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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AVN Media Network, Inc. v. Hossam Shaltout

Case No. D2007-1011

 

1. The Parties

The Complainant is AVN Media Network, Inc., Chatsworth, California, United States of America, represented by Carpe Law PLLC, United States of America.

The Respondent is Hossam Shaltout, Toronto, Ontario, Canada, who represents himself.

2. The Domain Name and Registrar

The disputed domain name <eroticala.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2007. On July 16, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On July 16, 2007, Go Daddy Software 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”), 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 on July 20, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was (as extended) August 16, 2007. The Response was filed with the Center on August 16, 2007. This Response was called by the Respondent an “intermediate” response. He filed a further Response on August 18, 2007.

The Center appointed Sir Ian Barker as the sole panelist in this matter on August 22, 2007. 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. Procedural Issues

The Response filed by the Respondent was accompanied by numerous exhibits, the relevance of many of which was not immediately apparent to the Panel. Prior to filing the Response, he had conducted essentially procedural correspondence by email with the Center. The Respondent had complained about the time limits for filing a response, citing illness on his part.

The Complainant, on August 22, 2007, purported to file a reply to matters raised by the Respondent, without first seeking the leave of the Panel to file such a Supplementary Submission or without the Panel having requested one.

The Panel, therefore, on August 24, 2007, requested the Complainant to supply reasons why its additional submission should be received. The Complainant did so on August 27, 2007. The Respondent filed, on August 26, 2007, submissions as to why the Panel should not receive the Complainant’s Supplementary Submissions.

There is no right under the Rules to file a reply unless an application is made, or else the Panel, of its own volition, decides to seek further information. In this case, the Complainant’s request would have been dealt with more promptly if it had been accompanied by reasons as to why the Reply should be considered by the Panel. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“the WIPO Overview”) at 4.2.

The Panel issued, on September 4, 2007, a Procedural Order in which it decided to receive and consider the Complainant’s Reply. The reason it did so was that the Respondent had raised matters in the Response which could not reasonably have been foreseen by the Complainant, such as the Respondent’s challenge to the right of the Complainant’s lawyers to act for it. In addition, the Respondent had raised, in his Response, a counterclaim of reverse domain name hijacking, for which the Panel considered the Complainant had a right to reply.

In the same order, the Panel allowed the Respondent until September 8, 2007, within which to reply to matters in the Complainant’s Additional Submissions on which he had not previously commented.

The Procedural Order issued reads as follows:

1. The Complainant has made a supplemental filing dated August 22, 2007.

2. In accordance with paragraph 12 of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), the Panel hereby decides to accept such supplemental filing.

3. In accordance with its discretion under Paragraph 12 of the Rules, the Panel hereby grants the Respondent until September 8, 2007 to file a response to the Complainant’s Reply. The Respondent’s Reply shall be no more than 2,000 words in length and shall comment ONLY on new matters raised in the Complainant’s Reply which the Respondent has not already commented upon.

4. The Respondent’s Reply should be forwarded to the Center by e-mail to the following email address only domain.disputes@wipo.int and signed hard copy (fax or post), and copied to the Complainant. The Center will then forward such Reply to the Panel. Apart from the Respondent’s Reply, the Panel does not anticipate a need for any further contacts by the Respondent with the Center whether by telephone, e-mail or any other type of communication, or with the Panel.

5. Pursuant to paragraph 10(c) of the Rules, the Panel extends the date for rendering its decision until September 13, 2007.

On September 4, 2007, the same day as the Procedural Order was issued, the Respondent sought by email to the Center the removal of the Panelist for bias on the grounds that the Panel had not treated the parties with equality under Rule 10(b) and had not given him a fair opportunity to present his case. He claimed that the Panel should not have:

(a) indicated that it did not anticipate further communications from the Respondent to the Center or the Panel;

(b) admitted the Complainant’s Reply; and

(c) given the Respondent only four working days within which to comment on the Reply.

On September 5, 2007, the Respondent sought an extension of five days within which to file his comments.

On September 6, 2007, the Complainant filed detailed objections to the Respondent’s applications for extension of time and for recusal of the Panel. The Complainant set out exhaustively the numerous iterations between the Respondent, the Center and itself since the proceedings commenced. It noted that the Respondent had claimed differing reasons for claiming time extensions, including his health, travel commitments, alleged bias by the Center staff, large business deals, computer problems and unavailability of evidence. The Complainant also pointed out that the Respondent had received the Complainant’s Reply on August 22, 2007, and, since then, had directed some 26 emails to various recipients at the Center, objecting to the Reply and giving his reasons.

