The Complainant is Ritchey Design, Inc. of Sparks, Nevada, United States of America ("US"), represented by Convey Srl, Italy.
The Respondent is Whois Privacy Services Pty Ltd aka Domain Vertical Axis, Inc. of Queensland, Australia / Domain Administrator, Vertical Axis Inc. of Barbados, represented by ESQwire.com Law Firm, US.
The disputed domain name <ritchey.com> (the "Domain Name") is registered with Fabulous.com (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 7, 2014. On May 7, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 9, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 16, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 19, 2014. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on May 19, 2014.
The Center verified that the Complaint together with the amended 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 May 20, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response June 9, 2014. The Response was filed with the Center on June 9, 2014.
The Center appointed Dawn Osborne, Flip Jan Claude Petillion and the Hon Neil Brown Q.C. as panelists in this matter on July 2, 2014. 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.
On July 17, 2014, the Panel issued Procedural Order No. 1 requesting the Respondent to disclose any relationship or connection between the Respondent and the original owner of the Domain Name and provide documents relating to the purchase of the Domain Name from its original owner.
On July 25, 2014, the Respondent provided its Response to the Procedural Order.
On July 31, 2014 the Complainant provided its Reply to the Respondent's Response to the Procedural Order.
On August 1, 2014, the Respondent provided an Additional Response to said Complainant's Reply.
On August 4, 2014, the Complainant made an objection to the admissibility of the Respondent's said Additional Response.
The Complainant is a company specialising in bicycle components established in 1974 which has registrations for RITCHEY in the US, Canada and the European Community for bicycle components.
The Domain Name resolves to a website hosting pay-per-click ("PPC") links to third party businesses not associated with the Complainant for which the Respondent receives revenue. Until 2007 there were numerous references to bicycles, bicycle accessories and the bicycle industry in general in these links, including the Complainant's competitors (Annex 6 to the Complaint) however the Domain Name was at that time owned by another company. After 2007, when the Respondent acquired the Domain Name, the links based on the website do not appear to be related to the cycling industry.
The Respondent is offering the Domain Name for sale.
The Respondent has been involved in multiple UDRP proceedings alleging typosquatting and content relating to the value of the relevant trade mark, in some of which the domain names were transferred to the respective complainants and in others of which it was held that the Respondent's activities were legitimate.
"Ritchey" is a common surname.
The submissions of the Complainant can be summarized as follows:
The Complainant is a company specialising in bicycle components (with American headquarters and branches in Switzerland and Taiwan) which was established in 1974 by Tom Ritchey. It distributes in over 40 countries, through more than 200 distributors and has a worldwide turnover of USD 22,5 million. "Ritchey" has been used in the main company name Ritchey Design Inc. since 1974 as well as in the names of foreign branches of the Complainant, e.g. Ritchey International Limited. It has been advertised since the early eighties in various media including newspapers, specialized magazines, the television and Internet. More than 80 renowned and leading bicycle brands are using RITCHEY components all over the world. The Complainant is also sponsoring more than 50 professional biking teams worldwide.
The Complainant has registrations for RITCHEY in the US, Canada and the European Community for bicycle components (Annex 9 to the Complaint).
"Ritchey" has been used in relation to websites at "www.ritchey.ch" and "www.ritcheylogic.com" and the Complainant has recently been granted <ritchey.bike> based on its Community trade mark rights.
The Domain Name is identical to the Complainant's registered trade marks for RITCHEY. The addition of the generic Top-Level Domain ("gTLD") ".com" does not have any legal significance in this regard.
The Respondent has never been authorised by the Complainant to use the Domain Name and is not a dealer or reseller of the Complainant. The Respondent does not have any rights or legitimate interests in respect of the Domain Name. It has not made any bona fide offering of goods or services, has made no noncommercial or fair use of the Domain Name, has not been commonly known by the name "Ritchey" and holds no trade mark rights in the same.
