On-line ADR Center of the Czech Arbitration Court (CAC)

Panel Decision

§ 15 of the UDRP Rules (Rules), § 9 of the CAC’s Supplemental Rules (Supplemental Rules)

Case No. 103801
Time of Filing 2021-05-12 10:42:59
Disputed domain name PAULMARIUS.COM
Case Administrator
Name Iveta Špiclová
Complainant
Organization FPPM INTERNATIONAL / FLORENT POIRIER
Authorized Representative
Organization NAMESHIELD S.A.S.
Respondent
Organization Above Privacy/Mira Holdings, Inc
Authorized Representative
Name Mr. Howard Neu
Other Legal Proceedings
The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.
Identification of rights
The Complainant owns two trademarks for PAUL MARIUS, the French trademark n° 3805739, registered on February 11, 2011, and the European Trademark 015569809, registered on October 10, 2016 in classes 14, 18, 20, 25, 35, 38, 45 for inter alia clothing, leather and bags.
Factual Background
The Complainant is a French company with numerous boutiques in France and Belgium active since 2010 in selling leather articles, in particular bags.

The disputed domain name <paulmarius.com> was initially registered by the Complainant on February 13, 2018, but the registration was allowed to lapse whereupon it was offered to the general public. Respondent obtained the disputed domain name in a domain name auction through Dropcatch.com on May 16, 2019. The record contains two versions of the website under the disputed domain name, both resolving to a parking page with commercial links: a French version was submitted by Complainant and an English version was submitted by Respondent. The French version shows links to commercial activities not connected to the Complainant, as well as links for fashionable clothing such as bikinis. Both versions indicate that the domain name may be for sale. The Panel notes that Complainant is at the top of the Google search in both the French and English versions.
 
PARTIES' CONTENTIONS:

COMPLAINANT:

The Complainant contends that the Respondent is neither affiliated with nor authorized by the Complainant in any way. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant does not carry out any activity for, nor has any business with, the Respondent.

Neither a license nor any authorization has been granted to the Respondent to make any use of the Complainant’s trademark PAUL MARIUS or apply for registration of the disputed domain name.

The disputed domain name is offered for sale. Under the UDRP an offer to sell a disputed domain name that is identical to Complainant’s trademark may demonstrate a lack of rights and legitimate interests in a disputed domain name.

Given the distinctiveness of the Complainant's trademarks and its reputation, it is reasonable to infer that the Respondent has registered and is using the domain name with full knowledge of the Complainant's trademark.

The disputed domain name resolves to a parking page with commercial links. The Complainant contends the Respondent has attempted to attract Internet users for commercial gain to his own website thanks to the reputation of Complainant’s trademark, which is evidence of bad faith.

Under the UDRP, offering a disputed domain name for sale to the public or to a respondent, along with an offer being made immediately after a domain name’s registration has lapsed, may demonstrate bad faith registration and/or use, if Respondent registered the disputed domain name with the intent of selling it to Complainant or a competitor. The Panel notes that Complainant has waited almost two years to reclaim <paulmarius.com>. It also notes that the EUIPO database lists Complainant as the sole trademark owner of PAUL MARIUS.

On this basis, the Complainant concludes that the Respondent has registered and is using the disputed domain name in bad faith.


RESPONDENT:

Respondent, a United States company, claims that its registration and use in no way infringes upon Complainant's PAUL MARIUS trademark.

Respondent contends that the disputed domain name <paulmarius.com> is a generic “First Name – Last Name” domain that has a multitude of potential uses. As a professional domain investor, Respondent has invested in over 1,000 generic domain names with a substantial number of “First Name – Last Name” domains including <paulmarius.com>, which with other “First Name – Last Name” domains have a substantial economic value. A search of LinkedIn.com shows more than 20 professionals with the name Paul Marius.

The domain has been "parked" at a professional monetizer since acquisition and is offered for sale as are thousands of other domain names. Respondent has allegedly received emails from other parties to purchase the disputed domain name, one of them allegedly from a Paul Simon Marius.

Respondent was involved in a number of UDRP actions in the past. However, he has prevailed in holdings in his favor for the domain names <uovo.com>, <ymobile.com>, <hemper.com> and <icrm.com>. Respondent does not report on any UDRP claims that he has lost.
Rights
The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).
No rights or legitimate interests
The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).
Bad faith
The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).
Procedural Factors
The Panel is satisfied that all procedural requirements under the UDRP have been met and there is no other reason why it would be inappropriate to provide a decision. Panel exercises its discretion in accordance with Art. 10 (d) of the Rules to allow both Complainant´s additional statement, as well as Respondent´s response to it.
Principal Reasons for the Decision
In order to succeed in its claim, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(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 with respect to the disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.


