The Complainant is Yara International ASA, Oslo, Norway, represented by Valea AB, Sweden.
The Respondent is undefined, Domain Admin, Mrs. Jello LLC, New Jersey, United States of America, represented by ESQwire.com Law Firm, United States.
The disputed domain name <yara.tv> (“the Domain Name”) is registered with eNom, Inc. (“the Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2008. On December 3, 2008, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the Domain Name. On December 3, 2008, eNom, Inc. transmitted by email to the Center its verification response disclosing registrant information for the Domain Name which differed from the Respondent as named in the Complaint, in that the name of the registrant for the Domain Name identified in the WhoIs database for the “.tv” (Tuvalu) country-code top level domain is “undefined” of first name “Domain” and last name “Admin” and it is only in the administrative and contact details that “Mrs Jello LLC” is identified. The Center sent an email communication to the Complainant on December 10, 2008, providing the registrant information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 11, 2008. The Center verified that the Complaint together with the amendment to 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced December 11, 2008. In accordance with the Rules, paragraph 5(d), the due date for Response was extended by agreement between the parties to January 12, 2009. The Response was filed with the Center January 12, 2009.
The Center appointed William P. Knight, Knud Wallberg and David E. Sorkin as panelists in this matter on February 3, 2009. The Panel finds that it was properly constituted. Each member of the Panel has submitted a Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant and its predecessors have been in business since 1905, when it commenced the production of the world's first nitrogen fertilizer “Norgessalpeter” (or Norwegian saltpeter – calcium nitrate) at a test facility in Notodden, Norway. In March 2004, the Complainant was formed as a subsidiary subsequently listed on the Oslo Stock Exchange. The Complainant is now an international company with production and distribution operations in many countries around the world.
The name “Yara” is a fabricated name derived from Germanic-Scandinavian roots signifying the earth. The Complainant's name is now a trademark registered or the subject of applications for registration in more than 50 countries, both as a word on its own and as part of a device including a stylized Viking ship, including the Community Trademark Registration Nos. 3631066 and 3666187, United States Trademark Applications Nos. 76574657 and 76587836, filed in 2004 and published for opposition in 2007 and is included in over 200 domain names including “www.yara.com”, mostly held by the Complainant and some held by its related company Yara Industrial AS.
The Respondent registered the Domain Name on May 2, 2006, from which time it has been used to display a simple “parking” web-page designed to attract click-through revenue to adult content and dating websites. The Respondent is in the business of acquiring domain names and the subsequent exploitation of those domain names by means of click-through revenues and, if possible, sale at a profit. The Respondent does not deny that it has a very large number of domain names. In Gigglesworld Corporation v. Mrs Jello, WIPO Case No. D2007-1189 it was said that the Respondent had acquired approximately 30,000 domain names and in A.V.M Software, Inc., d/b/a Paltalk v. Papete.com and Igal Lichtman a/k/a Mrs. Jello LLC a/k/a Exoticdomains.net a/k/a domainsspa.com, WIPO Case No. D2005-0917 it was said that the Respondent has registered over 6,000 domain names using one or more aliases.
It is common ground that the word “Yara” may have other significations in other languages: the Complainant notes it is the name of a figure in Brazilian indigenous mythology, the name of a genus of beetle and the name of a small town in Cuba; the Respondent notes that it is woman's first name and the name of an organization (“Yara online magazine”).
When the Complainant's representative sent an email to the Respondent prior to the filing of the Complaint inquiring as to purchase of the Domain Name, the representative not identifying his client, the Respondent replied offering to sell it for USD25,000. The Complainant offered USD800, which the Respondent refused.
The Respondent does not dispute that the Complainant has sufficient trademark rights to bring its Complaint and that the Domain Name is identical or confusingly similar to the Complainant's trademark.
