WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Centroamerica Comercial, Sociedad Anonima de Capital Variable (CAMCO) v. Michael Mann

Case No. D2016-1709

1. The Parties

The Complainant is Centroamerica Comercial, Sociedad Anonima de Capital Variable (CAMCO) of Departamento de la Libertad, El Salvador, represented by Rodriguez Azuero Contexto Intelectual, Colombia.

The Respondent is Michael Mann of Rehoboth Beach, Delaware, United States of America (“United States”), represented by Smith Gambrell & Russell LLP, United States.

2. The Domain Name and Registrar

The disputed domain name <dollarcity.com> is registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2016. On August 23, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 23, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 26, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 15, 2016. The Response was filed with the Center on September 15, 2016.

The Center appointed Steven A. Maier as the sole panelist in this matter on September 29, 2016. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant operates a chain of low-cost stores in El Salvador and Guatemala under the name “Dollar City”.

The Complainant is the owner of trademark registrations for a figurative mark incorporating a design and the name DOLLARCITY in green and black lettering. The earliest of these registrations of which the Complainant has submitted evidence is Costa Rica trademark number 213512, registered on November 4, 2011 in Class 35 with a filing date of May 25, 2011. The Complainant is the owner of similar trademarks in Colombia, Chile, Guatemala, Mexico and Peru. It also submits evidence of business name registrations for the name “Dollarcity” in Honduras dated September 20, 2011 and for the name and design described above in El Salvador dated December 7, 2010.

The disputed domain name was registered by a party other than the Respondent on August 30, 2001. It is the Respondent’s evidence that he acquired the disputed domain name on March 19, 2007.

According to evidence submitted by the Complainant by way of screen shots, including those taken from the Internet Archive website, the disputed domain name has resolved at various times to web pages at which the disputed domain name has been offered for sale at various prices, including USD 70,000 in March 2013 and USD 64,888 as at the date of the Complaint.

5. Parties’ Contentions

A. Complainant

The Complainant states that it operates 35 stores in El Salvador and more than 20 in Guatemala and has plans for further expansion in Latin America. It offers customers a range of products including toys, hardware and household items, all priced at under USD 1.

The Complainant submits that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant refers to the trademark and business name registrations referred to above and states that (ignoring the generic Top-Level Domain (“gTLD”) “.com”) the disputed domain name is identical to its DOLLARCITY mark.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Applying the criteria set out in paragraph 4(c) of the Policy, the Respondent has never been known by the disputed domain name, is not making legitimate noncommercial or fair use of the disputed domain name and has not used the disputed domain name in connection with any bona fide offering of goods or services. The Complainant states that the disputed domain name does not resolve to any webpage offering any such goods or services, but merely to a website at “www.domainmarket.com” which is used to retain and sell domain names for exorbitant sums of money, including two (unrelated) domain names priced at USD 1,999,888. The Complainant submits that the Respondent has used the disputed domain name exclusively for this purpose and points to other cases under the UDRP in which the Respondent was found not to have rights or legitimate interests in domain names that were being offered for sale (Tracy Anderson Mind and Body LLC v. Domain Asset Holdings, WIPO Case No. D2013-0699 and Universal Assistance S.A. v. Domain Asset Holdings, LLC, WIPO Case No. D2012-2547).

The Complainant further contends that the Respondent’s use of the disputed domain name cannot be legitimate in view of the Complainant’s own use of its DOLLARCITY mark and brand in multiple jurisdictions in Latin America. The Complainant asserts that the Respondent is preventing the Complainant from reflecting its mark in the disputed domain name and disrupting its business by diverting potential customers away.

The Complainant submits that the disputed domain name has been registered and is being used in bad faith. The Complainant notes the requirement under paragraph 4(a) of the Policy that the disputed domain name must be both registered and used in bad faith, but submits that a finding of retroactive bad faith can be made in circumstances where the domain name was not registered, but has subsequently been used, in bad faith. The Complainant relies on Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc / Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786 and argues that retroactive bad faith is present where a party registers a domain name in good faith, but subsequently uses it in a manner that violates the representations and warranties as to the use of the name that were made at the time of registration. The Complainant also refers to Ville de Paris v. Jeff Walter, WIPO Case No. D2009-1278.