A. Identical or Confusingly Similar

The Complainant has established that it has valid trademark rights for PAUL MARIUS in several classes. The disputed domain name is identical to the trademark, since it is acknowledged that the generic Top-Level Domain (“gTLD”) does not have relevance in assessing whether the subject domain name is identical or confusingly similar to a trademark.
The Panel therefore considers the disputed domain name to be identical to the PAUL MARIUS trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.


B. Rights or Legitimate Interests

Paragraph 4(a)(ii) requires a complainant to establish a prima facie case that respondent lacks rights or legitimate interests in the subject domain name, and if it does so, the burden shifts to respondent to rebut complainant’s contentions.

For its prima facie case Complainant alleges facts that Respondent does not deny. It was not authorized to register <paulmarius.com> and it has not been commonly known by that name.

Complainant also contends that Respondent “is not making a legitimate non-commercial or fair use of the domain name and that its “intent [is] for commercial gain to misleadingly divert consumers or to tarnish the trademark . . . at issue.”


There is no dispute that Complainant is actively engaged in commerce with many boutiques in France and Belgium offering its special brand of merchandise. The Google searches attest to its market presence and its line of goods. Thus, Complainant’s prima facie evidence is sufficient to shift the burden to Respondent to demonstrate that it does have rights or legitimate interests in <paulmarius.com>.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:

“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”


As a general proposition, a complainant’s failure to renew its registration cannot affect good faith acquisition of a dropped domain name. However, this does not end the assessment. Respondent contends that it acquired the domain name for its value as a generic term and that it has other similar first and last name domain names. It asserts that its right and legitimate interest is based on being the highest bidder in a Catchdrop.com auction for the domain name after it was allowed to lapse.

Respondent rests its right and legitimate interest on the fact that it is a professional investor who saw an opportunity to acquire what it describes as a generic first name / last name domain name, which would support a paragraph 4(c)(i) right or legitimate interest. As such, it neither needs Complainant permission nor does it have to show that it was commonly known by the name.

It also contends that the term “Paul Marius” is generic. In this, it presumes that personal names are generic simply by being personal names, but this is only correct absent proof to the contrary, which may include evidence of distinctiveness and long-term use in commerce. It further contends that it has registered and sold other first name / last name domain names that are “comparable” to <paulmarius.com>. However, the Panel disagrees that <AnthonyMarc.com>, <JohnPeter.com>, and <PaulXavier.com> are comparable to <PaulMarius.com> in that Complainant has established its distinctiveness through a long-term use in commerce. It may very well be that the “comparables” are generic, but it does not follow that “Paul Marius” is also generic.

Indeed, Complainant’s ownership of PAUL MARIUS is unquestioned because, if for no other reason, there are no other PAUL MARIUS trademark owners and Respondent has offered no rebuttal to the contrary. The Panel concludes that Complainant is one of a kind.

Ordinarily, generic terms are easy to recognize. Indeed, Respondent draws the Panel’s attention to a number of UDRP decisions involving generic terms consisting of dictionary words, acronyms, and common expressions. These cases are distinguishable from the case here involving <paulmarius.com> in that none of them exhibit the distinctiveness of Complainant’s mark, and as generic terms they might therefore support a right or legitimate interest.

The question that must be answered under paragraph 4(a)(ii) is whether, given the totality of facts in issue in this case, Respondent has succeeded in rebutting Complainant’s prima facie case. The Panel concludes that it has not.

Accordingly, the Complainant has, to the satisfaction of the Panel, shown the Respondent lacks rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).


C. Registered and Used in Bad Faith

The Policy, paragraph 4(b) provides that for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owners of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or

(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.

Complainant’s bad faith argument relies on factors 4(b)(i) and 4(b)(iv). Complainant does not explain why it waited almost two years to reclaim a lapsed registration. As a general proposition, any uncertainty in the distinctiveness of a mark where complainant fails to renew the registration of its domain name favors a respondent, who can plausibly deny any prior actual knowledge of complainant.

However, in the panel’s view, where a respondent acquires a domain name lapsed or otherwise corresponding to a trademark that has become distinctive of a complainant’s brand, and where the Complainant is the sole owner of that mark as it is here, a defense that respondent purchased the domain name without knowledge of complainant’s mark, ceases to be persuasive. This is particularly so since, as earlier noted, Complainant tops the Google searches in both versions for “Paul Marius” and Respondent is admittedly a professional domainer.

