The Panel accepts that the word "voomy" is an adjective from the noun `va-va-voom`, meaning `the quality of being exciting, vigorous, or sexually attractive, originating in the US in the 1950s and representing the sound of a car engine being revved.
The Domain Name is clearly identical and therefore confusingly similar to the Complainant's registered VOOMY trademark, the gTLD ".com" being inconsequential and to be disregarded: Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
The Respondent's unsupported explanation that he has been preparing for some years to use the Domain Name for a private accounting system is hard to reconcile with the Complainant's evidence that the Domain Name was simply offered for sale, together with others, for some years. The Panel prefers the Complainant's evidence in this regard.
The position established on the material before the Panel is that in 2004 the Respondent registered as the Domain Name an adjective formed from an uncommon noun and thereafter used the Domain Name passively for several years by posting on his website a notice that the Domain Name was for sale for US$950. When the Complainant sought to buy it between April and October, 2012, the Respondent greatly increased his asking price, no doubt because he discovered the connection between the Complainant and the VOOMY trademark. Upon these proceedings being brought, the Respondent has put forward an unconvincing submission that he has been engaged for years in preparation to use the Domain Name for an accounting system, a submission not supported by any evidence and contradicted by his proven willingness to sell the Domain Name as recently as 2012.
The question for determination is whether, in these circumstances, the Complainant has established both bad faith registration and bad faith use. The Panel determines that he has not done so.
"A complainant is generally expected to show both the respondent’s knowledge of the relevant mark at the time of registration of the subject domain name (whether actual, constructive, or inferred from circumstances of willful blindness), and the respondent’s intent to target or benefit in some way from inclusion of the complainant’s mark in the subject domain name": China Care Foundation, Inc. v. Choi Yun Gul, WIPO Case No. D2010-1208. See also Validas, LLC v. SMVS Consultancy Private Limited, WIPO Case No. D2009-1413 and the majority opinion in A. Nattermann & Cie. GmbH and Sanofi-aventis v. Watson Pharmaceuticals, Inc., WIPO Case No. D2010-0800.
Here, accepting the Complainant's evidence in its entirety, because the Domain Name was registered in 2004, a little over 2 years before the Complainant first applied to register his VOOMY trademark, and in the absence of any evidence that the Complainant had acquired unregistered trademark rights prior to the registration of the Domain Name, the Panel is unable to find that the Respondent had the Complainant or his VOOMY trademark in mind when the Respondent registered the Domain Name.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of both the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name.
The mere offering of a domain name for sale for more than the out-of pocket costs directly related to the domain name does not constitute evidence of bad faith registration and use within Rule 4(b)(i). That sub-paragraph of the Rule requires a showing that the Respondent registered or acquired the Domain Name primarily for the purpose of selling it to the Complainant or to a competitor of the Complainant for a price exceeding those costs: The World Phone Company (Pty) Ltd v. Telaccount Inc., WIPO case No. D2000-1163. Here, as mentioned, there is no evidence that the Respondent had the Complainant or any competitor of the Complainant in mind when he registered the Domain Name, 2 years before the Complainant applied to register VOOMY as a trademark, so even though the Respondent appears to have registered the Domain Name in order to sell it, there is no basis for a finding that he did so primarily for the purpose of selling it to the Complainant or to a competitor of the Complainant. This leads inescapably to a finding that the Complainant has failed to establish bad faith registration.
The Complainant invokes the principle of “passive use” formulated in Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and followed such cases as SOCIETE GENERALE v. William Hughes, ADR.eu UDRP Case No. 100588, DCI S.A. v. Link Commercial Corp., WIPO Case No. D2000-1232 and Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, WIPO Case No. D2000-1228. In each of those cases, however, the Complainant's trademark rights existed prior to registration of the domain name and the respondent was found likely to have been aware of the trademark at the time of registration. None of those cases provide support for the proposition that passive use can demonstrate both bad faith registration and bad faith use in the circumstances of this case, in which the Respondent cannot have had the Complainant or his yet to be acquired VOOMY trademark in mind when registering the Domain Name.
Accordingly the Panel finds that the Complainant has failed to establish the elements necessary to entitle him to relief.
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