{ "case_number": "CAC-UDRP-102207", "time_of_filling": "2018-10-26 10:05:13", "domain_names": [ "options.events" ], "case_administrator": "Šárka Glasslová (Case admin)", "complainant": [ "PLAINWELL OVERSEAS CORP." ], "complainant_representative": "Ms. Aurélia MARIE (CABINET BEAU DE LOMENIE)", "respondent": [ "NameTrust, LLC" ], "respondent_representative": "The IP & Technology Legal Group, P.C.", "factual_background": "The Complainant is a company incorporated in the British Virgin Islands, Overseas Territory of the United Kingdom, Great Britain and Northern Ireland. The Complainant is active in marketing and promotional activities to offer services connected with the preparation and mise en scène of events and parties. The Complainant states that it enjoys a high degree of recognition in France and elsewhere in the European Union in connection with its events-organization activities. In addition to its trademark rights (as outlined above), the Complainant owns several domain names used in connection with its business, including , , , , and others. The Complainant markets its services via its main website at \"www.options.fr\". \r\nThe Respondent, Name Trust LLC, is a company incorporated in Delaware, United States of America. The Respondent is part of the Donuts Inc. family of companies (\"Donuts\"). Donuts operates as an ICANN-accredited registry for various new generic Top-Level Domains (\"gTLDs\"), including the \".events\" gTLD. \r\nIn 2017, the Respondent acquired BudURL, a link-management platform providing services related to URL link shortening. In June 2018, BudURL was re-launched as BL.INK, which offered a pool of domain names comprising dictionary terms that could be used for the purposes of link shortening. \r\nThe disputed domain name was registered on March 3, 2018. The disputed domain name redirects Internet users to the Respondent's website at \"www.app.bl.ink\/login\/\", which is a login page for users of the Respondent's link-shortening services offered via its domain name . \r\nOn July 17, 2018, the Complainant sent a cease-and-desist letter to the Respondent requesting transfer of the disputed domain name. The Respondent did not reply to the Complainant's letter. \r\n\r\n\r\n", "other_legal_proceedings": "The Panel is not aware of any other pending proceedings or decided legal proceedings which relate to the disputed domain name", "no_response_filed": "PARTIES' CONTENTIONS:\r\n\r\nCOMPLAINANT:\r\n\r\nThe Complainant, in its Complaint submission, asserts the following: \r\nI. The Complainant submits that the disputed domain name is identical to a trademark in which the Complainant has rights. The Complainant provides evidence of its ownership of trademark registrations for OPTIONS in various jurisdictions around the world. The Complainant submits that its trademarks were applied for and registered before the registration of the disputed domain name. Furthermore, the Complainant asserts that its trademarks enjoy a high degree of recognition in France and the European Union in the field of event organization. The Complainant states that it has built its reputation in the OPTIONS name and trademark through its continuous use over nearly 30 years. The Complainant submits that the disputed domain name includes the highly distinctive verbal element of the Complainant's trademarks, OPTIONS, and that its registration under the \".events\" gTLD refers to the Complainant's exact field of business activity. \r\nII. The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant argues that the Respondent cannot justify any prior right on the term “OPTIONS”. In addition, the Complainant did not license, permit or authorize the Respondent to use the “OPTIONS” name in any way whatsoever. According to the Complainant, the registration of the disputed domain name clearly affects the earlier rights held by the Complainant. The Complainant states that it is clear that the registration of the disputed domain name was made illegitimately being aware of the reputation of the earlier trademarks.\r\nIII. The Complainant submits that the Respondent registered the disputed domain name in bad faith. It states that given the reputation and the very high degree of recognition enjoyed by the Complainant's trademarks, the registration of the disputed domain name cannot be the result of chance. The disputed domain name is composed of the term \"options\", which is strictly identical to the Complainant's trademark. The Complainant argues that the Respondent added the letter \"s\" to the word \"option\", although this \"s\" is not necessary. The Complainant argues that this reflects the bad faith willingness of the Respondent to take unfair advantage of the reputation of the Complainant's trademarks. The Complainant asserts that by using the disputed domain name, the Respondent will create confusion with the Complainant's trademarks and domain names, noting that the disputed domain name was registered under