The Domain Name resolves to a website hosting PPC links which can be legitimate for generic or descriptive domain names, but RITCHEY is an inherently distinctive trade mark which is being used to attract Internet users for commercial gain to a website that offers goods and services not authorised by the Complainant and creates a likelihood of confusion with the Complainant's mark as to the source or endorsement of its website, thus capitalising on the Complainant's trade mark. Until 2007 there were numerous references to bicycles, bicycle accessories and the bicycle industry in general, including the Complainant's competitors (Annex 6 to the Complaint). After 2007 the links based on the website do not appear to be related to the cycling industry, but they are not related to any plausible generic meaning of the Domain Name.
The Complainant cannot conceive of the reason for repeated changes of WhoIs information and use of privacy services and contends that these numerous changes are inconsistent with the existence of any plausible legitimate interest between the Domain Name and the Respondent.
The transfer to a new registrant constitutes a new registration for the purposes of the Policy, thus bad faith must be assessed at the time when the current registrant took possession of the Domain Name in 2007. However, the underlying identity of the registrant appears to be the same due to unchanged DNS servers and registrar from December 18, 2007 onward. The Respondent has used privacy protection services to conceal its identity. As such the Panel may consider the relevant date of registration when bad faith should be assessed should be October 21, 1996, the original registration date. Otherwise, regardless of when the ownership change took place, the Respondent knew of the Complainant's rights as the website at the Domain Name was used before 2007 for bicycle related links. In any event, knowing of the Complainant's prior rights, the Respondent incorporated and exploited the Complainant's mark as a Domain Name to profit upon the goodwill built up in the RITCHEY mark to obtain profit via a PPC platform. The Respondent was a professional domain name registrant that should have known about the Complainant's rights.
The Respondent is offering the Domain Name for sale in circumstances of trade mark infringement and lack of legitimate interest. The Respondent did not reply to the Complainant's cease and desist letter or correspondence offering relevant out-of-pocket costs.
The Respondent has also registered the Domain Name to prevent the owner of a trade mark from reflecting the mark in a corresponding domain name as the Respondent has been involved in a pattern of such conduct, including being a Respondent in multiple UDRP proceedings where the domain names were transferred to the complainant including <hobbex.com>, <saipem.com>, <pearljams.com>, <asroma.com>, <bzzagen.com>, <bgazzet.com>, <malev.com> and <mbnaaccess.net>. As such the Respondent has engaged in serial registration of domain names that include widely-known trade marks in which the Respondent has no rights. It has also registered domain names using typosquatting techniques, some with content relating to the value of the relevant trade mark in the domain name.
The doctrine of laches is not applicable under the Policy. In any event the Respondent has not been prejudiced by the delay, but has rather benefited from the PPC advertisement revenue for a long time.
The submissions of the Respondent can be summarised as follows:
The Complainant has no right to the Domain Name. The Complainant does not have exclusive use of the name "Ritchey". The Respondent has not acted improperly. It purchased the Domain Name with a legitimate interest, because it is a common surname and inherently valuable and, at no time did the Respondent target the Complainant. The Respondent owns many surname domain names and thousands of generic word domains. It purchased the Domain Name as part of a larger portfolio of hundreds of domain names owned by its prior owner. There is no evidence of the Respondent's bad faith and use.
The Complainant's argument of bad faith and use is premised on the prior owner's bad faith use and not the Respondent's. When the Respondent purchased the Disputed Domain it did not use it in connection with allegedly infringing links. The Respondent did not register the Domain Name with the Complainant's trade mark in mind and had no knowledge of the Complainant, its website, its business name or trade mark when the Respondent purchased the Domain Name seven years ago. The Respondent did not register the Domain Name with intent to sell to the Complainant, to disrupt the Complainant's business, to prevent it from owning a domain name containing its mark or to confuse people trying to find the Complainant's website. The Respondent has used the Domain name legitimately for seven years.
The Respondent registers common names as they are easy to remember. The Respondent has used the Domain Name to display PPC advertising links related to general interest topics. The Respondent does not have any links related or confusingly similar to the Complainant or its business on the Respondent's web page. The Respondent has registered thousands of common word domain names and owns many surname domain names similar to the Domain Name.
