8th Aug 2013
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PJS International SA v. Vertical Axis Inc. / Whois Privacy Services Pty Ltd
Case No. D2013-0805
1. The Parties
The Complainant is PJS International SA of Luxembourg, Luxembourg, represented by Perani Pozzi Tavella, Italy.
The Respondent is Vertical Axis Inc. of Christ Church, Barbados / Whois Privacy Services Pty Ltd of Fortitude Valley, Australia, represented by ESQwire.com Law Firm, United States of America.
2. The Domain Name and Registrar
The disputed domain name <parajumpers.com> is registered with Fabulous.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2013. On May 7, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 7, 2013, 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 on May 8, 2013, 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 amendment to the Complaint on May 10, 2013.
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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced May 15, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response June 4, 2013. The Response was filed with the Center June 4, 2013.
The Center appointed Prof. François Dessemontet, Dr. Alexander Duisberg and The Hon Neil Brown Q.C. as panelists in this matter on July 29, 2013. 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 trademark PARAJUMPERS has been registered as a Community trademark on February 13, 2007 in Nice classes 9, 18 and 25. The Complainant is also owner of an International trademark for PARAJUMPERS, and of many other national trademarks.
The Complainant has been giving the brand in license to APE Partners since 2006, for the purpose of selling mainly clothing and outerwear with the brand PARAJUMPERS, with sales in over 20 countries, and recently also through the website “www.parajumpers.it”.
The Respondent owns a large quantity of domain names that it keeps ready for sale. The disputed domain name was registered on April 23, 2003. The webpage under “www.parajumpers.com” contains redirecting links presented under captions such as insurance, education, job opportunities, travel, business, finance, legal, electronics and cars.
5. Parties’ Contentions
In a very scantily argumented brief, the Complainant mentions that it is owner of the trademark PARAJUMPERS since 2006. It further argues that there is no evidence that the Respondent has any interest in using the disputed domain name, since the name “Parajumpers” derives from a military squadron that is based in Alaska. Moreover, the Complainant contends that the website has never have been used in the last five years, but has always been up for sale. The disputed domain name would have been primarily registered for the purpose of selling it for the best offer. The Respondent would have mentioned a minimum price of USD 73,200 during preceding negotiations between the Parties.
In summary, the Respondent contends that there is no basis for the requested transfer. First, the Complainant waited over 10 years to initiate the present proceedings. The doctrine of laches should therefore apply. Second, the specific conditions set under the UDRP for an order of transfer are not met in the present case. When the Respondent registered the disputed domain name in 2003, the Complainant had not yet registered its trademark, and did probably not even exist at the time. The disputed domain name is a common descriptive, complex word being the combination of “para”, which is derived from “parachutes” denoting a military unit utilizing parachutes, and “jumpers”.
Further, the Respondent argues that it has rights and a legitimate interest in the disputed domain name because of its common descriptive meaning, and that it has registered many domain names combining the words “para”, “jump”, and “jumping”. The Respondent claims that it registered the disputed domain name in good faith and it is using it in connection with the bona fide offering of goods and services and for a legitimate purpose. In the view of the Respondent, common word domain names are easy to remember and, thus, commercially valuable.
6. Discussion and Findings
A. Identical or Confusingly Similar
There is no doubt that the disputed domain name is identical to the trademark of the Complainant, as the only difference is the generic Top-Level Domain “.com” which may be ignored for the purpose of comparison.
The Panel finds that the objection of the Respondent regarding the time of registration of the trademark PARAJUMPERS is irrelevant for evaluating whether the disputed domain name and the trademark are identical or confusingly similar under paragraph 4(a)(i) of the Policy (see also Trade Me Limited v. Vertical Axis Inc, WIPO Case No. D2009-0093).
B. Rights or Legitimate Interests
The disputed domain name was registered in April 2003 while the trademark of the Complainant has been registered in 2007, and its first domain name <parajumpers.it> in November 2005. The general principle for the acquisition of title for a domain name, especially one consisting of a generic word or commonly used descriptive phrase, may be summed up as “first come first served”.
In the view of the Panel, the designation “parajumpers” is mainly generic. However, “parajumpers” is not a “dictionary word”, but appears to be the name of a military squadron that is based in Alaska.
