FACTS ASSERTED BY THE COMPLAINANT:
Key contentions of the Complaint may be summarized as follows:
The Complainant AVK Group is a privately-owned industrial group currently comprising over 100 companies worldwide engaged in developing and producing valves, hydrants and accessories for water and gas distribution, sewage treatment and fire protection. The Complainant has numerous trademark registrations on both AVK <w> and AVK <device> throughout the world, including international registrations 624473A, 624473B, 624473C and 971496A, Chinese registration 1191333-7 and more than 66 additional national trademarks. The Complainant has registered several domain names comprising or consisting of AVK, including <avkvalves.com> which have been registered since 29 April 1998.
The disputed domain name was registered by the Respondent who also operates <bestweb.com> where a huge portfolio of domain names, acquired in stages since 1998, is being offered for rent or sale. The disputed domain name is in this portfolio and an opportunity to submit an offer to either purchase or rent the disputed domain name is provided. The Respondent does not offer any goods or services other than the above-mentioned. The disputed domain name was registered on 5 September 2003 without any activity in October 2003 according to <archive.org> and being offered for sale from November 2003 until approximately middle of 2019.
1. The Complainant submits that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. When the Respondent registered the disputed domain name, the Complainant had already begun using the trademark AVK and had filed several trademark applications for AVK and the Complainant had registered the domain name <avkvalves.com> and begun using it to promote its company. The disputed domain name incorporates the Complainant’s AVK trademark in its entirety. AVK is not a generic or descriptive term; it is, however, a valid and distinctive trademark owned by the Complainant and it is identical to the registered and unregistered trademarks owned by the Complainant.
2. Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not licensed or authorized the Respondent to register or use the disputed domain name, nor is the Respondent affiliated to the Complainant in any form and there is no evidence that the Respondent is known by the disputed domain name or owns any registered trademark including the term AVK or AVK.COM. There is no evidence showing that the Respondent has a history of using, or preparing to use, the disputed domain name in connection with a bona fide offering of goods and services, nor that it is making a legitimate, non-commercial or fair use of the disputed domain name. The disputed domain name might in the perception of the Respondent merely be a 3-letter combination, but in fact it qualifies as a trademark for the Complainant. Parking a domain name or pay-per-click pages does not confer rights or legitimate interests. For the foregoing reasons, the Respondent must be considered as having no rights or legitimate interests in respect of the disputed domain name. As shown above, the Respondent only registered the disputed domain name to resell and/or rent it to third-party and consequently has no legitimate interest in the disputed domain name.
3. The disputed domain name has been registered and is being used in bad faith. It is not necessary to prove both registration and use in bad faith, however, in this particular case, the Respondent’s registration and use are clearly in bad faith. The disputed domain name was registered in bad faith. The Respondent is aware that registering domains names, of which there can be only one, is potentially a profitable business as Complainant’s are often forced to buy back their apparent identity on the Internet, as follows from the Respondent’s website “When you are conducting business on the Internet, your domain name plays a very important role in representing your business. It’s very important to have a right domain name for your business.” The disputed domain name is being used in bad faith. The only and sole use of the disputed domain name is to promote the sale or rent of the said domain name, and not to offer any bona fide goods or services. This is the text-book definition of use in bad faith, and the entire business model of the Respondent. In this case is has to be noted that “hiding” behind that fact that the Complainant’s trademark is merely a 3-letter combination and that other business might be using the same 3-letter combination, does not legitimize the Respondent’s claim to the trademark.
FACT ASSERTED BY THE RESPONDENT
Key contentions of the extensive Response may be summarized as follows:
AVK is a very commonly used acronym and in this case “A.V.K.” happens to be the initials of Complainant’s founder. However, the acronym AVK, is by no means singularly associated with Complainant. It is an acronym shared by countless others who adopted AVK as a brand both before and after Respondent registered the disputed domain name, demonstrating that the acronym appeals to both established businesses and to new entrants in the marketplace. The Respondent explicitly mentions 12 national trademark registrations or applications including the term AVK and 11 domain names registered within country-codes as well as the generic top level domains and containing the term AVK. Further, Canadian, US and UK entities with the term AVK within their name are have been noted by the Respondent. It is evident that the Complainant has no monopoly on AVK whatsoever and that there are numerous entities which have adopted AVK as a brand, thereby demonstrating that it has widespread and general appeal and is not solely of value to, or associated with, Complainant.
