for goods competitive with the Complainant’s goods could never be construed in the Respondent’s favour. There is ample authority for the principle that a respondent can not abrogate responsibility for use of its domain name. Numerous prior UDRP decisions have, rightly in this Panel’s view, held that there is bad faith use of a domain name if it is parked at a revenue driving website which trades on traffic drawn by the magnetism of a third party’s trade mark. The fact that links and advertising material might be added by the parking host and not by the domain name registrant itself has been held immaterial to the finding of bad faith use.
Nonetheless, the examples of rights or legitimate interests given in paragraph 4(c) of the Policy are not exhaustive and so, to the extent that it has already been noted that there is a natural connection between the second and third elements of the Policy, the Panel finds that there is no evidence of registration of the disputed domain name in bad faith – none whatsoever in 1997 when the name was first registered and none for the purposes of the Respondent in 2007 (see Dixons Group Plc v Mr. Abu Abdullaah, WIPO Case No. D2000-1406). Ms Harz has stated that before the Complaint was filed the Complainant was unknown to the Respondent and, notwithstanding the Complainant’s evidence of international sales, the Panel has no reason to infer that it was more likely than not that a Canadian based domain name dealer would have known of the Complainant.
The Panel has already found that the Respondent has a legitimate business dealing in domain names. The Respondent states that it targets only words with common dictionary meanings and plainly “buff” is such a word. Whilst the Complainant states that:
… <buff.com> does not make sense per se except in relation to Original Buff, S.A. As a result of the foregoing, its registration by a third party cannot be for any reason other than to misappropriate the reputation built up through that sign by Original Buff, S.A. Hence, it is practically impossible to maintain that the Respondent’s choice of <buff com> is a pure coincidence and not intentional.
Clearly that argument is untenable and does not show that the Respondent has set out to target the Complainant.
The Complainant also alleges that:
… the Respondent has a broad history of engaging in cybersquatting activity (see decisions WIPO Case No. D2011-1741, PI Financial Corp. v. Pi Financial QC, and WIPO Case No. D2009-0448, Romance Writers of America, Inc. v. Domain Administrator, RWA of Canada).
Copies of those decisions were not annexed to the Complaint however the Panel has perused the decisions and can see no apparent connection between the Respondent and the parties in those cases. The Panel gives that allegation no weight.
Finally, there is the unexplained delay in the commencement of these Administrative Proceedings. The Respondent puts it at 15 years but even if the proper period is that during which the Respondent was the holder of the disputed domain name – from January 2007 – there is still a lapse of time of more than 5 years during which the Complainant took no action. On the evidence, there is a compelling argument that during that time the Complainant was quite aware of the third party ownership of the disputed domain name. Although the Panel does not in this instance find that the delay is a reason of itself to deny the Complaint, it nonetheless finds the delay to be a factor influencing determination of whether the Respondent has a legitimate interest or not (see, for example, Libertad Servicios Fiancieros, S.A. de C.V.S. F.P. v. Telepathy, Inc., WIPO Case No. D2011-1635).
Against that background and in the face of the great many cases under this Policy where respondents have blatantly abused third party rights, the Panel is of the opinion that the potentially bad faith use in this case should not disfigure the Respondent’s other bona fide actions and motivations. Paragraph 4(a)(ii) of the Policy refers to “rights” or “legitimate interests” and the Panel takes the view that the draftsmen of the Policy used those two expressions deliberately, comprehending them to have different meanings. In this case the Panel would employ that distinction to find that the Respondent has a prima facie right to the disputed domain name because it is composed of a dictionary word and, prima facie, a legitimate interest in the disputed domain name by reason of its business. Absent cogent evidence of bad faith, those findings are not displaced.
The Panel finds that the Complainant has not discharged its onus to show that the Respondent has no legitimate interests in the disputed domain name and so decides that the Complainant has failed to satisfy the second element of the Policy.
C. Registration and Use in Bad Faith
For the reasons set out above, it is not necessary to reach a finding on this aspect of the Policy.
For the foregoing reasons and having failed to establish at least one of the three elements required under the Policy, the Complaint is denied.
Debrett G. Lyons
Albert Agustinoy Guilayn
The Hon Neil Brown Q.C.
Dated: October 29, 2012