The Complainant asserts that, in the period of over 2 years since the Domain Name was registered, at no time has the Respondent used the Domain Name in connection with a bona fide offering of goods or services, that there is no indication that the Respondent is or has been commonly known by the Domain Name, and that the Respondent has not made and is not making any legitimate noncommercial or fair use of the Domain Name, i.e., as illustrated in the examples of rights or legitimate interests in the Domain Name provided in Paragraph 4(c) of the Policy. Rather, the Complainant argues, the Respondent's actual use of the Domain Name is to provide pay-per-click links to websites unrelated to the Respondent of a sexual nature, without any more substantial connection demonstrating a legitimate interest, is not to be regarded as a bona fide offering of goods or services.
The Complainant states that, as the relevant trademark owner, it has not licensed the Respondent to use the Domain Name.
Whilst the Complainant acknowledges the other uses and meanings which the word “Yara” may have, it argues that the actual use of the Domain Name by the Respondent has nothing to do with any of those meanings, that is, that there is no descriptive relationship or association between the Domain Name and the “grab-bag” of links to sexual content on third party websites for which the Respondent's website under the Domain Name is used.
The Complainant argues that the Respondent cannot claim to be ignorant of the Complainant and its rights in its trademark. The Complainant says its trademark is well-known around the world in its field. Furthermore, the Complainant says that even the most cursory search on search engines like Yahoo! and Google, the trademark registers of almost 50 countries and the word YARA in conjunction with other TLDs and ccTLDs would have shown the trademark rights of the Complainant in the word YARA. The Complainant further argues that the business of the Respondent as a dealer in domain names, its past conduct in registering other domain names identical to the trademarks and trading names of others and the connection of the Domain Name to pornographic and other sexual content raises “an overwhelming presumption” of registration and use of the Domain Name in bad faith in this case.
Finally, as further evidence of the Respondent's registration and use of the Domain Name in bad faith, the Complainant argues that the Respondent is in breach of the Registrar's Registration Agreement by its identification of the registrant of the Domain Name as “undefined, Domain Admin”.
The Respondent alleges that the word “Yara” is primarily a common woman's name and that it was for this reason it was chosen by the Respondent. The Respondent points out that it has registered 71 domain names incorporating common first names for women, including <ashlee.tv>, <adina.tv>, <jenni.tv>, <judith.tv>, <monica.tv>, <kari.tv>, <selina.tv>, <tova.tv> and <yvonne.tv>, with each of which it uses exactly the same web page as may be found under the Domain Name. This is because, the Respondent alleges, it believes that such names are the best names to associate with adult content.
In support of the claim that Yara is a common name, not just a woman's name, used by many third parties, the Respondent invites the Panel to carry out a search for “Yara”, excluding “yara.com”, “fertilizer”, on Google, and says that this results in 6.4 million results unrelated to the Complainant, but a Google search for “Yara fertilizer” yields only 31,000 results relating to the Complainant.
As a result, the Respondent says that it is as entitled to use the name “Yara” as anyone else; the Complainant has no exclusive right to it.
The Respondent further answers the Complainant's arguments concerning its trademark by saying that there is no reason why the Respondent, an entity based in Livingston, New Jersey, should be aware of a Norwegian fertilizer company. As for the Complainant's trademark registrations and applications, the Respondent points out that, not only are the United States filings merely applications at this time, based on “intent to use”, in neither has the Complainant filed a Statement of Use, a necessary precursor to any exercise by the Complainant of its rights arising from registration in due course.
Further, the Respondent has supplied a Declaration by its managing partner, Mr. Igal Lichtman, which avers that he registered the Domain Name solely because of its significance as a woman's first name and was at that time ignorant of the existence of the Complainant and its trademark rights. The Respondent says that there is insufficient evidence in the Complaint to support a conclusion of registration and use in bad faith.