In the absence of special circumstances the principle “first come first served” still applies to adjudicate the conflict between a domain name and a later registered trademark. The Panel finds no such special circumstances in the present case and the Complainant did not allege any circumstance that would give its trademark priority rights over the right of the Respondent to the disputed domain name. This is especially so when there is no indication that the Respondent had the trademark or any intellectual property right of the Complainant in mind when registering the disputed domain name (see, e.g., Bradley D. Mittman MD dba FRONTRUNNERS v. Brendhan Hight, MDNH Inc., WIPO Case No. D2008-1946).
Accordingly, the Respondent has a right or legitimate interest in the disputed domain name by virtue of the fact that it was free to register the domain name and did so before the registration of the PARAJUMPERS trademark relied on by the Complainant.
C. Registered and Used in Bad Faith
There is no evidence that the Respondent acted in bad faith when it registered the disputed domain name, among the several thousand domain names that it claims to own. The mere fact of registering a large number of domain names is not proof by itself of bad faith, as there may exist a legitimate purpose in appropriating many domain names in the hope that some of them will enjoy commercial value. The situation is similar to that of the acquirer of many mining rights or oil concessions in the hope that some of them will be really worthy of development. As the Complainant has not shown that its trademark was established (on a registered or unregistered basis) before the registration of the disputed domain name in 2003, the Panel cannot find bad faith registration on the part of the Respondent.
The mere fact of offering the disputed domain name for sale is not in itself indicative of bad faith. The fact that the present website displays (pay per click) links to third parties related to topics such as insurance, education, job opportunities, travel, business, finance, legal, electronics and cars (i.e., no capitalization on the Complainant’s trademark) defeats in the present case the idea of bad faith use.
In view of the foregoing result of the examination of the Parties’ contentions, the Panel does not find it necessary here to apply the doctrine of laches, which is recognized as a general principle in intellectual property rights in most legal orders, and indeed in most matters of private law generally. The Panel has not been sufficiently informed about the trademark rights of the Complainant to enable it to specify when those rights arose. Without applying the doctrine of laches, however, the Panel has taken into account that the Complainant has waited several years to act against the existing registration of the disputed domain name, which adds to the above mentioned circumstances for the Panel to deny the existence of bad faith on the part of the Respondent (see Spielwarenmesse eG v. Name Administration Inc. (BVI), WIPO Case No. D2013-0744).
7. Reverse Domain Name Hijacking
The Respondent maintains that the Complainant should have known that it had no basis for its Complaint when it filed the Complaint. According to the Respondent, the Complainant filed the Complaint after having failed to purchase the disputed domain name.
The Panel finds that the allegations of the Respondent in that regard are not all corroborated by facts. In the view of the Panel, it would be necessary that some kind of intent of the Complainant to disrupt a legitimate business of the Respondent should have been demonstrated in order to make a finding of Reverse Domain Name Hijacking. The Panel is not convinced that the Complainant should have known that it had no basis for its claim. The bad faith of the Complainant is not to be presumed. Assuredly, it might have been possible for the Complainant to detect that the disputed domain had been registered significantly prior to the registration of the PARAJUMPERS trademark, which nevertheless is only one aspect of the bad faith evaluation (see Deutsche Welle v. Diamond Ware Ltd., WIPO Case No. D2000-1202). Further, due to the very brief and rather undeveloped argumentation that has been presented by the Complainant, and due to the fact that the original Complaint has been filed directly by APE Partners1, the company that is licensed for the purpose of using the trademark, rather than by an independent counsel, the Panel is led to believe that no thorough examination of the facts of the case and of the rules applicable has been undertaken beforehand by an independent counsel on behalf of the Complainant. It is possible that a layman or a laywoman may altogether ignore the notion of Reverse Domain Name Hijacking. However, the UDRP and the Rules have been in effect for more than 13 years, and any lawyer filing a UDRP complaint should know what Reverse Domain Name Hijacking is and avoid his or her client from filing a complaint in bad faith. The Complainant was apparently not aware of it. Nevertheless, this Panel finds that oversight is not equivalent to Reverse Domain Name Hijacking. It is generally the purpose of the UDRP to decide, in particular through a decision of the Panel, whether the Complainant is entitled to a domain name transfer or not. Moreover, it is very often the case that parties attempt to negotiate a settlement before filing a UDRP complaint, and the Panel finds that the Complainant cannot be blamed for its attempt in this respect. The request for Reverse Domain Name Hijacking of the Respondent is accordingly dismissed.
For the foregoing reasons, the Complaint is denied.
The Hon Neil Brown Q.C.
Date: August 8, 2013