the \".events\" gTLD, which refers directly to the Complainant's activities. The Complainant makes reference to paragraph 2 of the Policy, noting that when one registers a domain name, he or she represents and warrants that to his or her knowledge the registration of the domain name will not infringe the rights of others. The Complainant states that when registering the disputed domain name, the Respondent should have checked for the prior trademarks, that is, in the unlikely event that the Respondent was not already aware of the Complainant's rights. The Complainant cites the Respondent's failure to reply to the Complainant's cease-and-desist letter as further evidence of the Respondent's bad faith. \r\n\r\nRESPONDENT:\r\n\r\nThe Respondent requests that the Panel deny the remedies requested by the Complainant. \r\n\r\nI. The Respondent accepts that the Complainant has established rights in its trademark OPTIONS. Noting that the evaluation under the first element would disregard the \".events\" gTLD, the Respondent acknowledges that the disputed domain name is identical, at least in terms of sight and sound, to the Complainant's OPTIONS trademark. Nevertheless, the Respondent submits that a finding for the Complainant on the first element cannot change the ultimate outcome that the Complaint cannot succeed. \r\n\r\nII. The Respondent claims to have rights or legitimate interests in the disputed domain name. First, the Respondent notes that the word \"options\" is a dictionary term, and that when viewed in isolation, the word \"options\" does not convey an association with the Complainant. The Respondent states that the UDRP expressly recognizes the public's rights or legitimate interests in using common dictionary words on the Internet without facing legal proceedings. The Respondent says that the appeal of the word \"options\" as a dictionary term is precisely what led the Respondent to acquire the disputed domain name. The Respondent states that the Complainant has not put forward any meaningful evidence showing an attempt on the part of the Respondent to target the Complainant or to take advantage of its trademark. The Respondent states that it had no affirmative duty to seek permission from the Complainant to register a domain name containing the dictionary term \"options\". The Respondent asserts that the Complainant's unsupported allegations do not suffice to support the Complainant's case, and that the Complainant has failed to make out the second element of the Policy. \r\nIII. The Respondent submits that the Complainant has failed to prove that the disputed domain name was registered or is being used in bad faith. The Respondent asserts that the Complainant has provided no evidence to demonstrate any of the circumstances envisaged by paragraph 4(b) of the Policy, and the Respondent denies having acted in such a manner. Noting the perceived likelihood of confusion on the part of the Complainant, the Respondent examines the factors relevant to determining the existence of a likelihood of confusion, and notes the following: \r\n-\tThe Complainant's OPTIONS trademark makes for a \"weak\" trademark based on a common word with multiple meanings in a variety of contexts. \r\n\r\n-\tThe Complainant cites no incident of actual consumer confusion, nor does it provide evidence of other things that could create a likelihood of confusion, such as mark placement, business sector overlap, similarity of goods and services etc. \r\nBy registering the disputed domain name, the Respondent claims to have acted in accordance with its business plan to promote open Internet access by utilizing generic names through which Internet users can access services to enhance their experience.\r\nThe Respondent denies knowledge of the Complainant, and states that the Complainant cannot assert an argument of bad faith on the basis of constructive notice where the Complainant is not known in the Respondent's location.\r\nThe Respondent denies having received the Complainant's cease-and-desist letter, and denies that its non-response is indicative of the Respondent's bad faith. The Respondent states that is not a cybersquatter, but that it is a link shortening service that leverages generic domain names to provide Internet users with more meaningful ways of communicating online. \r\nIn light of the abovementioned flaws in the Complainant's case, the Respondent requests that the Panel make a finding of Reverse Domain Name Hijacking (\"RDNH\").