This proceeding was suspended so that the Parties could have come back and inform this Panel if such a decision has been issued or is about to be issued in the short term.
It would have been also important to know whether the Parties have ever entered into a License agreement by virtue of which the Defendant had the right to use the subject-matter domain name. However for the reasons explained here below this circumstance is not conclusive.
Upon suspension of the case, the parties did not agree on whether the pending cases concern the validity of the Complainant’s trademark, or the ownership of the disputed domain names or the License scope.
The proceeding having been resumed and no document on the above points having been filed by the parties, the Panel is willing to issue a decision on the case.
The Respondent declared to be available to transfer the disputed domain names comprising the word Gazelles to the Complainant and it is not clear why this free-of-charge transfer does not take place.
In the light of the above, given that no decision was issued on the parties and no decision is expected to be issued in the short term, this Panel intends to issue its own decision.
Considering the above, the Panel would like to assess the usual three elements of any UDRP proceeding: (1) Confusing similarity or identity with the Complainant’s trademarks, (2) legitimate interest, (3) bad faith.
(1) CONFUSINGLY SIMILARITY OR IDENTITY WITH THE COMPLAINANT’S TRADEMARKS
In relation to the first element, it is undisputable that the Complainant is the owner of the trademark GAZELLES in class 41 for training services. Some of the Defendant’s affiliates used to work for the Complainant organization but no one was a Licensee, but rather contractors of the subsidiary Company Gazelles Inc.. However the real existence of a Licence shall not have changed the outcome of this decision as it will be explained in the following argumentations
The identity or the confusing similarity with <GAZELLESCOACHES.CO>, <GAZELLES7.COM>, <GAZELLESGROUP.COM> and <DISCOVERYGAZELLESCOACHING.COM> is self-evident.
As far as <GICOACHES.COM> is concerned, the evidence produced by the Complainant is not sufficient to recognize a common law right. At least in this proceeding, in which the subject-matter of the dispute is not determining whether common law rights validly exist or not. “GICOACHES” is not a Complainant’s registered trademark and no evidence of its reputation as a trademark was produced within this proceeding.
For this reason, the first element is proved to exist in connection with the first four trademarks, but not for <GICOACHES.COM>.
(2) LEGITIMATE INTEREST
This Panel does not share the view that if a company name is used as a domain name, then the Legitimate Interest in that name may be considered as automatically proved. In fact, the unlawful use of a trademark can never represent a legitimate interest even if the Registrant has become known for a while under the name “GAZELLES” that coincides with the four domain names at issue. The same can be said in case a Licence existed but it was ended unless in the Licence was expressly established the right of the Licensee to register a trademark or a domain name.
Passive holding of the disputed domain names, except for <gicoaches.com>, supports the Panel’s finding that the Respondent is lacking the legitimate interest in those domain names containing the word Gazelles
In relation to <GICOACHES.COM>, on the contrary, “GI” could be the abbreviation of “GRAVITY IMPACT”, considering that the Complainant has no trademark rights on the acronym “GI” or on “GICOACHES”. It seems to the Panel that the Respondent can have a legitimate interest in using an acronym of its website.
(3) BAD FAITH
This Panel does not share the majority view that if a domain name is registered during a work relationship or a License with the Complainant, then the Registrant is in good faith. The Panel is led to think that bad faith is a state of mind both at the time of registration and that only a subsequent use can prove bad faith through actual behavior taken on thereafter. In other words, initial bad faith is impossible to be proven at the time of the domain names registration, but has to be assessed through the registrant’s behavior over time.
Perhaps, a uniform interpretation of the two occasions of assessment of bad faith – upon registration and after the agreement expires – could be upheld, especially when even the initial registration was not “expressly authorised”.
A license must not be seen as an objective evidence of good faith but as a contractual bad faith in breach of the License provisions or outside the scope of the said Licence.
We thus need to harmonise the sphere of the rules applicable to domain names with those of licensed trademarks in order to avoid contradictory outcomes. This Panels refers to a case of some years ago in which the existence of Licence was not enough to assess the lack of bad faith and the existence of the Respondent’s legitimate interest. At least one of the three Members of the Panel agreed with this point of view which I also share: In fact Mr Scott Donaheyn in case D2010-0800 of August 31, 2010 Natterman vs Watson <Ferrlecit.com> provided a convincing argument that can be applied in this case too.
A License to use the Trademark “FERRLECIT” for pharmaceuticals was granted by Nattermann to Watson. The Three-Member Panel found that there was no evidence of bad faith at the time of registration because of this Licence. Mr. Scott Donahey’s dissenting opinion was the following:
“Purposive Approach (in Canada is called “modern interpretation”) is the usual way of interpretation in civil law countries and therefore bad faith registration and use should be considered as a Unitary concept”.
“The only way to assert that a registration is in bad look at subsequent conduct.” This is the position of this Panel: bad faith is a subjective mental element faith is to and can be proved by external circumstances that may be present at the time of the registration but are likely to be detected later on.
A licensee using the trademark after Licence termination could be imposed a sanction even under the criminal law and, therefore, this condition could not be seen as a maximum illicit behaviour (under the traditional trademark law interpretation) in one case and as an evidence of the existence of a legitimate interest in another situation (i.e. in the domain name regulation).
In the case at issue, there are many doubts on the existence of the License itself and in any case the maintained existence of such License has been rejected by a decision.
All of all (1) the Respondent’s recognition of the Complainant’s trademark rights on “GAZELLES”, (2) the passive holding of the disputed domain name containing the word “Gazelles” and (3) the previous work relationship with Gazelles Inc. are all proofs of bad faith in relation to the Gazelles domain name registrations and use (or actual non-use of them).
The panel firmly believe that the Respondent is in bad faith in relation to the disputed domain names containing the word “GAZELLES-“.
As to <GICOACHES.COM>, this is not the best venue for issuing a decision on the existence of the Complainant’s “GI” unregistered trademark and on the consequent infringement thereof. It seems that the Complainant has not filed any conclusive evidence to such respect. This Panel deems that the Respondent’s bad faith on <gicoaches.com> has not been held, considering that the Complainant’s reputation and the recognised commercial use of “GI” before the Respondent’s <GICOACHES.COM> registration have not been satisfactorily proved.
Reverse Hijacking
There are no indications of reverse hijacking of the Complainant against the Respondent and the latter’s request has to be rejected.
In the light of the above the panel
• accepts the Complainant’s arguments in relation to <GAZELLESCOACHES.COM>, <GAZELLES7.COM>, <GAZELLESGROUP.COM> and <DISCOVERYGAZELLESCOACHING.COM> and order that this four domain names are transferred to the Complainant
• reject the complaint relation to <GICOACHES.COM> and also
• reject the reverse hijacking request advanced by the Respondent
Massimo Cimoli
|