20th May 2014
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
S.P.C.M. SA v. Whois Privacy Services Pty Ltd / Vertical Axis Inc., Domain Administrator
Case No. D2014-0327
1. The Parties
The Complainant is S.P.C.M. SA of Andrezieux Boutheon, France, represented by Cabinet Laurent & Charras, France.
The Respondent is Whois Privacy Services Pty Ltd of Fortitude Valley, Australia / Vertical Axis Inc., Domain Administrator of Christ Church, Bahamas, represented by ESQwire.com, United States of America (the “USA”).
2. The Domain Name and Registrar
The disputed domain name <snf.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 March 4, 2014. On March 4, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 5 and 6, 2014, 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 March 6, 2014 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 March 10, 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”).
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 March 12, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 1, 2014. The due date for Response was extended until April 8, 2014 after the Respondent’s Counsel requested an extension to file a Response. The Response was filed with the Center on April 7, 2014.
The Center appointed Nick J. Gardner, Nathalie Dreyfus and The Hon Neil Brown Q.C. as panelists in this matter on May 7, 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.
As a preliminary issue the Panel notes this is a case where one of the Respondents (Whois Privacy Services Pty Ltd) is a privacy or proxy registration service while the other Respondent (Vertical Axis Inc.) is the substantive Respondent. The Panel in this case adopts the approach of most panels, as outlined in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), as follows “Most panels in cases involving privacy or proxy services in which such disclosure of an underlying registrant has occurred, appear to have found it appropriate to record in their issued decision both the name of the privacy or proxy registration service appearing in the WhoIs at the time the complaint was filed, and of any disclosed underlying registrant”. Accordingly this decision is in the name of, and directed at both Respondents, however it is not in dispute that the substantive Respondent is Vertical Axis Inc. and accordingly where this decision refers below to “the Respondent” this is a reference to Vertical Axis Inc.
4. Factual Background
The Complainant owns a French registered trademark in respect of the sequence of letters “snf”, registration number 91400386, which was registered on December 31, 1991. A website at “www.snf.fr” resolves to a further website at “www.snf-group.com”. This web site provides information about what the website refers to as the “SNF group” (see further below). It is not clear to the Panel when this website first became live.
The Domain Name was registered by the Respondent on June 19, 2001. The Respondent is a company which registers and trades in domain names. At all material times since the Domain Name was registered, it has been used to host a parking page which comprises automatically generated links to third party sites. As is common the Respondent receives advertising revenue in respect of any “click through” traffic the parking page links generate. The amounts in question are not known to the Panel although likely to be modest. The Respondent is also prepared to sell the Domain Name to any third party who may wish to buy it, subject to agreeing a price it finds acceptable.
5. Parties’ Contentions
The Complainant says it is a manufacturer of polyacrylamide chemicals. These chemicals are used in the treatment of water and other chemical processes. The Complainant says it is the largest such manufacturer in the world and operates through subsidiaries or joint ventures with manufacturing plants in 20 countries. It says it has customers in 130 countries and that it carries on this business on a substantial scale.
The Complainant’s case is, as the Panel understands it, to say that the Respondent has been “willfully blind” in registering the Domain Name and could or should have conducted searches which would have led it to conclude that snf was a trademark which the Complainant owned, and having done so it should not have proceeded with the registration. It says that proceeding with the registration was a registration in bad faith, and the subsequent use in relation to a parking page, and by offering the Domain Name for sale, amounts to use in bad faith. It says the case is identical to CEAT Limited, CEAT Mahal, v. Vertical Axis Inc. / Whois Privacy Services Pty Ltd, WIPO Case No. D2011-0198, a case which involves the same Respondent and a four letter acronym “ceat”. It says for exactly the same reasons found by the majority in that case it should succeed in this case. This case is referred to in the remainder of this decision as the <ceat.com> case.
