Complainant is ERAM, SA of Montlimart Cedex, France, represented by Casalonga Avocats, France.
Respondent is Vertical Axis Inc. of Christ Church, Barbados, represented by ESQwire.com Law Firm, United States of America.
The disputed domain name <eram.com> is registered with Fabulous.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2012. On March 16, 2012, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the disputed domain name. On March 19, 2012, Fabulous.com transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. Complainant filed an amendment to the Complaint on March 27, 2012, in response to a notification by the Center that it had not provided the names of the three candidates as it is required in case of the designation of a three-member administrative panel.
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 Respondent of the Complaint, and the proceedings commenced March 28, 2012. In accordance with the Rules, paragraph 5(a), the due date for a Response was April 17, 2012. The Response was filed with the Center April 17, 2012.
The Center appointed Michael J. Spence, David Taylor and The Hon Neil Brown Q.C. as panelists in this matter on May 14, 2012. The Panel finds that it was properly constituted. Each member of 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.
Complainant is a French manufacturer of shoes and apparel that has been operating since 1927, and is the owner of the trade mark ERAM. In 2009, the company had an annual turnover of 1,734 billion Euros and extensive retail operations in many countries. Respondent operates a business investing in two, three and four letter generic domain names. It owns almost 4,000 4-letter domain names and registered the disputed domain name on March 2, 2005, though the domain name has been held by others since 1997. It currently operates a website at the disputed domain name advertising a variety of goods and services.
Complainant contends that the disputed domain name is identical, or confusingly similar, to its trade mark; that Respondent has no rights or legitimate interests in the disputed domain name; and that it was registered and is being used in bad faith.
Respondent contends that the Complaint should be barred on the basis of the doctrine of laches; that Complainant’s trade mark is a common combination of four letters and that there is therefore no evidence that the disputed domain name will cause confusion; that Respondent has a legitimate interest in the disputed domain name constituted by its “entitlement to register domain names incorporating letter combinations to which a Complainant does not have exclusive rights” and that third party use of the term “eram” indicates that Complainant does not have exclusive rights in the term; that a legitimate interest is established by the provision of advertising services under the disputed domain name; that an offer to sell a common letter or generic domain name can constitute a bona fide use where there is no evidence that the registration of the disputed domain name was intended to create confusion with a particular trade mark and that, as Respondent does not operate in Europe, there can be no imputed knowledge of Complainant’s trade mark and therefore of an intention to target it; and that the disputed domain name was not thereby registered, or is being used, in bad faith.
The Panel finds that Complainant has significant existing rights in the trade mark ERAM, at least in Europe, in the field of the production, distribution and sale of shoes and apparel. This is on the basis of both long and extensive use and registration of the trade mark. The disputed domain name contains that mark in its entirety. There can be no doubt that the trade mark and the disputed domain name are identical.
For this reason the Panel finds that Complainant has established the first element of paragraph 4(a) of the Policy.
It is for Complainant to establish, at least prima facie, that Respondent has no rights or legitimate interests in the disputed domain name (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110). In this case the Panel finds that burden must be stronger given both the length of Respondent’s rights in the disputed domain name and evidence of third party use of the term ”eram”..
At the heart of this case is the question of whether the use of a “parking” service by a respondent can give rise to rights or legitimate interests in a disputed domain name. A “parking” service is one in which domain names are registered in order to operate generic advertising services, either to offer these domain names for sale or to build them up as separate businesses. This question involves difficult issues of policy for the domain name registration system. On the one hand, some observers of the system say that the operation of such services creates a type of rent on the system as a whole and that it is not clear that domain names were themselves ever intended to be objects to be bought and sold, particularly in those registration systems where domain names are not assignable per se. Indeed, such parking services may well be contributing to Internet users navigating more via search engines than domain names, as why would one go to a domain name to end up in a search engine scenario?
On the other hand, Respondent is able to point to considerable numbers of panel decisions in which the operation of such services at a domain name comprised of a descriptive or dictionary has been held to give rise to a legitimate interest in the disputed domain name, provided there is no evidence that the registration was intended to create confusion with a particular trade mark, or willful blindness of the possibility that it might.
In this case the Panel finds, Complainant has not discharged its burden of establishing that Respondent has no rights or legitimate interests in the disputed domain name created by its operation of a ‘parking’ service. This is a conclusion reached mindful of: the length of Respondent’s use of the disputed domain name (whether or not the issues of laches arises); evidence of third-party use of the term “eram” and of Complainant’s relatively weak trade mark rights outside its particular geographic and commercial field of use; and an absence of evidence of any intention on the part of Respondent to profit from confusion created with Complainant’s trade mark in that Respondent’s advertising does not prominently feature either shoes or apparel. Indeed, of the 84 links on the landing page at the disputed domain name, none can be said to target the goods or services offered by Complainant as none are for "shoes".
For this reason the Panel finds that Complainant has failed to establish the second element of paragraph 4(a) of the Policy.
Given its finding in relation to the second element of paragraph 4(a) of the Policy, it is not necessary to consider the third. However, a finding of bad faith would be difficult in this case for much the same reasons that the Panel has found against Complainant on the second element of paragraph 4(a) of the Policy. In essence, there is insufficient evidence to point to Respondent having had Complainant in mind when registering the domain name back in 2005. There is no clear advertising on the landing page at the disputed domain name targeting the goods or services offered by Complainant. Thus the Panel finds that there is no intent to confuse Internet users into thinking that Complainant is associated with Respondent's website.
For this reason the Panel finds that Complainant has not established the third element of paragraph 4(a) of the Policy.
For all the foregoing reasons, the Complaint is denied.
Michael J. Spence
Presiding Panelist
David Taylor
Panelist
The Hon Neil Brown Q.C.
Panelist
Dated: May 28, 2012