Spanish Fashion Company – Scalpers Trademark in EU and worldwide – Respondent from US, resides in Taiwan, China – Plural form of a Dictionary word – Legitimate Interest not assessed as no Legitimate Interest found – Complaint attempted to purchase – Respondent owns over 100 Domain Names – Respondent registered the domain name before Complainant acquired Trademark Rights – Reverse Domain Name Hijacking Upheld
Scalpers Fashion, S.L. v. Dreamissary Hostmaster [WIPO Case No. D2019-2937]
1. The Parties
The Complainant is Scalpers Fashion, S.L., Spain, represented by CASAS ASIN, Spain.
The Respondent is Dreamissary Hostmaster, United States of America (“United States”), represented by Muscovitch Law P.C., Canada.
2. The Domain Name and Registrar
The disputed domain name <scalpers.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2019. On December 4, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 5, 2019, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on December 10, 2019. In accordance with the Rules, paragraph 5, the due date for the Response was December 30, 2019. Upon request from the Respondent, the due date for the Response was automatically extended to January 3, 2020, pursuant to the Rules, paragraph 5(b). Upon further request from the Respondent, and taking into account the Respondent’s stated reasons for that request, and considering the objection of the Complainant, the due date for the Response was further extended to January 10, 2020, in accordance with the Rules, paragraph 5(e). The Response was filed with the Center on December 31, 2019.
The Center appointed Sebastian M.W. Hughes, Luis Miguel Beneyto Garcia-Reyes, and Adam Taylor as panelists in this matter on January 16, 2020. The Panel finds that it was properly constituted. Each member of the Panel has submitted a 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 a company incorporated in Spain in 2007 and carrying on business since 2008 as a fashion company under the trade mark SCALPERS (the “Trade Mark”).
The Complainant is the owner of numerous (word and device mark) registrations for the Trade Mark in Europe and in various jurisdictions worldwide, including European registration No. 6748578, with a registration date of September 29, 2008.
The Respondent is a United States citizen originally residing in California and now living in Taiwan, Province of China. The Respondent is a speculator and trader in, and the owner of a large number of, domain names comprising dictionary words.
C. The Disputed Domain Name
The disputed domain name was registered on September 15, 1997.
D. Use of the Disputed Domain Name
The Respondent has previously used the disputed domain name to generate pay-per-click revenue by resolving the disputed domain name to websites with sponsored links relating to the sale of tickets.
At the time of the filing of the Complaint, the disputed domain name was resolved to a parking page hosted by the Registrar.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar or identical to the Trade Mark; the Respondent has no rights or legitimate interests in respect of the disputed domain name; and, the disputed domain name was registered and is being used in bad faith.
The Respondent contends that he has rights and legitimate interests in respect of the disputed domain name; and the disputed domain name was not registered and has not been used in bad faith. The Respondent contends that he registered and subsequently used the disputed domain name as it contains the plural form of the dictionary word “scalper” – meaning “someone who buys things, such as theatre tickets, at the usual prices and then sells them, when they are difficult to get, at much higher prices”.1
The Respondent requests that the Panel make a finding of reverse domain name hijacking.
6. Discussion and Findings
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
The disputed domain name incorporates the entirety of the Trade Mark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7). Excluding the generic Top-Level Domain (“gTLD”) “.com”, the disputed domain name is identical to the Trade Mark.
The fact that the disputed domain name was registered before the Complainant acquired rights in the Trade Mark is immaterial for the purpose of the first element under paragraph 4(a) of the Policy (see WIPO Overview 3.0, section 1.1.3).
The Panel therefore finds that the disputed domain name is identical to the Trade Mark.
B. Rights or Legitimate Interests
In light of the Panel’s finding in Section 6.C. below, it is not necessary for the Panel to address the second limb under paragraph 4(a) of the Policy. If it were necessary, the Panel considers that the Respondent’s registration and use of the disputed domain name in respect of the dictionary meaning of the word “scalpers” comprised therein – to generate pay-per-click revenue by way of sponsored links corresponding to its dictionary meaning – would give rise to a finding in the Respondent’s favor under the Policy.