The Respondent has produced a very detailed Response and set out numerous authorities in relation to its case. It is not necessary to repeat all of that here. Where appropriate the cases relied upon are addressed by this Panel in its decision below. The salient points the Respondent makes are as follows:
The Respondent admits it is in the business of registering and selling domain names. It says that is legitimate. It also says its portfolio of domain names is used to create parking pages, and those pages generate advertising revenue. It says this is a common and legitimate form of business and its registration of the Domain Name was simply a normal part of this business. Specifically, it says that it registered the Domain Name simply because it was an available three letter sequence and all such three letter sequences are likely to have some value. It says there will typically be many organisations or products which have a name or a product or service which if portrayed as an acronym will correspond to a given three letter sequence and hence it registers any such sequence when it finds one available. The Respondent says it had never heard of the Complainant when it effected the registration. It says that would still be the case today, except for the knowledge it has gained as a result of this case.
The Respondent says that at all times since registering the Domain Name it has been used to host a parking page comprising automatically generated links to third party web sites. It admits it earns revenue from this practice which is part of its business model. It says none of the links which have been generated have ever had any connection with the Complainant or its business, or with any competitors of the Complainant. It also admits the Domain Name is for sale if a price it finds acceptable can be agreed. It does not say what that price would be.
So far as the <ceat.com> case is concerned, the Respondent in effect says that the case was wrongly decided and that the dissenting minority opinion was correct and the majority wrong. It says that is even more so if the principles in question are applied to a three letter acronym, as in the present case, as opposed to a four letter acronym as in the <ceat.com> case.
Finally, the Respondent also advances a detailed case based on laches and says that the Complaint should fail because of the delay in it being brought,
6. Discussion and Findings
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel in respect of each of the Domain Names that:
(i) the Domain Name is identical with or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complaint contains very limited information. Nowhere does it explain what the connection is between the French corporate entity that is the Complainant (i.e. SPCM S.A.) and the business which is carried on under or by reference to the letters “SNF”, apart from showing it is this entity which is the owner of the registered trademark relied upon. Beyond this, the Complaint simply asserts that the Complainant is “very well known” as “SNF” in the countries where it operates. The Panel has viewed the web site at “www.snf.fr” which is referred to in the Complaint. This web site redirects to a web site at “ww.snf-group.com”. This website refers predominantly to “SNF” or the “SNF Group” as the business in question and also displays prominently on the header to each pages the words “SNF Floerger” as a brand name. The “Contact Us” page at the web site provides a location map and some company details which refer to what appears to be a French company named “SNF s.a.s”. A page on the website describes the history of “SNF”, and commences with this statement: “Streichenberger switches the business of Oziol in Saint-Étienne from making coal briquettes to making flocculants for water treatment. FLOcculants + StreichenbERGER = FLOERGER. A brand name is created.” Nowhere that the Panel has been able to find is there any reference anywhere on the website to the corporate entity SPCM S.A.
The Panel is accordingly completely in the dark as to how, if at all, the Complainant fits into the “SNF group” as described in the webpages referred to above.
It is however clear from the Complaint and the evidence annexed to it that S.P.C.M SA is the registered proprietor of the French trade mark relied upon and in those circumstances it has established it has rights in that trademark. The Domain Name is identical to this trademark (the “.com” suffix being disregarded in making this comparison) and accordingly the Complainant has established that the Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights, and hence, the first condition of paragraph 4(a) of the Policy has been fulfilled.
More generally so far as the remainder of this Decision is concerned, the Panel will accept the Complainant’s assertion that the business carried out by the Complainant, as described in the body of the Complaint, is one and the same as the business of the “SNF Group” and/or “SNF Floerger” as described on the webpages in question. The Panel makes this assumption as, in view of its other findings (see below), the point does not matter. Had the Panel been minded to find in the Complainant’s favour on all other issues it would have needed to consider this issue further.