"Ritchey" is a common Scottish, Irish or English surname. A search on "www.ancestry.com" of US Census and voter lists yields 33,411 results. A Google search excluding reference to the Complainant reveals approximately 12,500,000 third party results, mainly showing up for the surname "Ritchey". Ritchey is a common family name subject to extensive third party use entirely unrelated to the Complainant in many fields of activity. Absent any reference to a third party or to its trade mark the registration of a common surname may itself provide a party with rights and legitimate interests in a domain name. Such registrations are available on a first come, first served basis. The Panel should, therefore, conclude that the Respondent has a legitimate interest in the Domain Name, because of its common use and meaning independent of the Complainant. There is no evidence supporting an inference that the Respondent registered any domain name based on the fact that it incorporates a trade mark. Accordingly, the Respondent's legitimate interest in the Domain Name is clear and the Complaint should be denied. The PPC links on the website from which the Respondent receives a proportion of revenue are an accepted business practice and constitute bona fide provision of advertising services, as there are no links related to the Complainant's goods covered by the Respondent's web site and no credible argument can be made that the Respondent's use of the Domain Name is illegitimate or targets the Complainant in any way.
The fact that the Respondent has a link offering the Domain Name for sale and would seek to do so for a profit is accepted common industry practice. It is not improper and does not make its use of the Domain Name illegitimate, provided there is no evidence that a trade mark was targeted by a registrant. The Respondent's offer to sell the Domain Name without any evidence of targeting the Complainant is a bona fide activity. There is nothing improper about the Respondent's business practices or decision to buy common name or generic word domain names. Absent direct proof that a common term or last name domain name was registered or acquired solely for the purpose of profiting from the Complainant's trade mark rights, there can be no finding of bad faith registration or use. Absent proof of the Respondent's knowledge of the Complainant there can be no finding of bad faith intent. The Domain Name was purchased as part of a large domain name portfolio and not individually selected to target the Complainant in any manner. There is no evidence that the Respondent would have known or would have been alerted to the prior owner's bad faith for this single domain name.
As to the allegations of bad faith pattern of registering domain names, there are 41 published decisions under the Policy ruling in the Respondent's favour where the Respondent's practices have been held to be legitimate and proper. However, the panel must decide each case on its own merits in any event.
Without evidence of bad faith on the part of the Respondent, the Complaint must be dismissed.
The Domain Name was originally registered in 1996 and purchased by the Respondent from its prior owner in 2007. The Complainant admits that after 2007 the Domain Name was used in relation to topics of general interest. It is clear that the Complainant's quarrel is with the prior owners of the Domain Name and not with the Respondent. The Respondent is not responsible for the prior owner's use of the Domain Name. The Complainant took no action in relation to the Domain Name for over 18 years, a substantial delay, allowing the Respondent to purchase it from its former owner. The long delay bars the Complaint under the doctrine of laches. The long delay particularly demonstrates that laches is appropriate, because after 18 years of use the Complainant improperly seeks to impute the original domain owner's alleged bad faith onto the Respondent. Without explanation, after the Respondent has owned and used the Domain Name in good faith for over seven years, the Complainant has filed this Complaint. A party cannot sit on its rights and expect a panel to reward its delay or take a valuable asset from its rightful owner. Such a long delay raises the inference that the Complainant did not seriously believe the Respondent had violated the Policy. Even if the claim is not dismissed on laches, the seven year delay militates strongly against a finding of the Respondent's bad faith and the Complaint should be denied on this basis alone.
The use of privacy services is entirely legitimate and does not support a finding of bad faith particularly where there is no evidence that the Complainant was unable to contact the Respondent or serve it with the Complaint or that the Respondent avoided participating in these proceedings. Use of a privacy service is common and permitted practice to protect owner's privacy and prevent spam.
The Submissions of the Respondent in its Response to Procedural Order No. 1 can be summarised as follows:
The Domain Name was purchased in a bona fide arm's length transaction involving a large portfolio of common word and descriptive domain names demonstrating an obvious pattern of good faith registration on the part of the Respondent. The parties to the Agreement are unrelated and independent entities and individuals. The Respondent has no relationship to the original owner of the Domain Name.
This case must fail, because absent proof of targeting and bad faith anyone is entitled to register a common surname.