The Complainant further submits that the Respondent registered the disputed domain name primarily for the purpose of selling it to the Complainant or a competitor of the Complainant for a sum in excess of the out-of-pocket costs directly related to the registration (paragraph 4(b)(i) of the Policy). The Complainant repeats its allegations concerning the Respondent’s use of the disputed domain name and submits that it is clear that the disputed domain name was registered with the intention of preventing anyone who had a legitimate interest in it from registering it. The Complainant contends, therefore, that the Respondent registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name and that the Respondent has engaged in a pattern of such conduct (paragraph 4(b)(ii) of the Policy). In particular, the Complainant alleges that the Respondent and his company Domain Asset Holdings are engaged in a “spider web” of registrations and have been the subject of nearly a dozen successful previous complaints under the UDRP.

The Complainant seeks a transfer of the disputed domain name.

B. Respondent

The Respondent denies that the disputed domain name is identical or confusingly similar to the Complainant’s trademark, which comprises a highly stylized logo.

The Respondent submits that the disputed domain name was originally registered on August 30, 2001 and acquired by him on March 19, 2007, the latter event occurring several years before the Complainant’s earliest trademark registration, on November 4, 2011. He adds that the Complainant’s business name registrations should be disregarded, but even the earliest of these is dated some three years after the Respondent acquired the disputed domain name. The Respondent denies having any knowledge of the Complainant’s alleged trademark rights in Latin America and submits that the Complainant has failed to put forward any evidence of why he should be taken to have had such knowledge.

The Respondent states that he is in the business of creating and supplying domain names. He states that the disputed domain name redirects to a page on the website “www.domainmarket.com” which is operated by the Respondent as a secondary marketplace for domain names selling approximately 4,000 domain names per year. The Respondent submits that the disputed domain name has at all times been used to display a sale price for the purchase of the disputed domain name, the means to purchase it and contact details, and that it has never been used to sell competitive goods or services or for the purpose of pay-per-click advertising. The Respondent submits that the buying and selling of domain names that are comprised of common words or phrases may constitute a bona fide offering of goods or services for the purposes of demonstrating rights or legitimate interests under paragraph 4(c)(i) of the Policy (Allocation Network GmbH v. Steve Gregory, WIPO Case No. D2000-0016).

The Respondent denies that the disputed domain name was registered or has been used in bad faith. He states that he acquired the disputed domain name as part of his business of buying and selling domain names comprised of generic and descriptive terms and that he has not engaged in any of the behaviours typically associated with bad faith. In particular, he denies that any of the circumstances set out in paragraph 4(b) of the Policy are present. The Respondent submits that since the disputed domain name was registered many years prior to the Complainant’s use of its trademark, there can be no finding that the Complainant’s trademark was targeted at the date of registration of the disputed domain name and, in particular, it can not have been registered primarily for the purpose of selling it to the Complainant or a competitor of the Complainant for an excessive sum.

The Respondent disputes the Complainant’s reliance on the Octogen case (see above) and states that the majority of subsequent panels have found that decision to be highly fact-specific.

The Respondent denies that the adverse findings in previous UDRP cases relied on by the Complainant amount to a pattern of bad faith registrations and states that these decisions must be viewed in the context of the substantial number of domain names that the Respondent has owned in connection with his businesses.

6. Discussion and Findings

In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that 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 is the owner of trademark registrations in various territories for a (figurative) mark which includes the term DOLLARCITY. The Panel finds that the disputed domain, <dollarcity.com>, is similar to the Complainant’s trademark for the purposes of the test set out under paragraph 4(a)(i) of the Policy. It is not relevant to that test that the trademark in question was registered after the disputed domain name.

Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Panel accepts the Respondent’s evidence that he is in the business of buying and selling domain names and that he has used the disputed domain name exclusively for the purpose of offering the disputed domain name for sale. The Panel finds that the Respondent was not (and could not have been) aware of the Complainant’s trademark at the date he acquired the disputed domain name and that he has not at any time used the disputed domain name to offer goods or services competitive with those of the Complainant, to offer pay-per-click advertising, or in any other manner that has targeted the Complainant’s rights. The disputed domain name comprises a combination of two dictionary terms and the Panel finds the sale of such a domain name to be unobjectionable in circumstances where it does not seek to take unfair advantage of another party’s rights. While the mere registration of such a domain name will not generally give rise to rights or legitimate interests in the name, the Panel finds that the offer of the disputed domain name for sale in accordance with the Respondent’s general business activities does give rise to a legitimate interest in this case (paragraph 4(c)(i) of the Policy). Furthermore, as there is no targeting of the Complainant’s trademark, the price sought by the Respondent is not of relevance. Accordingly, the Complainant has failed to establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The disputed domain name was acquired by the Respondent some four years before the date of the Complainant’s first business name registration and there is no evidence of any earlier use of the DOLLARCITY mark by the Complainant or any predecessor in business. Accordingly, the Panel finds that the disputed domain name was not registered in the knowledge of the Complainant’s trademark. The Panel finds in the circumstances that the disputed domain name was not registered in bad faith.

With regard to the Respondent’s use of the disputed domain name, the Panel repeats its findings that the Respondent was not aware of the Complainant’s trademark when he acquired the disputed domain name and that he has not used it to offer goods or services competitive with those of the Complainant, to offer pay-per-click advertising, or in any other manner that has targeted the Complainant’s rights.

The Complainant submits that the significant price demanded for the disputed domain name is indicative of bad faith and demonstrates that the Respondent acquired the disputed domain name primarily for the purpose of selling it to the Complainant or a competitor of the Complainant, for valuable consideration in excess of his documented out-of-pocket costs (paragraph 4(b)(i) of the Policy). However that cannot be the case where the Respondent was not aware of the Complainant’s trademark at the date he acquired the disputed domain name. The Panel rejects the Complainant’s argument that the Respondent should be deemed to have been targeting any person who might in the future have an interest in registering the disputed domain name.

Nor does any consideration arise of the applicability of the Octogen line of cases in circumstances where there is no finding of use of the disputed domain name in bad faith. In any event, this line of cases has not gained support amongst UDRP panelists. Despite the sentiments expressed by the panel in the Ville de Paris v. Jeff Walter case on which the Complainant relies, the consensus view of WIPO panels¹ remains that:

“Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date… when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right.”

The present Panel does not consider the approach in the Octogen case to be helpful in any event, because even if it is correct that a respondent has breached a warranty by using the domain name, this can not of itself justify the imputation of an intention to do so at the date of its registration. Nor is this a case in which the timing and circumstances around the registration of a domain name are in question (notably also where the domain name in question has been found subsequently to have been used in bad faith) such that this may support an inference of bad faith for the respondent to rebut (see Pixers Ltd. v. Whois Privacy Corp., WIPO Case No. D2015-1171).

Accordingly, the Panel finds that the disputed domain name was neither registered nor is being used in bad faith.

7. Reverse Domain Name Hijacking

Paragraph 15 of the Rules provides as follows:

“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”

The disputed domain name was originally registered and subsequently acquired by the Respondent several years prior to the Complainant’s first use of the DOLLARCITY trademark and can not therefore have been registered for the purposes of paragraph 4(a)(iii) of the Policy with the Complainant’s trademark in mind. Furthermore, the Complainant has provided no evidence that the Respondent has used the disputed domain name in any manner that has targeted or sought to take unfair advantage of the Complainant’s trademark. Accordingly, the Panel is of the view that this Complaint had no reasonable prospect of success and that the Complainant, who is represented by specialist attorneys who appear to have specific expertise in this area, knew or ought to have known that this was the case. The Panel therefore concludes that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

8. Decision

For the foregoing reasons the Complaint is denied. The Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

Steven A. Maier
Sole Panelist
Date: October 3, 2016

¹ See paragraph 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”),