It should also be noted that nowhere has the Complainant explained why the three letters “SNF” were adopted, and what if anything they represent. If they are an acronym for some words which are something to do with the Complainant, the Panel does not know what those words are. The passage from the “history” section of the website quoted above explains in detail how the name FLOERGER was derived, but is wholly silent on how or why the three letters “SNF” also formed part of the name.
B. Rights or Legitimate Interests
“SNF” is simply three letters of the alphabet. Those letters when conjoined in this way do not form a recognizable word - but they can of course be an acronym for any set of three words which start with these three letters. There is no evidence that the Respondent has any independent rights in these letters other than whatever rights it may have as a result of registering the Domain Name and then using it in relation to a parking page and deriving advertising revenue from that activity. It says that registering and using these three letters for a parking page is itself an activity which amounts to a legitimate interest.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to the Respondent of the dispute, use of, or 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 Respondent has been commonly known by the domain name, even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial 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.
The question in this case is whether use of the Domain Name in respect of a parking page generating pay-per-click revenue, is itself sufficient to generate an independent right or interest. Is it a “bona fide offering of goods or services” that being the only one of the above criteria which might apply?
In this respect the Panel agrees with the consensus view as expressed in the WIPO Overview 2.0, as follows:
“Panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a ‘bona fide offering of goods or services’ [see also paragraph 3.8 below] or from ‘legitimate noncommercial or fair use’ of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder. As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value (a result that PPC page operators can achieve by suppressing PPC advertising related to the trademark value of the word or phrase). By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion.”
In the present case, the Domain Name in question is not a generic term per se but it is simply a series of three letters and as such has no specific meaning. The evidence the Complainant has filed does not establish that the parking page operated by the Respondent (which is no doubt automatically generated) operates in a way which results in a connection to goods or services connected with the Complainant. The page in question contains links to a wide range of products including, for example insurance, education, telephones, cameras, car rental and travel. Nowhere does there appear to be any link to chemicals, whether of the type the Complainant manufactures or otherwise. Nor are there any links to water treatment or purification, or indeed anything else that has any connection to the Complainant’s business or the businesses of its competitors.
The Respondent’s argument is that it had a right or legitimate interest in the domain name because the domain name is an acronym and/or a 3 – letter combination and, as such, the Complainant could not have exclusive rights to it as against the Respondent or anyone else. That would seem to be so as a matter of common sense and it is supported by previous UDRP decisions dating from the very beginning of the UDRP.
Thus, as early as the year 2000 it was decided in Tenenhaus Philippe v. Telepathy, Inc, NAF Claim No. 94355 that the Complainant trademark owner did not have exclusive rights to the acronym DAF, as many other parties also used it. Likewise in 2000 in Kis v. Anything.com Ltd, WIPO Case No. D2000-0770 the legitimate interest in short – letter domain names seems to have been confirmed by that panel’s statement that:
“The Domain Name at issue here is a three-letter second-level domain within the popular ‘.com’ top-level domain. All or nearly all of the three-letter names have long been taken; respondent itself holds a number of other short domain names (as reflected in Network Solutions' Whois database), including ‘an.com’, ‘hw.com’, ‘vz.com’, ‘xv.com’, ‘yz.com’, ‘zw.com’, ‘aex.com’, ‘fii.com’, ‘ldn.com’, ‘lna.com’, ‘mhi.com’, ‘nnc.com’, ‘otl.com’, ‘tbj.com’, ‘tca.com’, ‘ukt.com’, ‘vaz.com’, ‘vdj.com’, ‘wla.com’, and probably many more. Respondent appears to have selected the Domain Name ‘kis.com’ because of its length (if not because it represents an acronym for the Korean Information Site), rather than because it corresponds to Complainant's trademark -- indeed, it seems unlikely that Respondent was even aware of Complainant's trademark when it selected the domain name.”
In 2002, in Trans Continental Records, Inc v. Compana LLC, WIPO Case No. D2002-0105, a further panel again held that the Complainant had not established the lack of a right or legitimate interest in the acronym in the domain name <lfo.com>, although the Complainant had a trademark for LFO.