The Respondent says that the facts that it owns numerous domain names and its use of the Domain Name, like many others, to provide links to adult content cannot be used to support the proposition that it is using the Domain Name in bad faith. Likewise, the Respondent says, nothing can be drawn from its offer to sell the Domain Name, as there is nothing inherently wrong in responding with a price for the Domain Name to a person who writes to the Respondent asking for it.
Finally, the Respondent alleges that the Complaint is so lacking in merit that a finding of Reverse Domain Name Hijacking is warranted.
Paragraph 4(a) of the Policy requires the Complainant to prove that:
(i) the 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 in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the UDRP. Clearly, the most difficult of these to prove is the third, registration and use in bad faith, since it is virtually impossible for a complainant to establish the state of mind or intentions of an unknown and remote registrant – even more so one that does not clearly identify itself. Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:
(i) circumstances indicating that the Respondent has registered or has acquired the domain names 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 the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain names;
(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;
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor;
(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondent's 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 website or location or of a product or service on the website or location.
These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith; see Telstra Corporation Limited v. Nuclear Marshmallows WIPO Case No. D2000-0003. Each of these is still problematic for a complainant as each requires proof of some purpose or intention, easily denied by a respondent, and rarely capable of being demonstrated by any direct evidence, as the vast majority of decisions under the UDRP has demonstrated.
Paragraph 15(a) of the Rules requires the Panel to:
“decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable.”
However, it is permissible for the Panel to inform itself of matters of public record, readily available from the Internet, for example, if that assists in resolving an issue; see Société des Produits Nestlé SA v. Website in Development, WIPO Case No. D2000-1490; Maruti Udyog Ltd. v. maruti.com, WIPO Case No. D2003-0073; AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527.
The Respondent rightly does not dispute that the Complainant has sufficient rights in the trademark YARA for the purposes of this proceeding nor that the Domain Name is identical or confusingly similar to that trademark, and the Panel so finds.
Paragraph 4(c) of the Policy sets out circumstances, in particular but without limitation, which, if found by the Panel to be proved by the Respondent, demonstrate the Respondent's rights or legitimate interests to the domain name for the purposes of paragraph 4(a)(ii). They are:
(i) before any notice to the respondent of the dispute, its 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent had acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial 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.
It is well established that, provided that the Complainant presents evidence sufficient to justify a reasonable prima facie conclusion that the Respondent has no apparent rights or legitimate interest in the Domain Name, the evidentiary burden falls on the Respondent to justify its selection and use of the Domain Name based upon such rights or legitimate interest; see the Center's online document: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1, which provides:
“A Complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
The ultimate burden of proof remains upon the Complainant, but the burden of production shifts to the Respondent to come forward with evidence of its rights or legitimate interests; see Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624. As the panel observed in Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384, this burden is not discharged by the provision of mere personal assertions and denials, which are easy to make and difficult for a complainant to disprove but rather “Evidence in the form of documents or third party declarations should be furnished in support of such assertions;” Do The Hustle, LLC, supra.
In this case, it is undeniable and the Respondent has not disputed that the Domain Name is identical to the Complainant's YARA trademark and that the Complainant has not authorized the Respondent to use the trademark.
Based upon the evidence presented in the Complaint alone, it would appear equally undeniable that the Respondent has no apparent connection with the Domain Name. The Respondent does not appear to be commonly known by the Domain Name, nor does it appear that any business operated by it does so, and it is plain that the Respondent is not making any noncommercial or fair use of the Domain Name without intent for commercial gain. This is sufficient to establish a prima facie case that the Respondent has no right or legitimate interest in the Domain Name. It is therefore up to the Respondent to establish that it has such a right or legitimate interest.
To this end, the Respondent says that the word “Yara” is a common first name and that, like a descriptive or generic dictionary word, anyone can register such a domain name and the Respondent further says that its pay-per-click parking page demonstrates that it was using the Domain Name in connection with a bona fide offering of goods or services before it received notice of the present dispute (paragraph 4(c)(i) of the Policy), or that it has some other basis for claiming a right or legitimate interest in the Domain Name.