On September 7, 2007, the Respondent asked that the proceedings be ‘set aside’ and postponed until it became medically possible for him to make a response.

On September 8, 2007, the Center advised the Respondent that it saw no basis whatsoever for questioning the impartiality and independence of the Panel. As at the date of rendering this decision, no substantive comments have been received from the Respondent pursuant to the Procedural Order.

 

5. Decision on Procedural Issues

(a) The Panel declines to give the Respondent further time within which to file further comment on the Complainant’s Reply. In fact, he did file extensive comment on August 27, 2007 in a lengthy email. In the Panel’s view, the Respondent has had ample opportunity to present his case and he has taken full advantage of that opportunity. The volume of his emails is unusually high. The relevance of much of the content of the emails is unclear, since the issues in the case are relatively confined. The Panel notes too that the Respondent has had the Complainant’s Reply since August 22, 2007.

The Panel is not justified in delaying the proceedings on the asserted medical basis in the circumstances where the Respondent has already provided ample detail of his opposition to the Complaint.

(b) The Panel notes that the Center had rejected the Respondent’s request to remove the Panel for alleged bias. Under Rule 7, that decision is sufficient since the Respondent’s request was addressed to WIPO. See the procedure followed in Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505.

Had it been necessary for the Panel to rule on the Respondent’s request, the Panelist would have rejected it. No evidence has been proferred to suggest that a reasonable, objective person would be justified in doubting the panelist’s impartiality and independence.

The Panel’s order allowing the Complainant to file Supplementary Submissions was within the Panel’s discretionary power. It was made only after the Complainant was asked to supply justification for the filing. The Respondent commented at length on whether the order should be made. The Panel granted him, as is usual, the further right of comment. Such orders are frequent in WIPO cases. Here the making of such an order as evidence of bias is hard to see.

The suggestion in the order that the Respondent might not need to communicate further with the Center is a reflection of the fact that he had sent many documents and emails to the Center – most of them unsolicited and many of them unhelpful. The Rules provide for the filing of a Response and of any document sought by the Panel – not for the plethora of communications which this Respondent has made. The volume and content of the Respondent’s emails is quite unusual in the experience of this Panelist and of the Center.

 

6. Jurisdictional Matters

In his Response, the Complainant alleged that:

(a) There was bias shown against him by various officers at the Center. He asked for a finding that the Panel finds bias against members of the staff.

The Panel has no jurisdiction whatsoever to make declarations of this sort and has no jurisdiction over the staff of the Center. However, a perusal of the numerous emails which the Respondent has sent assiduously to the Center in great plenitude, indicates that he was dealt with courteously, patiently and fairly by the staff of the Center, especially in light of the unprecedented volume and frequency of his communications.

(b) There was no proof in the Complaint document that the law firm acting for the Complainant had the right to act for the Complainant. On that basis, he asks that the Complaint be totally dismissed.

This is a completely worthless argument. There is no requirement that a Complainant must produce to the Center its authorization to its lawyers to act for it. The Policy contemplates a relatively simple procedure. The fact that a law firm states that it is acting for a complainant has always been sufficient warrant for the Center to accept the Complaint and for Panelists to consider it. Any law firm that claimed to be authorised to act for a complainant when, in fact it was not, would be guilty of serious professional misconduct. It would face severe penalties from its own professional association. In fact, the Complainant in its Reply affirmed its authority to its lawyers.

The Rules require only that a party provide contact details of itself and of any authorised representative. The Complainant complied with these Rules. The Respondent’s submission on this point is frivolous and is dismissed.

(c) There was no proof that the Respondent had agreed to the current service agreement with the registrar, Go Daddy, because the disputed domain name had been registered in 1998 before the Policy came into operation in 1999.

Paragraph 2 of the Respondent’s service agreement with Go Daddy refers to the UDRP in the following terms:

“This Agreement as well as any additional Go Daddy policies, together with all modifications thereto, constitute the complete and exclusive agreement between You and Go Daddy concerning Your use of Go Daddy’s Software and Services, and supersede and govern all prior proposals, agreements, or other communications. All Go Daddy policies and agreements specific to particular Software and Service are incorporated herein and made part of this Agreement by reference, including the dispute policy (“UDRP”). By purchasing Go Daddy’s Software or Services, You acknowledge that You have read, understood, and agree to be bound by all terms and conditions of this Agreement and any other policies or agreements made part of this Agreement by reference, as well as any new, different or additional terms, conditions or policies which Go Daddy may establish from time to time, and any agreements that Go Daddy is currently bound by or will be bound by in the future. You may view the latest version of this Agreement online.”