More recently, in 2008, it was held in BioDelivery Sciences International, Inc. v. HLK Enterprises, Inc. c/o Domain Admin, NAF Claim No. 1175189 that there was a legitimate interest in the domain name <bdsi.com> stating as follows:
“However, based on the fact that the disputed domain name and Complainant’s mark contain only four letters that could stand for many things unrelated to Complainant’s business, the Panel finds that Respondent’s use of the disputed domain name as a portal website is a showing of rights or legitimate interests under Policy paragraph 4(a)(ii). See Louis Vuitton Malletier S.A. v. Manifest Info. Servs., NAF Claim No. 796276 (concluding that the <lv.com> domain name consisted of two letters that could stand for many things and that therefore the respondent could establish rights or legitimate interests in the disputed domain name despite the complainant having rights in the LV mark).” (Emphasis added).
To the same effect was Banca Monte dei Paschi di Siena S.p.A v. Charles Kirkpatrick, WIPO Case No. D2008-0260, where the panel highlighted the significance of short – letter expressions that have meanings other than those claimed by the Complainant by noting:
“The Respondent was at the time of registration, of the view that no one company could claim exclusive rights in MPS because it stood for so many things. From its own searches of the term ‘MPS’, the Panel finds the Respondent’s view reasonable…”
Specifically with respect to acronyms the panel said:
“The Panel acknowledges that MPS appears to be an extremely common 3-letter combination which can relate to a number of third parties other than the Complainant. MPS is also an acronym for a substantial number of things, including systems, societies, and syndromes.”
The Panel accepts that the right to register such acronyms cannot be unlimited. Knowing of a complainant’s trademark, registering a domain name to copy the trademark or using it to trade off it or to target the trademark owner or act inappropriately towards it must put the registrant in a different position and put at risk its claim to have a right or legitimate interest in the domain name. But in the absence of such factors, and none are present in this case, the registrant has as much right as anyone else to use expressions such as acronyms, generic, dictionary words or other domain names made up from a small number of letters.
In these circumstances, the Panel does not consider that there is any capitalization on the Complainant’s trademark value by the parking page in question and hence concludes that the Respondent has established a legitimate interest, namely in using an arbitrary set of three letters to host a website comprising a single parking page.
Accordingly, the Complainant has failed to establish that the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
The Complainant’s case here depends upon its assertion that it “is well known under the trademark SNF” in the countries where it has facilities. No evidence is produced to support this assertion. The “www.snf-group.com” website provides some evidence that the name “snf” is widely used, although apparently in conjunction with the name Floerger. The use in question appears to take place throughout the world and in relation to a business which would appear to be operating on a substantial scale. Even assuming in the Complainant’s favour that this material establishes some reputation in the term “SNF” on its own, that reputation is in respect of a business which operates in what is clearly a very specialized market, namely the supply of chemicals for water treatment and associated activities. No evidence at all has been produced to establish any reputation in the term SNF outside that area and there is no evidence that the name would be associated with the Complainant by anyone who did not have knowledge of that specialized area.
The Respondent says that it registered the Domain Name simply because it was an available three letter sequence and all such three letter sequences are likely to have some value. It says there will typically be many organisations which have a name or a product which if portrayed as an acronym will correspond to a given three letter sequence and hence it registers any such sequence when it finds one available, and it had never heard of the Complainant when it effected the registration. That account seems to the Panel to be entirely credible and believable, and the Panel sees no reason to doubt it.