First, it must be said, it is not a part of the Complainant's argument that it alone, in all the world, has exclusive rights to use the word “Yara”. There are many people who, now or in the future, may legitimately use the word “Yara”, be it as their personal name or the name of a place or of an organization, provided that they do not infringe the Complainant's trademark rights or otherwise do so contrary to law or, so far as concerns domain names, in bad faith within the meaning of the Policy. The fact that many people may do so does not in any way render legitimate the Respondent's use of the Domain Name the Respondent must justify its use of the Domain Name by some right or legitimate interest of its own.
On the other hand, there is nothing inherently illegitimate in the Respondent acquiring numerous domain names in its business nor in its use of domain names for the purpose of linking to adult content, or otherwise. Again, the issue under this part of the Policy is whether, in doing so, it is demonstrating a right or legitimate interest in the Domain Name.
In respect of the Respondent's claim under paragraph 4(c)(i) of the Policy, the Panel is of the view that the presentation of a pay-per-click parking page as exists in this case cannot be regarded as a “a bona fide offering of goods or services” within the scope of paragraph 4(c)(i) of the Policy, which seems to contemplate a bona fide offering of goods and services by the Respondent, rather than simply parking the domain where the Respondent or a third party can generate click-through advertising revenues from possibly unrelated third parties advertising their own goods and services. See in that respect: Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; Gerber Products Co. v. LaPorte Holdings, WIPO Case No. D2005-1277; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964.
The examples of a right or legitimate interest which may be demonstrated by a respondent given by Paragraph 4(c) of the Policy are not expressed to be exhaustive. It is the Respondent's contention that a legitimate interest arises to its benefit because Yara is common as a first name of a woman, and that it is common for Internet users to equate the use of a woman's name with adult content, and indeed the Respondent has acquired a number of domain names comprising women's first names and uses them all in the same way.
The Panel acknowledges that, in cases involving dictionary words, or generic terms, there are decisions, including those cited by the Respondent, that find a legitimate interest in the required sense on the part of a Respondent registering or acquiring the domain name based upon them for that reason. However, the trend of these cases as this Panel sees it has generally been that the successful respondent's actual use of the disputed domain name must demonstrate a connection with the dictionary or generic meaning; see, for example, Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448 and Terroni Inc. v. Gioacchino Zerbo, WIPO Case No. D2008-0666.
The Respondent goes further to say that the same principle should apply to a common first name, and relies upon a number of prior decisions, including Etam, plc v. Alberta Hot Rods, WIPO Case No. D2000-1654; Rusconi Editore S.p.A. v. FreeView Publishing, Inc, WIPO Case No. D2001-0875; and Lana Sociedad Cooperativa Ltda v. Alberta Hot Rods, WIPO Case No. D2005-1200. Unfortunately, the Etam decision does not provide very detailed information regarding the use being made by the respondent in that case of the domain name at issue, <tammy.com>, but it is clear that the domain name in that case was being directed to a single adult website. In the Rusconi decision, the domain name at issue, <donna.com>, was chosen by the registrant for the same reason it was chosen as a trademark by the complainant, namely that it has a well-known meaning of “woman” in Italian and is an English first name. More significantly, it was chosen by the registrant and subsequently acquired by the respondent in order to develop a website concerning the interests of women, the respondent being in the business of developing and “incubating” themed websites. In passing, it is noted that there was no suggestion in that case that a website using a woman's name would indicate a site containing adult material. In the Lana decision, unfortunately again we have little information regarding the nature of the link to pornographic material being made by the respondent's website using the disputed domain name. However, a distinction from this case is that the complainant did not argue that its trademark was famous or well-known and, indeed, it had no trademark rights in Canada at all, where the respondent was located. Furthermore, the panel in that case made a finding of reverse domain name hijacking, although acknowledging that the selection of a common personal name for a woman could be legitimate.
