1st Jun 2006
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Clause Tezier v. Yakov Yukhananov
Case No. D2006-0428
1. The Parties
The Complainant is Clause Tezier, Portes Les Valences, France, represented by Cabinet Germain & Maureau, France.
The Respondent is Yakov Yukhananov, New York, United States of America, represented by ESQwire.com Law Firm, United States of America.
2. The Domain Name and Registrar
The disputed domain name <clause.com> (the “Domain Name”) is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2006. On April 6, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name. On April 6, 2006, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 on April 11, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 1, 2006. Following receipt of a request from the Respondent, the Center extended the Response due date to May 10, 2006. The Response was filed with the Center on May 10, 2006.
The Center appointed Nick Gardner as the sole panelist in this matter on May 24, 2006. The Panel finds that it was properly constituted. 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 the proprietor of a number of registered trademarks for the word CLAUSE (for example International Trademark No. 803018 registered on April 29, 2003). These trade marks are registered in respect of horticultural products such as seeds.
According to “whois” data submitted by the Complainant the Domain Name was created on August 10, 1996. The Respondent operates a web site at www.clause.com which operates as a directory with links to various other sites, and which indicates the Domain Name is for sale. This web site does not relate in any way to the Complainant’s business or to horticultural products.
The Complainant arranged for a representative to correspond with the Respondent to find out if the Domain Name was for sale. It was not disclosed that the representative acted for the Complainant. There followed a series of exchanges which eventually resulted in the Respondent indicating he would sell the Domain Name for 100,000 United States dollars.
5. Parties’ Contentions
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name as he has not registered nor used the term CLAUSE as a trade mark or a trade name. In particular the Respondent does not run any business under the trade name or corporate name or trade mark or service mark CLAUSE and does not appear to be known by the public or the relevant professionals under this name.
The Complainant furthermore contends that the Domain Name was registered in bad faith by the Respondent as it is obvious that the purpose of holding the Domain Name is to sell it for an amount exceeding the Respondent’s out of pocket costs.
The Respondent submits that this dispute is a case of “reverse domain name hijacking”. He contends that he has acquired the Domain Name lawfully, in particular because it consists of a common word which can be found in every common dictionary, meaning “a group of words containing a subject and a predicate and forming part of sentence.” The Respondent submits that anyone is entitled to register a domain name which is a common word.
The Respondent also says that he had no knowledge of the Complainant, its activities or its trade marks when registering the Domain Name. He says that the Complainant does not operate in the USA under the CLAUSE brand and furthermore there is no existing trade mark similar or identical to the Domain Name registered in the USA. He denies acting in bad faith.
In response to the Complainant’s allegation that the offer to sell the Domain Name establishes bad faith, the Respondent states that it is entirely permissible for domain name owners to offer common word domain names for resale, particularly when a third party offers to purchase it. The Respondent contends that there is no evidence that he registered the Domain Name to sell it to the Complainant; and in fact he did not do so as he had never even heard of the Complainant.
The Respondent states that the Complainant’s inquiry about purchasing the Domain Name amounts to a tacit recognition of his legitimate interest in the Domain Name.
6. Discussion and Findings
The Panel has reviewed the Complaint and the documents annexed to the Complaint. The Panel has also reviewed the Response and the documents annexed to the Response. In the light of this material, the Panel finds as set out below.
Identical or Confusingly Similar
The Domain Name is identical to trade marks owned by the Complainant. The fact that the Complainant owns a registered trademark satisfies the threshold requirement of paragraph 4(a)(i) of the Policy, irrespective of the location of the registered trademark and the goods and services it is registered for. The evidence filed by the Complainant is almost wholly silent as to the nature and extent of the Complainant’s business, and the dates upon when it commenced, and when trademark registrations were first made. It appears likely to the Panel that the Respondent’s registration of the Domain Name predates any application by the Complainant for any of the marks relied upon.
However even the registration of a domain name before a complainant acquires trade mark rights does not prevent a finding of identity, as the Policy makes no specific reference to a priority date (see for instance Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827). However this question may be relevant to the assessment of bad faith to paragraph 4(a)(iii) of the Policy, which is considered below.
Rights or Legitimate Interests
“Clause” is an ordinary English word. The Respondent says he has as much right as anyone else to register such a word on a “first come, first served” basis and that is what he did. The Panel agrees. It has been common practice for many years for those whose business is dealing in domain names (which is a legitimate business) to seek to register virtually any ordinary English word that they discover is available and not already registered. This is done in the expectation that sooner or later such word will be attractive to a prospective purchaser because of its lexical significance. There is nothing wrong with this. There may of course be circumstances where a word is both an ordinary English word and also extremely closely associated with a particular organization or brand (consider for example “ford”) which would necessitate further consideration of the relevant facts. However in circumstances where the Complainant has failed to file any evidence at all as to the nature and extent of its activities, or how well known it may or may not be, the Panel concludes that the Respondent’s evidence that he had not heard of the Complainant is entirely credible and believable. Accordingly the Panel concludes the Respondent does have a legitimate interest in the Domain Name in terms of paragraph 4(a)(ii) of the Policy.
It follows that the Respondent is entitled to sell the Domain Name at a profit, and to ask whatever price he considers appropriate.
Registered and Used in Bad Faith
It follows for the same reason that the Panel declines to find that the Domain Name was registered and is being used in bad faith. None of the criteria under paragraph 4(b) of the Policy are established. In addition, as indicated above, it appears that the Complainant did not have any relevant trade mark rights as at the date the Domain Name was registered. Although this is not on its own crucial, it makes it unlikely that the Respondent had the Complainant and its trademark in mind when the Respondent registered the Domain Name.
Therefore the Panel concludes that there is no evidence that the Domain Name was registered in bad faith. The requirements of paragraph 4 (a)(iii) of the Policy are not fulfilled.
Reverse Domain Name Hijacking
The Respondent asks the Panel to make a finding of “reverse domain name hijacking” against the Complainant. According to the Rules reverse domain name hijacking means using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name. In the present case the Complaint is surprisingly short of detail, in particular in failing to give any consideration to the fact that “clause” is a common English word, in failing to provide any details of the Complainant’s activities, and in failing to address the fact that the Respondent’s registration of the Domain Name predates the Complainant’s trade mark registrations. The Panel does not know why this is, but takes the view that this does not in itself establish bad faith – it could for example arise through a genuine mis-understanding of the Policy or the Rules or the nature of the evidence required. The Panel declines to find this Complaint amounts to reverse domain name hijacking.
For the above reasons, the Complaint is denied.
Dated: June 1, 2006