A. Identity or confusing similarity
The Complainant owns registered “PLIEGER” word trademarks.
As confirmed by WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), see paragraph 1.2.1: “Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case”.
The disputed domain name entirely incorporates the Complainant’s PLIEGER trademark.
As stated in WIPO Overview 3.0 “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing” (see par. 1.7).
The .com domain zone shall be disregarded under the identity or the confusing similarity test as it does not add anything to the distinctiveness of the disputed domain name.
Therefore, the Panel finds that the first requirement of the Policy has been satisfied.
B. Rights or Legitimate Interests
Both parties made some statements and put forward arguments in support of their positions. The Complainant made an allegation of absence of any rights or legitimate interests of the Respondent in respect of the disputed domain name, while the Respondent’s main arguments were that the disputed domain name is a generic family name, not inherently distinctive and was registered to provide personalized e-mail services for Plieger families and such use is legitimate.
The web site under the disputed domain name is not actively used and the nature of Respondent’s intended use of the disputed domain name is not apparent. While Respondent’s arguments in respect of his rights or legitimate interests in the disputed domain name have some merits and would require a deeper thought (see e.g. Grasso's Koninklijke Machinefabrieken N.V., currently acting as Royal GEA Grasso Holding N.V. v. Tucows.com Co, WIPO Case No. D2009-0115 – “The evidence provided by the Respondent, as outlined above, indicates that the Respondent is instead using the disputed domain name because of its association as a surname”), the Panel decided for the sake of speed and efficiency of this administrative proceeding and taking into account Panel’s findings in respect of the third element as set out below, not to analyze the second element.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists non-exhaustive circumstances indicating registration and use in bad faith.
These circumstances are non-exhaustive and other factors can also be considered in deciding whether the disputed domain name is registered and used in bad faith.
The Complainant alleges the Respondent should have been (reasonably) aware of Complainant’s PLIEGER trademarks and was “willfully blind when registering the disputed domain name”. Besides, the Complainant argues that the fact that the Respondent offered to sell the disputed domain name to the Complainant at the amount of 55,000 US dollars indicates that the Respondent primarily registered the disputed domain name for purposes of selling it to a (potential) trademark holder or one of his competitors.
The Panel, however, disagrees with the Complainant and finds Respondent’s arguments more persuasive.
First, as stated in WIPO 3.0 Overview, bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark (see par. 3.1 of WIPO 3.0 Overview).
Second, while the Complainant has registered trademarks for the word “PLIEGER”, Plieger is indeed a family name and nothing in the present case indicates that Plieger is associated exclusively or primarily with the Complainant.
Nor is there any evidence that demonstrates that the Complainant, its business and trademarks were known in the US, the country of the Respondent’s residence.
The WHOIS data indicates that the disputed domain name was first registered in 2000 and acquired by the Respondent in 2018. There is no evidence available in this case that the Respondent targeted the Complainant or had the Complainant in mind during the registration of the disputed domain name. In particular, there is no information or data that would prove Complainant’s business activity in the US or that the Respondent knew or should have known about the Complainant.
In other words, there is no evidence that demonstrates the Respondent’s intent to profit in some fashion from or otherwise exploit the Complainant’s trademark.
Third, with regard to the sale offer the Panel would note the following. The inquiry to buy the disputed domain name from the Respondent was made by an individual who did not disclose any affiliation or connection with the Complainant nor did he state that he acted on behalf of the Complainant.
Therefore, it cannot be said that the Respondent intended to sell the disputed domain name to the trademark owner or its competitor.
As confirmed by WIPO 3.0 Overview (see par. 3.1.1.) and case law (see e.g. CAC Case No. 101261, Billy Bob's Texas IP Holding LLC v. Domain Administrator, Name Administration Inc. (BVI), WIPO Case No. D2016-1221 and Puky GmbH v. Ignatius Agnello, WIPO Case No. D2001-1345) an offer to sell, even at a rather high price, as such is insufficient proof of bad faith in the absence of other indicia.
The Policy in 4 (b)(i) refers to “the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant or to a competitor of that complainant”. The purpose element is clearly absent in the present case as nothing indicates that the disputed domain name was registered with the purpose to sell it to the Complainant (or any of its competitors). Evidence submitted by the Complainant does not prove that.
As stated by one of the previous panels “paragraph 4(b)(i) does not prohibit commercial sales of domain names for more than their costs. It says that it is evidence of bad faith if there are circumstances indicating intent at the time of registration to sell to specific people (the owner of a trademark or competitor) at a price above the out-of-pocket costs“ (see Bible Study Fellowship v. BSF.ORG / Vertical Axis Inc., WIPO Case No. D2010-1338, see also CAC Case No. 101331 - “the Panel’s role is to apply the Policy, not to re-write it. Applying the Policy, it is an essential element required to be proved by Paragraph 4(b)(i) that when the registrant registered the domain name it not only intended to make money out of the trademark owner by trying to sell it the domain name at a profit but that this was its primary intention”).
The fact that the Respondent is a registrant of many domain names does not prove any bad faith on the Respondent’s side in this particular proceeding.
Paragraph 4(b)(i) of the Policy requires some form of targeting (or, at least, awareness) of the Complainant and its trademark rights by the Respondent at the time of registration of the domain name (see Compañía Logística de Hidrocarburos CLH, S.A. v. DropCatcher.Info / Badminton, Inc., WIPO Case No. D2018-0973) and this is not the case in this administrative proceeding.
There is also no other evidence in this proceeding that would demonstrate Respondent's bad faith.
The Panel holds that the Complainant failed to satisfy the third requirement of the Policy.
REVERSE DOMAIN NAME HIJACKING
The Respondent has also raised the issue of whether the Complainant may have engaged in Reverse Domain Name Hijacking (RDNH).
While the Panel would agree that the Complainant’s case is not very strong, it believes there is not enough evidence to find RDNH (“Panels have generally held that Respondent bears a heavy evidentiary burden to justify such a finding”, see Rudy Rojas v. Gary Davis, WIPO Case No. D2004-1081).
As highlighted in WIPO 3.0. Overview “the mere lack of success of a complaint is not itself sufficient for a finding of RDNH” and there has to be a bad faith element of the Complainant in bringing the complaint (see par. 4.16).
The Complainant has registered trademarks that pre-date Respondent’s registration of the disputed domain name and the facts of previous communication with the Respondent were disclosed by the Complainant to the Panel so there was no attempt to mislead the Panel in this regard.
While this previous communication in respect of both the disputed domain name and a different domain name does not help the Complainant’s case, in the view of the Panel, it does not evidence Complainant's bad faith. The Panel would view Complainant’s actions as incorrect assessment of the situation and evidence available rather than bad faith attempt.
Therefore, the Panel does not find that the Complainant’s conduct constitutes Reverse Domain Name Hijacking within the meaning of the Policy.
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