In this case, there does not appear to be an obvious connection between name “Yara” and the use which the Respondent is in fact making of the Domain Name. Rather, as the Complainant points out, the Respondent's webpage appears to be a “grab-bag” of pay-per-click links to third party websites. Notwithstanding the comments of the panels in the Etam and Lana decisions, the tenuous link that is alleged to exist in the public mind between a woman's first name and adult content websites seems too feeble to amount to a “right or legitimate interest” in a specific name. Furthermore, the Panel does not accept that the name Yara for a woman is common at all in the way that, say, Tammy, Donna, and Lana may be. It may be a more common name in Brazil or Portugal, for example, but there is nothing in the Respondent's actual use of the Domain Name that indicates an appeal to Internet users in those countries in particular, or any use that would relate to any particular person or meaning.
Having carefully considered the Respondent's submissions, the Panel concludes that the Respondent has not discharged the burden upon it in this case to establish that it has been using the Domain Name in connection with a bona fide offering of goods or services or has some other right or legitimate interest in the Domain Name.
Arguing by analogy with the cases concerning dictionary word or generic term domain names, the Respondent says that the Complainant must in this case establish by direct proof that the Domain Name was registered solely for the purpose of profiting from the Complainant's trademark rights.
The Respondent's proposition is, in our respectful opinion, an overly simplistic conclusion. As was stated in the Grundfos decision, “it may be appropriate to draw an inference of targeting in cases where the complainant's mark is either inherently distinctive, famous, or well known, but … no such inference will normally be appropriate in other cases where there is no evidence of the respondent being aware of the complainant's trademark rights at the time of registration” (citing Terana, S.A. v. RareNames, WebReg, WIPO Case No. D2007-0489). “However”, as the panel in Grundfos continues, “those who register domain names, and particularly those who register domain names in large numbers using automated programs and processes, are not allowed to simply turn a blind eye to the possibility that the names they are registering will infringe or violate the rights of trademark owners. That responsibility derives from paragraph 2 of the Policy, and in particular the words: “It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights”. Further, the same decision continues:
“A number of Panel decisions have now addressed the application of Paragraph 2 in the context of professional domainers registering large numbers of domain names for the purposes of sale or pay-per-click advertising. It seems to the Panel that the developing consensus is that the domainer must make reasonable good faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others. In Mobile Communication Service Inc v. WebReg, RN, WIPO Case No. D2005-1304, the Panel was dealing with a case where the Respondent registered large numbers of domain names for resale, using automated programs which snapped up domain names as they became available. The Panel found that the Respondent was not entitled to shield its conduct by closing its eyes to whether the domain names it was registering were identical or confusingly similar to a third party's trade marks. If such a domainer paid no attention whatsoever to whether its registrations might be identical to third party trade marks, the domainer's practice might well support a finding that it has been engaged in a pattern of conduct that deprives trademark owners of the ability to register domain names reflecting their marks.
“In the later case of Media General Communications Inc v. RareNames WebReg, WIPO Case No. D2006-0964, the Panel again considered large scale registration of domain names for the purpose of reselling/advertising links. The Panel noted that such practices would most likely be regarded as legitimate in the following circumstances:
(i) Where the Respondent regularly engages in the business of registering and reselling domain names, and/or using them to display advertising links;
(ii) The Respondent makes good faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others;
(iii) The domain name in question is a dictionary word or a generic or descriptive phrase;
(iv) The domain name is not identical or confusingly similar to a famous or distinctive trademark; and
(v) There is no evidence that the Respondent had actual knowledge of the Complainant's mark.
“The Panel notes that the test proposed by the Panel in the Media General Communications, Inc. case has been adopted and applied by subsequent Panels – see, for example, the recent case of Gigglesworld Corporation v. Mrs. Jello, WIPO Case No. D2007-1189, Shangri-la International Hotel Management Limited v. Net Income Ventures Inc., WIPO Case No. D2006-1315, and Starwood Hotels and Resorts Worldwide, Inc. [Starwood Hotels and Resorts Worldwide, Inc., Sheraton LLC and Sheraton International Inc., v. Jake Porter, WIPO Case No. D2007-1254].