Respondent also informs the Panel that it operates in the United States and that Complainant has no registered trademark in this jurisdiction. On this latter point, it should not be forgotten that the UDRP protects trademark owners in every jurisdiction regardless of the location of the respondent. As is demonstrated from the Google searches, the Internet reaches into every national jurisdiction. Thus, while lack of actual knowledge is certainly a factor for consideration, it cannot be conclusive under all circumstances where awareness can be inferred from Complainant’s prominence in Google searches and on social media platforms.

The fact that Complainant operates its business in France and Belgium and Respondent operates its business in the United States does not limit Complainant’s rights where the proof supports bad faith registration and use.

The facts in this case are similar to those in Aubert International SAS and Aubert France SA v. Tucows.com Co., WIPO Case No D2008-1986 (WIPO March 17, 2009). The majority concluded “[there] may be cases where the bad faith use in question is merely fleeting and so minor and incidental in comparison to the ordinary use of the domain name that it would be wrong to hold the registrant responsible. But that is not the case here. Pay per click advertising was apparently as much part of the Respondent's business model as the provision of vanity email and associated web services.” Where a dropped domain name corresponding identically to a distinctive trademark is advertising that it is available for sale in a complainant’s jurisdiction, which is the case here, the assessment must also take this factor into account in determining the issue of bad faith registration and use.

Respondent points out that there are 20 professional Paul Marius’ listed on LinkedIn. The Panel does not find this persuasive either. Even though there could conceivably be a Paul Marius who may be interested in purchasing a domain name corresponding to his given name, there is only the Complainant who owns a trademark for that symbol.

One indicator of genericness is that the mark is actually used by many other users, as appears in the cases Respondent cites. This is not the case here. In fact, Complainant is the sole registrant of PAUL MARIUS. See SIX Group AG v. Xedoc Holding SA, WIPO Case No. D2012-1548 (WIPO October 11, 2012) (Involving the three letter string “six.” “[T]here is extensive third party use of the term ‘six’, both as trade marks and as domain names, and that it cannot by any stretch of the imagination be considered famous or exclusively associated with the Complainant.”).

The onus of proof rests with the complainant to establish bad faith registration and use, but where the disputed domain name is identical to a distinctive mark and a Google search brings up Complainant at the top of the first page, it is not sufficient to simply deny actual knowledge where there is awareness of a complainant’s market presence. This is particularly so where the trademark is distinctive, as is the case here, and not generic, and where the Respondent is a professional domainer. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.2.3 (“Panels have held that especially domainers undertaking bulk purchases or automated registrations have an affirmative obligation to avoid the registration of trademark-abusive domain names. Panelists will look to the facts of the case to determine whether such respondent has undertaken good faith efforts to screen such registrations against readily-available online databases to avoid the registration of trademark-abusive domain names.”).

Furthermore, by using the disputed domain name for a parking website (French version) that provides links to third party websites where inter alia fashion products are advertised, it is obvious to this Panel that Respondent registered the disputed domain name primarily with the intention of attempting to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of such website or location, or of a product or service on such website or location.

Where a likelihood of confusion exists by reason of the distinctiveness of a mark, it is not necessary to advertise or offer identical goods or services to those actually offered by the Complainant, although one of the links on the French site is to a website that sells beach wear, bikinis and pajamas products. However, this is incidental. A domain name does not have to resolve to an active website to prove bad faith registration and use, although when it does resolve to an active website, it draws attention to the trademark owner and implicates paragraph 4(b)(iv) of the Policy.

The Panel finds that PAUL MARIUS is not generic, but rather specific to Complainant as the only registered user of the mark. Whether a trademark is registered only in a particular country is not conclusive, especially when a mark is highly distinctive and in view of the Internet’s borderless nature. See Heraeus Kulzer GmbH v. Whois Privacy Services Pty Ltd / Stanley Pace, WIPO Case No. D2016-0245 (WIPO May 2, 2016) (“Considering the totality of circumstances in the present case, the Panel has come to the conclusion that the Respondent’s assertions including his denial as to any knowledge of the Complainant at date of his acquisition of the Domain Name are not sufficiently substantiated.“).

The Panel therefore considers the disputed domain name to have been registered and used in bad faith in accordance with paragraph 4(a)(iii) of the Policy.
Decision
For all the reasons stated above, the Complaint is Accepted
and the disputed domain name(s) is (are) to be
PAULMARIUS.COM Transferred to Complainant
Panellists
Name Gerald M. Levine, Ph.D, Esq. , Christopher S. Gibson , Dietrich Beier
Date of Panel Decision 2021-07-09
Publication of the Decision
Publish the Decision