The Submissions of the Complainant in its reply to the Respondent's Response to Procedural Order No. 1 can be summarised as follows:
The Respondent's Response to Procedural Order No. 1 was forwarded on July 24, 2014 to the Center, but the Complainant did not receive a copy until after this deadline. This is bad faith as the Respondent deliberately did not copy the Complainant in order to slow down the Complainant's reaction and aiming to unduly shorten the Complainant's time frame for a response.
The Respondent should also have produced further detailed business registrations documents concerning the Respondent or any affiliated entity. Mr. Kevin Ham is the effective owner of the Respondent and he has another company Reinvent Technology Inc. that is based in Vancouver, West Hastings Street 2610-555. The Vendors are based in Vancouver. The WhoIs information of the Domain Name shows a West Hastings Street, Suite 777 address for the WhoIs identity shield of the Domain Name from December 2007-October 2009.
There are a significant number of inaccuracies/inconsistencies in the documents provided. The Response says the Domain Name was purchased on December 12, 2007. The Agreement of Sale is dated October 22, 2007. Purchaser signatures are excerpted from a facsimile transmission stating October 15, 2006. The Escrow Agreement displays November 28, 2007 and for purchaser signatures November 22 and 30th, 2007. The Agreement lacks several signatures from the Vendors and Purchasers. The Agreement does not have a progressive numeration as several pages are repeated or missing, nor does it have any indication of the total number of pages comprised within or part of the Agreement. The dates are inconsistent with each other and with the case matter. The documentation provided consists of a patchwork of different facsimile documents which were put together to forge an allegedly consistent documentation in bad faith. The Response said that the Domain Name was purchased as part of a portfolio from CES. However, the Agreement refers to other entities of which the possible relation with a legal entity names CES is unknown.
The Respondent sometimes refers to a purchase, sometimes a registration. The Complainant wonders if these are random unfortunate inconsistencies or if they are Freudian slips and symptoms of the connections between the Respondent, Domain Works, CES Marketing and Reinvent Technology which the Complainant believes is the case.
The Respondent has not submitted all the necessary documentation for the purpose of ruling out any possible relationship or connection between the Respondent and the original owner of the Domain Name. The Respondent should have provided the disclosure document relating to the portfolio of domain names purchased and the Domain Name as if the Respondent as purchaser had been provided with a precise report from a performance due diligence for the nine months before purchase of the Domain Name they would have become aware of the value of the Domain Name in relation to the Complainant's company and trade marks. Bike related content on the page connected to the Domain Name appeared during this period and until December 11, 2007 almost two months after the date of the Agreement of Sale of October 22, 2007. The traffic of the Domain Name would have indicated its capacity for generating revenues from PPC built on the exploitation of the Complainant's trade mark which would have been attractive to the Respondent as a domainer.
The Respondent filed an Additional Response to the Complainant's Reply to the Respondent's Response to Procedural Order No 1 in which it sought to answer questions raised in the Complainant's Reply. On August 4, 2014, the Complainant pointed out that under paragraph 12 of the Rules such an additional Response was prohibited and objected to consideration of it and the Panel has not found it necessary to consider the same.
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(1) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(2) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(3) The Domain Name has been registered and is being used in bad faith.
Apart from the ".com" suffix which is not taken into account for the purposes of the Policy, the Domain Name <ritchey.com> consists of a name equivalent to the Complainant's registered mark RITCHEY. Accordingly, the Panel finds that the Domain Name <ritchey.com> is identical to the Complainant's trade mark for the purposes of the Policy.
It not being contended that the Respondent is commonly known by the Domain Name, that it has made noncommercial fair use of it, that it has any licence from the Complainant or has any trade mark rights in the name "Ritchey" itself, the relevant provision for consideration of whether or not the Respondent has rights or legitimate interests in the Domain Name under 4(a)(c) of the Policy is if it can show:
"(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."
The Respondent says that the PPC links on the website connected to the Domain Name from which the Respondent receives a proportion of revenue are an accepted business practice and constitute bona fide provision of advertising services, as there are no links related to the Complainant's goods covered by the Respondent's web site and no credible argument can be made that the Respondent's use of the Domain Name is illegitimate or targets the Complainant in any way. The Respondent concedes that if a mark were registered because it contained a trade mark then this use would not be legitimate, accordingly, in this case whether the Respondent has rights and legitimate interests depends on whether there is any finding of bad faith. In view of the findings below that there is no evidence of bad faith on the part of the Respondent, the Panel holds that on the balance of probabilities is seems that the Respondent has rights or legitimate interests in the Domain Name which is a common surname.