“In the latter case, the Panel referred to the obligations on registrants contained in paragraph 2 of the Policy, and said:
“‘This provision has not been read as routinely requiring registrants to conduct a trade mark search. But it does suggest that the Respondent has some obligation when registering an uncommon name for potential resale and using it to generate revenue from third-party advertising, to avoid a likelihood of confusion with the trade marks of others. This possibility would have been revealed with a simple search engine query, as the leading results on the most popular search engines highlight the Complainant's St Regis properties.'
“If anything, the very experienced three-member Panel in the mVisible Technologies Inc. case [mVisible Technologies Inc. v. Navigation Catalyst Systems, Inc, WIPO Case No. D2007-1141] adopted an even stronger position on the obligations of professional domainers in the discharge of their obligations under paragraph 2 of the Policy. The Panel in that case said:
“Although there may be no obligation that a domain name registrant conduct trade mark or search engine searches to determine whether a domain name may infringe trade mark rights, a sophisticated domainer who regularly registers domain names for use as [pay-per-click] landing pages cannot be willfully blind to whether a particular domain may violate trade mark rights. In this context, a failure to conduct adequate searching may give rise to an inference of knowledge.'
“And further, an even more thorough search would also include search engine searches to see what new websites may exist that use a name identical or confusingly similar to the domain name at issue even in the absence of a trade mark application or registration. Similarly, Yahoo! and Google offer highly effective search engines to determine the most relevant references on the Internet in response to a particular search term Searching of this kind is particularly appropriate for companies that operate [pay-per-click] landing pages In this context, registrants that run [pay-per-click] landing page businesses cannot be willfully blind to whether domain names they register are similar to trademarks and are pulling up [pay-per-click] advertising related to those trademark rights. It is reasonable to infer, based upon the circumstantial evidence available, that Respondent, a sophisticated party in the [pay-per-click] landing page business, must have been aware of the relevant trademark'.”
This Panel adopts the observations of the panel in the Grundfos decision, which are applicable to this case.
First, as the Panel has already noted, the word “Yara” can hardly be described as a common personal name for a woman, at least to English speakers. In the circumstances, an experienced domain name aggregator such as the Respondent was under an obligation to make “good faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others”. This is particularly so given the history of the Respondent with domain name disputes of this kind. The Respondent makes a point of noting that, on a number of these occasions, findings have been made in its favour. For the sake of completeness, the Panel notes the following:
TEMO, Inc. v. Mrs Jello, LLC, WIPO Case No. D2005-1292 (February 15, 2006) <temo.com> - Denied (domain name not identical to complainant's mark)
L.L. Bean, Inc v. Mrs Jello, LLC c/o Domain Admin, NAF Case FA 449421 (May 5, 2005) - <llbean.org> Transferred (not contested)
Eurochannel, Inc (f/k/a Multithematiques, Inc.) v. Papete.com, WIPO Case No. D2005-0318 (June 2, 2005) <eurochannel.com> Transferred
Blue Nile, Inc. v. Mrs Jello, LLC, WIPO Case No. D2005-0639 (September 26, 2005) <bluenilediamonds.com> Transferred (not contested)
A.V.M Software, Inc. d/b/a Paltalk v. Papete.com and Igal Lichtman a/k/a Mrs Jello LLC a/k/a Exoticdomains.net a/k/a domainspa.com, WIPO Case No. D2005-0917 (November 6, 2005) <mypaltalk.com> Transferred
Electrolux Home Care Products, Ltd v. Mrs Jello, LLC c/o Domain Admin, NAF Case FA 599041 (January 10, 2006) <beam.com> Transferred
Gigglesworld Corporation v. Mrs Jello, WIPO Case No. D2005-1189 (November 16, 2007) <giggles.com> and <giggles.org> Denied
ADITO Software GmbH v. Domain Admin, Mrs Jello LLC, WIPO Case No. D2008-1771 (January 12, 2009) <adito.com> Denied (no evidence to support bad faith element provided)
There is nothing wrong with being a respondent in numerous decisions under the Policy, but it does show that the Respondent can be expected to know the standards that are expected of an organization engaged in the accumulation of substantial numbers of domain names. Notwithstanding this, the Respondent, whilst denying actual knowledge of the Complainant's rights, supported by the Declaration of its principal, Mr. Igal Lichtman, makes no reference to any form of check made by it in respect the word “Yara”.