On or about September 8, 2003, Respondent’s sole shareholder and director, Murat Yikilmaz, a Turkish national and resident, registered the disputed domain name. The previous registrant had let the disputed domain name expire as it was “pending delete” immediately prior to Mr. Yikilmaz’s registration. Once Mr. Yikilmaz subsequently incorporated the Respondent corporation to manage his domain name investments in 2015, Mr. Yikilmaz updated the Whois details for the disputed domain name to reflect his corporation as the registrant.
The sole reason that Respondent registered the disputed domain name was because Respondent is in the business of investing in generic dictionary word and acronym domain names. As openly shown on Respondent’s website <bestweb.com>, Respondent owns dozens of three-letter acronym domain names, acquired both before and after it acquired the disputed domain name. Respondent registered the disputed domain name because such domain names are inherently rare and because it had become available for registration. The Respondent had no awareness of, or intention to target Complainant or its mark. Respondent was aware that virtually all three-letter acronyms (except perhaps the most famous and distinctive of acronyms, such as arguably IBM) are widely used by numerous parties for disparate goods and services and as such no one person has any monopoly on such terms. Registration of such domain names without intent to target a complainant is well supported by the Policy and associated case law.
It cannot be said that the disputed domain name was registered because of the Complainant. Respondent never once ever solicited Complainant. What Respondent did use the disputed domain name for, was as an investment and as part of its stock in trade of valuable and rare three-letter and generic domain names. Respondent previously but no longer, used the disputed domain name for very general advertising, although the revenue from it was paltry, with only € 3.06 being generated in the 12 month period. Respondent consistently used the disputed domain name for non-infringing and advertising of general categories of goods and services. At no time did Respondent ever configure the disputed domain name parking settings to display any advertisements targeting the Complainant.
Over the years, the Respondent received various unsolicited offers to purchase the disputed domain name. Respondent had previously turned down an offer for € 85,000. Several inquiries were made by eBrand Services who is, according to Respondent, connected to the Complainant, and who offered $10,000 and ultimately $15,000.00 for the domain name. This offer was countered with USD $650,000.00, but the purchaser said that figure was “above her budget”.
Complainant claims that Respondent has no rights or legitimate interests in the disputed domain name because “Respondent only registered the disputed domain name to resell and/or rent it to a third party”. However, the Policy requires that the purpose must specifically be “to sell to Complainant or a competitor of Complainant”, not generally, and there is of course, no evidence of registering the disputed domain name to sell to the Complainant or a competitor of Complainant. Indeed, Complainant effectively admits that this is not the case, when it claims that the purpose was to sell to “a third party”, and not to Complainant.
UDRP Panels have ruled in favor of respondents when it comes to domain names corresponding to three-letter acronyms which are widely used, including by domain name investors. Respondent’s legitimate interest arises from Respondent’s business of investing in descriptive terms, and there is no evidence of any intention to register the disputed domain name because of Complainant or its trademarks.
Lastly, the Complainant makes no clear allegation nor provides any evidence of any use of the disputed domain name for infringing advertising. Respondent’s prior use of the disputed domain name for general advertising was a lawful use of the disputed domain name constituting a legitimate interest.
The Complainant has failed to make any substantive allegations directed at bad faith registration. There is simply no evidence whatsoever of Respondent registering the disputed domain name because of Complainant. All the evidence points to Respondent registering the disputed domain name because of the inherent value in such three-letter acronyms.