Paragraph 4(b) of the Policy sets out four non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including:
"(i) circumstances indicating that you have registered or you have acquired the domain name 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location."
It not being alleged that the Respondent is a competitor of the Complainant, the relevant criterion are (i), (ii), and (iv) of paragraph 4(b) of the Policy, although these grounds are not exclusive. All of these grounds require that the Respondent knew about the trade mark owner and its rights at the time of registration, in other words that the Respondent targeted the Complainant for a financial or commercial advantage.
It is agreed between the parties that under the Policy if there is an assignment of a domain name the date of registration for the purposes of any domain name dispute involving the new owner is the date of purchase of the name. The Respondent acquired the Domain Name in 2007 as part of a large portfolio containing many domain names which are almost exclusively generic or descriptive. Before that date the parties agree that the website attached to the Domain Name contained a lot of links to third party sites involved with the bicycle industry. Since 2007 the parties agree that the links have been general links to third party businesses and not related to bicycles or ancillary goods and services. The Respondent says that "Ritchey" is a common surname and that it acquired it to sell in that capacity unaware of the Complainant or its business at the time of purchase. The Complainant says that the disclosure report to the purchase agreement would have disclosed this information. It also alleges that the documentation submitted has been forged. However, when the Respondent sought to answer the Complainant's Reply to its Response to the Procedural Order no. 1 the Complainant objected to extra evidence being submitted. In the final analysis the evidence does not disclose any prior knowledge of the Complainant on the part of the Respondent or that the documentation submitted by the Respondent is fraudulent.
The Complainant suggests that the Respondent may be associated with the prior owner as the Respondent has a link to Vancouver and so do the original owners and vendors of the Domain Name and after acquisition the DNS servers and registrar remained the same, but the Panel does not think this vague geographical concordance is determinative of any connection or that use of the same servers and registrar proves such a link and the Respondent has provided a sworn statement that it is not affiliated with the prior owner. In the final analysis the evidence available does not disclose such a link.
In a case where the domain name unequivocally indicated the complainant, such as <ritcheybicyles.com>, the link would be obvious and by purchasing the domain name even as part of a large portfolio the respondent must have intended to target the complainant. However, if the domain name was <brown.com> any business using the name "Brown" would be unlikely to bring a complaint as it would be unclear which "Brown" amongst the many uses of the common surname Brown was meant. There are other businesses out there using the "Ritchey" name and many people called "Ritchey" who might be interested in purchasing <ritchey.com> if they started a business. Upon examining the evidence in this case, unfortunately, the Complainant has failed to show that on the balance of probabilities that it was a Ritchey business in the contemplation of the Respondent at the time of the registration or that the Respondent has any link with the bad faith use made of the Domain Name showing knowledge of the RITCHEY trade mark for bicycles before it was acquired by the Respondent. Further, the Panel agrees with the Respondent that sale of domain names containing common surnames without proof of targeting of a trade mark and use of privacy services are normal business practices and since there has been no suggestion of the Respondent giving false contact details or not participating in these proceedings this is not evidence of bad faith in itself. Finally, the list of other domain names purchased at the same time as the Domain Name are predominately generic and descriptive suggesting, as the Respondent suggests, good faith purchase of a descriptive portfolio.
The Panel declines to apply the doctrine of laches in this case, however agrees that delay can affect the outcome of cases if it makes it harder to determine on the evidence the intentions of a party some time ago. There is no evidence across the seven years that the Respondent has been using the Domain Name that it has been targeting the Complainant. In that sense the delay benefits the Respondent as on the balance of probabilities there is no evidence that bad faith use was intended.
As such the Panel finds that that there is no evidence of the Respondent registering and using the Domain Name in bad faith under the Policy.
For the foregoing reasons, the Complaint is denied.
Dawn Osborne
Presiding Panelist
Flip Jan Claude Petillion
Panelist
The Hon Neil Brown Q.C.
Panelist
Date: August 8, 2014