The Respondent makes much of the fact that Google searches reveal millions of “hits” for third party users of the word “Yara”, as a personal name, as a place name and as part of the names or organizations, and others, but what the Respondent does not mention is that a Google search of “Yara” reveals on every page, for page after page, references to the Complainant and its international operations, and usually more than one reference per page.
The Respondent also makes much of the fact that, in the United States, the Complainant's trademarks are the subject of applications only, that an applicant for registration of a trade mark is not entitled to sue upon it until it is registered, and that the Complainant has not yet filed evidence of use of all the goods the subject of the applications. All this is true, but this proceeding is not one based upon a registered trademark the trademark applications and its numerous registrations in other countries are pointed to by the Complainant as evidence of its claim to trademark rights, which have not been, and could not be, contested in these proceedings by the Respondent. Such an argument overlooks the fact that the Complainant is entitled to defer the filing of its evidence of use in the United States for as long as the applicable law permits it to do so. More importantly, it overlooks the fact that a simple on-line search of the United States Patent and Trademark Office records would reveal not only the applications of the Complainant, which might put the Respondent on notice of the existence of the Complainant and its rights, but also that there is, unlike other marks, like JELL-O for example, no other applicant or registrant for any trademark in any way the same as or similar to “Yara”. On the subject of actual use, had the Respondent made any of these inquiries, it would have readily found the Complainant's website, on which are its recent financial filings, which would show, contrary to the assertions of the Respondent, very substantial global sales and investments, including in North America, including the United States.
The Complainant, further, asserts that YARA is “a well-known mark within its field of business”. The Complaint is undoubtedly deficient in not providing some substantiation of this claim, and this determination is not the place to come to any finding in this regard, although the information publicly available online of the Complainant's sales and investments may well suggest that this is true. However, it is no answer to this assertion that the Respondent has never heard of the Complainant, or that YARA is not a consumer brand, like APPLE, LOUIS VUITTON, or JOHNNIE WALKER. YARA may be a very well known mark in the broad agricultural communities in which consumers of the Complainant's products are to be found.
The Panel concludes from the foregoing that, notwithstanding the unusual nature of the name Yara, the Respondent did not:
(i) conduct a search at the United States Patent and Trademark Office; or
(ii) conduct any Google, Yahoo!, or other Internet search engine search on the word “Yara”.
The Respondent does assert that it had no actual knowledge of the Complainant. The Panel is not in any position to reject that statement as being false, but the claim of “no actual knowledge” does not do anything to avoid the “willful blindness” difficulty the Respondent faces in terms of cases such as Mobile General Communications, Media General Communications, Inc., and Grundfos.
