For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the Domain Names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on the holder’s web site or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the domain name in dispute has been registered and is being used in bad faith.
Although the Respondent is not the original registrant of the disputed domain name, the Panel accepts its acquisition as constituting registration for the purposes of the Policy (see MC Enterprises v. Mark Segal(Namegiant.com), WIPO Case No. D2005-1270).
The Respondent affirms that the disputed domain name was not acquired in bad faith and in order to create a detriment to the Complainant’s mark but only to protect the business of ICTC HOLDINGS and CPS COLOR GROUP OY from predators who may wish to register the domain name <corob.com>.
In consideration of the above statement it is important to determine whether the Policy’s requirement of registration and use in bad faith can be satisfied where the disputed domain name may have been registered (acquired) in good faith but subsequently has been used in bad faith.
According to the recent decision in Ville de Paris v. Jeff Walter WIPO Case No. D2009-1278 which includes also a close reading of the decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. 2000-0003 “bad faith registration can be deemed to have occurred even without regard to the state of mind of the registrant at the time of registration, if the domain name is subsequently used to trade on the goodwill of the mark holder”.
The above mentioned Panel’s view, finds guidance in answering to the question from the analysis and reasoning adopted in the Telstra decision. In Telstra it was noted that, of the four (non-exclusive) scenarios deemed by Paragraph 4(b) of the Policy to be “evidence of registration and use of the domain name in bad faith”, only one of these scenarios – the one described in Paragraph 4(b)(iv) – describes an actual use of the domain name. The other three scenarios describe purposes for which the domain name was registered. As the panelist noted, this fact is relevant not only to the issue under consideration in Telstra – which was whether a passive holding of the domain name following a bad faith registration could satisfy the Paragraph 4(a)(iii) requirement – but also whether a bad faith use of a domain name following a non-bad faith acquisition could satisfy the Paragraph 4(a)(iii) requirement. It is relevant to the latter issue because it shows that the Policy expressly deems one particular scenario to be “registration and use of the domain name in bad faith” even though that scenario makes no mention of the mental state of the registrant at the time of acquisition of the domain name. The Policy expressly states that the Paragraph 4(b) scenarios are “without limitation” – that is, the Policy makes clear that there can be other scenarios that are also evidence of registration and use in bad faith. It follows, therefore, that the Policy expressly recognizes that the Paragraph 4(a)(iii) requirement of bad faith can, in certain circumstances, be satisfied where the Respondent has used the domain name in bad faith, even though the Respondent may not have been acting in bad faith at the time of acquisition of the domain name.
In the present case the Panel finds that Respondent has been using the domain name <corob.com> in bad faith to intentionally attract for commercial gain internet users to its products and services. Actually, the disputed domain name corresponds to a web page containing a link to the Respondent’s “official” web site www.hero.ca where the Respondent’s products and services are obviously illustrated.
In doing so the Respondent is clearly trading on the goodwill associated with the COROB trademark. Such conduct where the Respondent is realizing commercial gain exploiting the reputation of Complainant’s mark was considered as an utilization of the disputed domain name in bad faith in numerous previous WIPO decisions, as for example: Deutsche Telekom AG v. Gary Seto, WIPO Case No. D2006-0690 Zinsser Co. Inc., Zinsser Brands, Co. v. Henry Tsung, WIPO Case No, D2006-0413; Volvo Trademark Holding AB v. Unasi, Inc. WIPO Case No. D2005-0556; Cox Radio, Inc. v. Domain Administrator, WIPO Case No. D2006-0387; Gianfranco Ferré S.p.A. v. Unasi Inc., WIPO Case No. D2005-0622; L’Oreal, Biotherm, Lancome Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623; Scania CV AB (Publ) v. Unaci, Inc., WIPO Case No. D2005-0585; Volvo Trademark Holding AB v. Michele Dinoia, WIPO Case No. D2004-0911; Claire’s Stores, Inc., Claire’s Boutiques, Inc., CBI Distributing Corp. v. La Porte Holdings, WIPO Case No. D2005-0589; Members Equity PTY Limited v. Unasi Management Inc., WIPO Case No. D2005-0383.
Furthermore it must be stressed that the Respondent is a competitor of the Complainant and such a consideration is particularly relevant in order to conclude that the domain name in dispute is used in bad faith.
The Panel has duly taken into consideration the argument introduced by the Respondent on this specific issue.
According to the Respondent’s view, the web site corresponding to the contested domain name makes simply reference to the ownership of the domain name <corob.com> and it may be useful for consumers that wish further information with respect to the <corob.com> domain name.
The above statement does not convince the Panel since the Respondent’s web site consists of a clear invitation to visit a web site under a domain name totally different from COROB and easily available for the consumer who initially wished to have information regarding the Complainant products and services and for this reason was looking for a domain name corresponding to the Complainant’s trademark.
In consideration of the fact that the Respondent is a competitor of the Complainant, since they operate in the same sector, the Panel believes that the above mentioned behavior of the Respondent constitutes a sort of unfair competition action and is clearly recognizable under the term of Paragraph 4(b)(iv) of the Policy.
In addition the Panel has duly analyzed the exchange of correspondence related to the possible transfer of the disputed domain name. In this perspective it must be considered that the amount offered by the Complainant for purchasing the disputed domain name (EUR 250/300) seems more appropriate than the amount requested by the Respondent for selling it (EUR 25.000).
This, in consideration of the fact that the asset in question is not connected with any active web site and that, accordingly, the value of <corob.com> may only rely upon the expenses for registering and renewing the domain name.
The Respondent stated that the amount of EUR 25.000 corresponds to the cost sustained in relation to acquisition and maintenance of the domain name especially considering that the asset was purchased by a third party. However the Respondent has not indicated the amount of money paid to the previous domain name’s owner and has not offered any evidence of payment effectuated in relation to acquisition and/or maintenance of the domain name <corob.com>
Therefore, the Panel’s view is that Respondent attempted to sell the disputed domain name to the Complainant for an amount that appears to be in excess of the reasonable out-of-pocket expenses directly related to the disputed domain name.
In light of the above, the Panel is convinced that the Complainant has proven the third element of the Policy.
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