In those circumstances the registration cannot be in bad faith. The Complainant has a trademark (in France) corresponding to the sequence in question. Many other organisations will have a name or title that could be represented as an acronym by the same sequence – the Response identifies examples such as the Medicare – Skilled Nursing Facility acronym; Stanford University’s Nanofabrication Facility; NBC Sports – Sunday Night Football; Stavros Niachos Foundation; and Schweizerischer Nationalfonds, as being others who would use “snf” as an acronym, and points out that many of these that use domain names that incorporate the same three letters such as “www.snf.org”; “www.snf.no”; “www.snf-fitness.com”; and “www.snf-solutions.com”. The Respondent also points out that a Google search for the three letter sequence “snf” excluding the terms “polymer” and “polyacrylamide” to avoid references to Complaint yields results of 14,100,000 third-party uses of “snf”.
The Panel accepts that a registrant cannot be “willfully blind” to whether the disputed domain name may violate trademark rights. The question however is what amounts to “willful blindness”. The primary obligation on a registrant is set out in paragraph 2 of the Policy and that obligation is to determine if its registration violates another party’s trademark rights. This is not however an absolute obligation, which bars any registration of any domain name if someone else, somewhere in the world, has a trademark (however obscure) corresponding to the name. The question of when the registration will amount to violation of rights is one of fact and degree, depending upon many factors, such as the geographical locations concerned, the nature and scale of the trademark owners business, how well known and/or famous the trademark in question is and so on. In the present case, the Panel is satisfied that the nature of the rights that the Complainant had at the relevant date were not such as to render the Respondent guilty of “willful blindness” when it registered the Domain Name.
In reaching its decision on this ground, and in relation to its finding in relation to legitimate interests above, the Panel has had careful regard to principal case as relied upon by the Complainant – the <ceat.com> case. One member of the present Panel (Neil Brown QC) was the dissenting minority panelist in the <ceat.com> case. It is neither necessary nor appropriate for the present panel to reach a conclusion as to whether the majority in the <ceat.com> case were or were not correct. The UDRP does not operate on a system of binding precedent and this Panel is not bound by the previous decision, even if satisfied the cases are in relevant aspects identical. The Panel does however agree with the view set out in the WIPO Overview version 2.0, namely that it is desirable its decision is consistent with prior panel decisions dealing with similar fact situations. In the present case this Panel does not have available all of the materials from the <ceat.com> case and beyond reading the decision itself has not studied the arguments that were advanced in that case. In the <ceat.com> case the majority of the Panel found that the Respondent had been willfully blind:
“In the instant case, the Respondent is a known domain name speculator, using automated processes for domain name registration. According to the majority of the Panel, a domain name registrant cannot be willfully blind to whether the disputed domain name may violate trademark rights. After all, paragraph 2 of the UDRP provides that it is the registrant’s responsibility to determine whether its domain name registration infringes or violates someone else's rights. The registration of multiple domain names with no appropriate mechanism for ascertaining whether these may be identical or confusingly similar to trademarks, may support a finding of bad faith. See e.g., Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304 (finding that where a respondent registers large swaths of domain names for resale, often through automated programs that snap up domain names as they become available, with no attention whatsoever to whether they may be identical to trademarks, such practices may well support a finding that respondent is engaged in a pattern of conduct that deprives trademark owners of the ability to register domain names reflecting their marks); HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062 (finding that Registering a domain name that is identical to the distinctive trademark of another and using the domain name to generate revenue by directing Internet users to the websites of the trademark owner’s competitors, without exploring in a meaningful way the possibility of third-party rights, is inconsistent with the good faith requirement). For these reasons, the Panel finds that the Respondent registered the domain name in bad faith.”