The fact that the subject disputed domain name is composed solely of a common a three-letter acronym weighs heavily against a finding of bad faith registration. There is ample evidence of widespread third-party usage, interest and value in the disputed domain name that is wholly unrelated to Complainant. And there is no evidence provided that the Danish valve and fire hydrant manufacturer had any particular fame anywhere, let alone in Turkey where Respondent resides. It is therefore difficult to believe that the value of the disputed domain name has anything to do with Complainant. The considerable widespread usage of AVK by established and new entrants to the marketplace as amply demonstrated herein, makes it impossible to believe that Complainant was the “target” of the registration.
Complainant has not provided any evidence to contradict the fact that AVK is widely used and adopted by numerous existing and new entrants into the market, despite having had two opportunities to do so. It has not furnished any evidence of its reputation. There is not even an express inference in the case at hand – merely the bald allegations that Complainant has trademark rights and that Respondent sells domain names. Complainant has not provided any evidence of reputation whatsoever.
As the owner of an inherently valuable disputed domain name corresponding to a popular and attractive three-letter acronym, Respondent had every right to offer its disputed domain name for sale to the general public. If a registrant has a legitimate interest in a domain name, and indeed if it is in the business of investing in common three-letter acronyms as Respondent is, the registrant is even entitled to offer its business asset for sale at market price and this is not bad faith. An offer to sell a domain name that a party otherwise has rights to, is not bad faith; rather, it is nothing more than a legitimate effort to sell property properly owned by the party. As the lawful registrant, Respondent has the right to convey rights in the disputed domain name for whatever price it deems appropriate regardless of the value that Complainant or an appraiser may ascribe to the domain name.
Moreover, responding to an offer to purchase is not considered bad faith. Respondent did not solicit Complainant, ever. It was the other way around.
It has long been held that speculating in and trading in generic domain names, including acronyms, can be perfectly permissible under the Policy. That is precisely what Respondent was lawfully engaged in and this constitutes good faith use of the disputed domain name. Ultimately all that Complainant proves is that it is one of many who are or could be interested in a common acronym domain name, and that Complainant wants it for itself for free after failing to have its $15,000 offer accepted.
Reverse Domain Name Hijacking
The Panel should make a finding that the Complainant has engaged in Reverse Domain Name Hijacking.
Proceedings must not be commenced in a brash and totally unjustifiable attempt to pressure, bully, or intimidate a domain name owner into releasing a legitimately held domain name, particularly where a complainant is sophisticated and represented by able intellectual property counsel and the domain name corresponds to a common acronym. Complainant has used this procedure (twice) to exert undue pressure on the Respondent to sell its disputed domain name at the price Complainant wants.
Complainant’s only real gripe is the price Respondent demanded for the disputed domain name. Use of the Policy to increase leverage in negotiations to purchase a domain name, “a highly improper purpose,” contradicts the Complainant’s undertaking that “the information contained in this Complaint is to the best of Complainant’s knowledge complete and accurate, that this Complaint is not being presented for any improper purpose, such as to harass”.
Where a complainant has misled the Panel by mischaracterizing its trademark rights as conferring some sort of exclusivity over a common term, along with having made unsupported arguments under the second and third factors of the UDRP Policy, it may be sufficient to show that a complaint was filed in a bad faith attempt to deprive Respondent of a domain name to which it is entitled and Reverse Domain Name Hijacking may be found.
This is a classic “Plan B” case using the Policy after failing in the marketplace to acquire the disputed domain name. Complainant wanted to buy the disputed domain name for $15,000, and it was only after that didn’t work, that it launched this Complaint, and still wants to negotiate the price while Respondent is under pressure of this second meritless UDRP.
Given Complainant’s misconduct in bringing the first Complaint and then forcing the Panel to dismiss it due to Complainant’s willful noncompliance despite several warnings beforehand, and then bringing this second Complaint without even addressing the issues raised by Respondent the first time around, Complainant’s abuse of the procedure is evidence, as is its intent to use the Policy for a collateral purpose.
|