Finally, the Panel also notes that the Respondent is, and it would appear from previous cases involving it, has been on numerous other occasions, in breach of the Registrar's Registration Agreement. The eNom Registration Agreement provides as follows:
“ACCOUNT CONTACT INFORMATION AND DOMAIN NAME WHOIS INFORMATION: As further consideration for the Service(s), you agree to provide certain current, complete and accurate information about you, both with respect to your account information and with respect to the WHOIS information for your domain name(s). You agree to maintain and update this information as needed to keep it current, complete and accurate. With respect to you, the administrative, technical, and billing contacts for your domain name registration(s) and other Service(s), you must submit the following: name, postal address, e-mail address, voice telephone number, and where available, fax number. You agree that the type of information you are required to provide may change and you understand that, if you do not provide the newly required information, your registration or and/or other Service(s) may be suspended or terminated or may not be renewed. Not providing requested information may prevent you from obtaining all Service(s). You may provide information regarding the name-servers assigned to your domain name(s) and, if we are providing name-server services to you, the DNS settings for the domain name. If you do not provide complete name-server information, or if you purchase ‘Name Only' Services, you agree that we may supply this information (and point your domain name to a website of our choosing) until such time as you elect to supply the name-server information or until such time as you elect to upgrade from ‘Name Only' Services. “YOUR OBLIGATIONS AND REPRESENTATIONS RELATING TO THE ACCOUNT AND WHOIS CONTACT INFORMATION: In the event that, in registering a domain name or obtaining other Service(s), you provide information about or on behalf of a third party, you represent that you have (a) provided notice to that third party of the disclosure and use of that party's information as set forth in this Agreement, and (b) that you have obtained the third party's express consent to the disclosure and use of that party's information as set forth in this Agreement. By registering a domain name or applying for other Service(s) you also represent that the statements in your application are true and you also represent that the domain name is not being registered or the Services being procured for any unlawful purpose. You acknowledge that providing inaccurate information or failing to update information promptly will constitute a material breach of this Agreement and will be sufficient basis for suspension or termination of Services to you. You further agree that your failure to respond for over ten (10) calendar days to inquiries by us concerning the accuracy of account and WHOIS contact information shall constitute a material breach of this Agreement and will be sufficient basis for suspension or termination of Service(s) to you. As indicated elsewhere in this Agreement, you understand that it is important for you to regularly monitor email sent to the email address associated with your account and WHOIS contact information because, among other reasons, if a dispute arises regarding a domain name(s) or other Service(s), you may loose your rights to the domain name(s) or your right to receive the Service(s) if you do not respond appropriately to an email sent in conjunction therewith.”
Given the Respondent's experience with domain name registrations, it cannot have been unaware it had provided a false name for registrant as “undefined, Domain Admin ()”. It would appear that the Respondent was trying to avoid identifying itself as the registrant, by identifying itself as the administrative and technical contact only. This is another basis upon which to find that the Respondent has acted in bad faith in registering and using the Domain Name.
One member of this Panel concurs in the conclusion that the Respondent registered and is using the Domain Name in bad faith, but for somewhat different reasons. In this panelist's view, the concept of “willful blindness” may assist a panel seeking to draw appropriate inferences from circumstantial evidence as to whether a respondent had actual knowledge of a trademark at the relevant time and registered a domain name in order to target the mark or its owner, but cannot be an independent basis for finding bad faith absent such inferences. The Complainant contends that the Respondent was aware of the Complainant's mark and registered the Domain Name in order to exploit its trademark value, while the Respondent denies any knowledge of the Complainant and its mark, and claims to have registered the Domain Name because it incorporates a common woman's name. For the reasons set forth above and in the preceding discussion of rights or legitimate interests, this panelist considers the former scenario far more likely, and finds bad faith based upon an inference that the Respondent in fact was aware of the Complainant's mark when it registered the Domain Name; that in so doing it intentionally targeted the Complainant's mark; and that the correspondence of the Domain Name to a less-than-common woman's name was mere coincidence or pretext.
In the circumstances of the foregoing findings, the Panel also rejects the Respondent's request for a finding of reverse domain name hijacking.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and Paragraph 15 of the Rules, the Panel orders that the domain name, <yara.tv> be transferred to the Complainant.
William P. Knight | |
Knud Wallberg | David E. Sorkin |
Dated: March 4, 2009