C. Registered and Used in Bad Faith
The Complainant’s submissions regarding bad faith are as follows:
“It is well established that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding, specially taking into account the distinctiveness and reputation of the Complainant’s mark […]
The Respondent intends to take advantage of the good-faith and fame acquired by my client in recent years, as well as disrupt its business activity. The Complainant is a well-known company, with reputation acquired all over the world in the fashion industry and has tried in many occasions to negotiate the buy of the domain with the Respondent. To every attempt to reach an agreement, the Respondent has always answered asking for an exorbitant amount of money. It should be noted that, in a first approach from the Complainant, the Respondent tried to sale the domain name for [USD] 150,000, an excessive offer taking into account that a domain name can be acquired from [EUR] 10 […]
Subsequently, the legal representation of the Complainant approached again to the Respondent in order to reach an amicable agreement. However, the Respondent’s answer to this proposal was to increase the price for the domain, offering it for [USD] 195,000. To ask for such a disproportionate price can only be taken as a sign of the Respondent bad faith […]
Besides this, it should be brought to the Panel’s attention that the Respondent is owner of more than one hundred Domain Names […] which is an obvious indication that the Respondent follows an abusive pattern of registration of trademarks owned by third parties in order to sell them afterwards to companies for enormous amounts of money, practice commonly known as Cybersquatting Speculative, and widely considered as an indication of bad faith […]”
Where a domain name has been registered before a complainant has acquired trade mark rights, only in exceptional cases would a complainant be able to prove a respondent’s bad faith (see WIPO Overview 3.0, sections 1.1.3 and 3.8). This is not such an exceptional case.
The Respondent registered the disputed domain name more than 10 years before (1) the date of incorporation of the Complainant; and (2) the Complainant’s asserted date of first use of the Trade Mark. In such circumstances, and in light of the evidence filed by both parties in this proceeding, there is no basis for a finding that the Respondent targeted the Complainant’s then non-existent Trade Mark at the time he purchased the disputed domain name.
For all the foregoing reasons, the Panel concludes that the disputed domain name has not been registered in bad faith.
Although it is not necessary to address bad faith use (the requirement for the Respondent to establish bad faith registration and use under the third limb of paragraph 4(a) being conjunctive), the facts demonstrate that the only use made by the Respondent of the disputed domain name has been in respect of the dictionary meaning of the word “scalpers” comprised therein. Accordingly, there is also no basis for a finding of bad faith use.
D. Reverse Domain Name Hijacking
Paragraph 15(e) of the Rules provides that, if “after considering the submissions the [p]anel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the [p]anel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”.
Reverse Domain Name Hijacking (“RDNH”) is furthermore defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”. (See WIPO Overview 3.0, section 4.16).
Panels have consistently found that the mere lack of success of a complaint is not in itself sufficient for a finding of RDNH.
The Panel considers that, in the present proceeding, the following factors support a finding of reverse domain name hijacking against the Complainant:
(i) the disputed domain name was registered by the Respondent long before the Complainant obtained relevant rights in the Trade Mark;
(ii) the Complainant’s legal representatives have unreasonably ignored established UDRP panel positions set out in WIPO Overview 3.0;
(iii) the Complaint was filed after two unsuccessful attempts to purchase the disputed domain name, the first initiated by the Complainant in August 2017, and the second by the Complainant’s legal representatives in June 2019; and
(iv) the Respondent’s legal representatives wrote to the Complainant’s legal representatives after the filing of the Complaint, on December 16, 2019, pointing out that, in light of the undisputed facts, a finding of bad faith registration and use was impossible, and inviting the Complainant to withdraw the Complaint.
In light of the above, the Panel agrees with the Respondent that the Complainant has filed the Complaint after an unsuccessful attempt to acquire the disputed domain name from the Respondent, and where the legally represented Complainant filed the Complaint without having any plausible basis for establishing, in particular, bad faith registration and use.
In all the circumstances, the Panel makes a finding of reverse domain name hijacking against the Complainant.
For the foregoing reasons, the Complaint is denied.
Sebastian M.W. Hughes
Luis Miguel Beneyto Garcia-Reyes
Dated: January 30, 2020