\r\n\r\n\r\nTHE COMPLAINANT'S SUPPLEMENTAL FILING: \r\nOn December 17, 2018, the Complainant submitted an unsolicited supplemental filing in reply to the Response. To the extent that the supplemental filing contained new argumentation to that already submitted in the Complaint, the Complainant contended as follows: \r\nThe Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The Complainant points to several domain names registered by the Respondent in connection with its link-shortening service, including , , and , arguing that the Respondent is engaged in registering domain names that consist of registered trademarks, and that the Respondent has provided no evidence of its registration of so-called \"generic\" domain names. The Complainant submits that \"options\" in the plural is not \"generic\" and that it has no relevance for the Respondent's link-shortening service. \r\nThe Complainant submits that the Respondent is a professional domainer whose activity consists of registering domain names that are linked with registered trademarks, therefore the Respondent necessarily knew about the Complainant's rights when the disputed domain name was registered. The Complainant submits that domainers have a positive duty to avoid the registration of trademark-abusive domain names, and that the Respondent has not even done the minimum verification to avoid misuse or misappropriation of the Complainant's trademark. \r\nTHE RESPONDENT'S SUPPLEMENTAL FILING:\r\nOn February 11, 2019, the Respondent, having consent from the Panel to do so, submitted a reply to the Complainant's supplemental filing.\r\nWhile not reproduced in full detail here, the Respondent's reply rebuts the Complainant's arguments raised in its supplemental filing. In particular, the Respondent's reply serves to provide evidence of the Respondent's registration of other dictionary terms as domain names for use in connection with its link-shortening services. The Respondent also states that it takes trademark infringement seriously, noting that \"[t]o protect against illegitimate usage, BL.INK has a dispute mechanism of its own to address such problems, as it specifically reserves the right to 'reclaim' names if used to facilitate trademark infringement.\"\r\n", "rights": "The Complainant has, to the satisfaction of the Panel, shown that 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). \r\n", "no_rights_or_legitimate_interests": "The Complainant has not, 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 not, 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 UDRP have been met and there is no other reason why it would be inappropriate to provide a decision.\r\nRegarding the admissibility of the Complainant's unsolicited supplemental filing, the UDRP was designed as a time- and cost-effective means for resolving domain name disputes. The Rules contemplates the submission of one complaint and one response. Paragraph 12 of the Rules provides that the Panel may request, in its sole discretion, further statements or documents from the Parties that it may deem necessary to determine the case, however, there is no express provision for the submission of supplemental filings from either side. Generally speaking, supplemental filings should provide statements to the effect of demonstrating why the information contained therein was unable to be provided at the time of the original complaint or response submission. The Panel notes with some concern that much of the Complainant's supplemental filing consists of rearguing its case, which is likely to be the result of closer examination of reference materials referred to in the Response, and does not necessarily reflect information that was unavailable to the Complainant at the time of filing. Nevertheless, in the interests of fairness, the Panel has determined to accept the Complainant's supplemental filing and has taken note of the contentions therein. The Panel has also carefully considered the statements of the Respondent in reply to the Complainant's supplemental filing. \r\n", "decision": "Rejected", "panelists": [ "Massimo Cimoli, David Taylor, Alexandre Nappey" ], "date_of_panel_decision": "2019-02-22 00:00:00", "informal_english_translation": "The Complainant owns several trademarks for OPTIONS in France, registered since 1984, along with trademarks for the same registered in the European Union, and in several other jurisdictions such as Brazil, Hong Kong, China, the Russian Federation, Singapore, and Switzerland, registered between 2008 and 2011.\r\n\r\nIn particular, the Complainant's trademarks include but are not limited to the following:\r\n\r\n- French trademark OPTIONS S.A. (semi-figurative), No. 1287277, registered on August 1, 1984 and duly renewed since then; \r\n- European Union Trade Mark OPTIONS (word), No. 8970162, registered on March 22, 2010 for services in International Class 41 concerning party planning; rental of stage scenery; rental of event decor and in International Class 43 for rental of equipment for receptions, namely: rental of tents, furniture, rental of chairs, tables, tableware, table linen and glassware;\r\n- European Union Trade Mark OPTIONS (figurative), No. 007375512, registered on June 10, 2009; and \r\n- European Union Trade Mark E-OPTIONS.NET (figurative), No. 010489061, registered on May 11, 2012. \r\n\r\n\r\n", "decision_domains": { "OPTIONS.EVENTS": "REJECTED" }, "panelist": null, "panellists_text": null }