The question is at what point does the extent of the Complainant’s rights reach a point where it can be said that willful blindness has occurred? In the <ceat.com> case the majority of the Panel appeared to conclude that the fact that the Complainant had a trademark registration in Canada where the Respondent was domiciled sufficed to establish this threshold:
“The dissent suggests that the Respondent could not have determined whether its domain name registration infringed on the Complainant’s rights because the Complainant was based in India and its product had not yet achieved global fame and recognition. The dissent, however, ignores the fact that the Complainant had a valid trademark registration for CEAT in Canada – Respondent’s domicile – at the time the domain name was registered (and indeed for decades before), clearly suggesting some presence by the Complainant in Canada. Whether a complainant’s mark is famous or not is irrelevant to the inquiry required by paragraph 2 of the Policy. What matters for purposes of paragraph 2, is that the respondent must engage in at least some check to see whether its domain name will infringe on a trademark. Had the Respondent undertaken the minimal effort of searching the Canadian trademark database before registering a domain name including the acronym ‘CEAT’, the Complainant’s rights in that mark would have become immediately evident to the Respondent. Its failure to undertake this minimal effort suggests bad faith”.
It is clear that the existence of a trademark registration in the Respondent’s place of domicile (n.b. it is a point of detail but it is not clear to the present Panel why the majority in the <ceat.com> case thought the Respondent was domiciled in Canada) was a relevant factor in the majority’s reasoning. That issue (and also noting the further distinction that the present case involves a three letter acronym rather than a four) is sufficient for this Panel to depart from the reasoning of the majority in the <ceat.com> case without needing to debate whether or not that case was, on its own facts, correctly decided. In the present case, the only registered trademark relied upon is in France and there is no evidence of the Respondent having any connection with France.
There is also no evidence before the Panel that anyone outside the specialized areas the Complainant operates in would have any awareness of the Complainant’s business under the letters “SNF”. Further in the present case there is no evidence that the Respondent had actual knowledge of the Complainant or its trademark and there is no evidence and no reason to suggest that the Panel should disbelieve the Respondent’s account that it had never heard of the Complainat or its rights. Had the three letter acronym been, say, IBM or BMW that fact could allow the Panel to reach such a conclusion, as it could reasonably be assumed that a Respondent would have actual knowledge of such famous brands. But there is no evidence at all of the Complainant having any reputation outside the specialized area in which it operates in either 2001 or indeed today. The Panel accordingly considers that no case of willful blindness is made out on the present facts.
In reaching this conclusion the Panel also takes into account the following matters:
Carrying on business in registering descriptive or generic domain names is not of itself objectionable – see for example X6D Limited v. Telepathy, Inc., WIPO Case No. D2010-1519, for a case discussing this issue and the applicable principles.
Offering domain names for sale is not of itself objectionable – see Allocation Network GmbH v. Steve Gregory, WIPO Case No. D2000-0016, for an example of a case where the relevant considerations were discussed in relation to this issue.
The use of a privacy shield is not sufficient by itself to establish bad faith. See Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696, for an example of a case discussing this issue and what other factors are to be taken into account in such circumstances.
Finally, there is an air of unreality about the submission that the Respondent was actuated by bad faith. The evidence on the record is that the Complainant has domain names <snf.fr> and <snf-group.com>. The Panel does not know, but it seems to have been satisfied with these names. It seems highly likely that at some date relatively soon after 2001 it must have become aware that the Respondent had registered <snf.com>. Despite this, it apparently made no protest and did not make the present claim of bad faith until 2014. The history of this matter would therefore suggest that the Complainant has not, in the past, ever believed that the Respondent acted in bad faith or made any claim to that effect, which considerably weakens its claim on this head of the Policy.
In view of the Panel’s finding on these substantive issues it is not necessary to deal with the issue of laches or delay. However, the unexplained delay on the part of the Complainant in bringing these proceedings must cast doubt over its case and provides a further reason for declining to find bad faith registration and, in particular, bad faith use. How can it be bad faith use when the party complaining about it does not volunteer what was going on during the thirteen years of the alleged bad faith and why, if it was so bad, it did not complain about it earlier? So the delay is a further aid in reaching the conclusion on element three.
Accordingly the Complainant has failed to establish the third condition of paragraph 4(a) of the Policy.
For the foregoing reasons, the Complaint is denied.
Nick J. Gardner
The Hon Neil Brown Q.C.
Date: May 20, 2014