Paragraph 4(a) of the Policy requires that the Complainant proves each of the following three elements to obtain an order that the Disputed domain name should be transferred or cancelled:
(i) the Disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed domain name; and
(iii) the Disputed domain name has been registered and is being used in bad faith.
The Panel will proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied in these proceedings.
RIGHTS
The Disputed domain name consists of the element “Petrossian” which is identical to the Complainant’s Trademarks and the element “cakes” which is descriptive of the products that are likely to be advertised under the Disputed domain name. Adding of such descriptive element to a trademark cannot change the conclusion that the Disputed domain name is confusingly similar to Complainant’s Trademarks. Here the Panel fully adheres to the consensus view of WIPO Panels on this issue (please see Section 1.8 of WIPO Jurisprudential Overview 3.0 at www.wipo.int).
For sake of completeness, the Panel asserts that the top-level suffix in the domain name (i.e. the ".com") must be disregarded under the identity / confusing similarity test as it is a necessary technical requirement of registration.
Therefore, the Panel concludes that the Complainant satisfied the requirement under paragraph 4(a)(i) of the UDRP.
RIGHTS OR LEGITIMATE INTERESTS
The Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed domain name. Once such prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the Disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP (please see for example WIPO case no. D2003-0455, Croatia Airlines d.d. v. Modern Empire Internet Ltd.).
In the Panel’s opinion, such a prima facie case has not been made out by the Complainant.
The Complainant only established that no webpage exists under the Disputed domain name. However, such fact alone is not sufficient to establish lack of the legitimate interest of the Respondent in the Disputed domain name in a situation where the Disputed domain name includes an element corresponding to the family name of the Respondent (Petrossian) and a descriptive element (cakes) which refers to the business the Respondent is involved in (design and preparation of special occasion cakes). Here, the Panel agrees with the long established view that a use of a personal name in a domain name generally establishes legitimate interest in such a domain name under paragraph 4(c)(ii) of the UDRP (please see for example WIPO case no. D2014-2111, Alessandro International GmbH v. Alessandro Gualandi, <alessandro.com>, and numerous other cases referred to in such decision). Therefore, the Respondent has legitimate interest to the element of the Disputed domain name identical to Complainant’s Trademark.
Then, in its additional statement, the Complainant alleged that the Disputed domain name may be registered under a false identity. The Panel disagrees with such allegation. As the Panel confirmed by its own examination, various online sources confirm identity of Anasheh Petrossian, legitimacy of the Petrossian Cake Designs business and involvement of Anasheh Petrossian in such business. Reliability of such online sources certainly cannot compare to officially authorized information. However, considering all such information individually as well as in its totality, it is in the opinion of the Panel very improbable, that the Disputed domain name was registered under a false identity.
The Panel emphasizes that this case is not comparable to WIPO case no. D2017-2051 JCDECAUX SA v. whois privacy / DEPARTEMENT juridique, JCDECAUX SA DEPARTEMENT juridique <jcdecaux.taipei> and WIPO case no. D2017-0261, Boehringer Ingelheim International GMBH v. (Boehringer Ingelheim) < boehringer-ingelheim-in.com> referred to by the Complainant as in those cases there was no evidence that the identities used for registration are existing personal names / legitimate business names and considering the nature of these domain names such fact was also very improbable. On the other hand, in this case the Disputed domain name corresponds to the commonly used personal name and there are various online sources confirming the identity of the person who registered the Disputed domain name as well as existence of its business to which the Disputed domain name refers.
Therefore, the Panel concludes that the Complainant failed to establish that the Respondent does not have any right or legitimate interest to the Disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy). Such conclusion alone is sufficient to deny the Complaint. However, for the sake of completeness the Panel also briefly concludes on the issue of bad faith of the Respondent.
BAD FAITH
The Panel does not find bad faith of the Respondent in registration and use of the Disputed domain name.
The Disputed domain name corresponds to the family name of the Respondent and the business in which the Respondent is involved. There is no evidence that Disputed domain name was registered for the purpose of its future sale to the Complainant, infringement of Complainant’s Trademarks or creation of false association with the Complainant. With respect to the Disputed domain name corresponding to the family name of the Respondent, it is not sufficient for the Complainant to rely on the general arguments that the Complainant must have been aware of the Complainant’s Trademarks or that Complainant registered the Disputed domain name in order to prevent Complainant from using the Disputed domain name which could otherwise be applicable in typical cybersquatting cases. Specific bad faith conduct of the Respondent (such as creating false association with the Complainant and / or its trademarks) would have to be established, which in this case was not.
As a result, the Panel found that the Disputed domain name has not been registered and used by the Respondent in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).
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