The Respondent, by his continuing registration of the disputed domain name, agreed to later terms and conditions that have become part of the agreement, including Go Daddy’s inclusion of the Policy, in its terms of service to the Respondent. Renewal of registration would make any new terms applicable as at the date of renewal. Consequently, this submission is also without merit and is dismissed.

 

7. Factual Findings

The Complainant, for 25 years, has provided adult industry news and information to a large audience of consumers and professionals. For the last 11 years it has organized a trade show in Los Angeles, California a large event of its kind which brings together business professionals, manufacturers, distributors, exhibitors and consumers of adult products and entertainment.

Since 1996, the Complainant has used the name Erotica LA in connection with all products and services relating to this trade show. It owns the domain name <erotica-la.com> at which it operates a website. At this site, the user is able to examine information about the show, its exhibitors and products and to purchase tickets for exhibition space, etc.

The disputed domain name was registered by the Respondent on September 26, 1998. No explanation was provided by the Complainant as to why it has taken almost nine years for it to complain about the disputed domain name.

At some date unknown, subsequent to the registration of the disputed domain name, the Respondent set up a website to solicit contestants in a “Miss Erotica” contest. The Respondent is the owner of the domain name <misserotica.com>. The website at the disputed domain name seamlessly links users to the website of “www.misserotica.com”.

The Respondent was given no rights by the Complainant to use the disputed domain name.

There is no proof offered by the Complainant that it owns any registered trademarks with respect to the disputed domain name.

 

8. Parties’ Contentions

A. Complainant

The Complainant has used the expression “Erotica LA” since 1996 under which it operates its trade show. The mark is used in connection with all the products and services relating to the trade show. The disputed domain name is confusingly similar to the trade name and identical (apart from the hyphen) to the Complainant’s <erotica-la.com> domain name.

The Respondent has no rights or interests in the disputed domain name.

The Respondent registered the disputed domain name in bad faith and is clearly attracting users to the offending site by creating a likelihood of confusion with the Complainant’s mark because the Respondent has configured the website at the disputed domain name in such a way so as seamlessly to link to a website “www.misserotica.com” which seeks to invite women to enter into a beauty contest.

The Respondent intends to use the disputed domain name in the hope of making a profit by confusing users that the disputed domain name is associated with the Complainant.

B. Respondent

The Complainant does not have a registered trademark. The Complainant omitted to give details of its negotiations with the Respondent for the sale or renting of the disputed domain name, including an offer to instal a banner on his website for free to direct persons who want the trade show to an email link to the Complainant. Also, he offered the Complainant free use of one-third of the domain, as a goodwill gesture.

When the Respondent registered his domain name in 1998, the Complainant’s show was not named “Erotica LA” but “Adult Marketplace and Entertainment Extravaganza”. The Complainant has produced no evidence that it has organized a trade show “Erotica LA” since 1996. The domain name “eroticala” was chosen by the Respondent in 1998 because he operated a beauty contest for erotic female movie actresses and dancers held in Los Angeles. The Complainant’s show was known as “Erotica Los Angeles” from 2002 to 2004. An archived website advertising a trade show under the ‘Adult Marketplace etc’ title was produced by the Respondent.

The word “Erotica”, without any addition, has 11 trademark registrations in the United States which offer different goods and services, all erotic. There is no legal prohibition in having the same information on two domain names – one “Los Angeles Beauty Contest Erotica LA” and one for “World Beauty Contest Miss Erotica”.

The Respondent has arranged a beauty contest in Los Angeles since 1993, named Erotica LA and is therefore making legitimate use of the disputed domain name. There is no similarity with the Complainant’s business since the Complainant does not hold beauty contests.

The disputed domain name was registered in good faith in September 1998. The Complainant’s show was then differently named. The Complainant offered, on April 25, 2007, to place a free banner on the Respondent’s website disclaiming. On July 25, 2007, the Respondent placed a large disclaimer on his website saying “This is a beauty contest and is not affiliated with the Erotica LA exhibition”.

The Respondent seeks a declaration of reverse domain name hijacking on the grounds that the Complaint was brought in bad faith, it constitutes an abuse of the administrative proceeding and was brought primarily to harass the Respondent.

C. The Complainant’s Supplementary Submissions

As well as dealing with the preliminary matters referred to in an earlier section of this decision, the Complainant alleged that the Response showed in its annexures that the Respondent was clearly trying to sell or rent the disputed domain name to the Complainant. In April 2005, he said he would be willing to sell “at the lowest legitimate appraisal you can get”. He later responded that the domain name had been appraised at US$27,000 but that he would offer US$9,000 and would rent it at US$90 per month. The Complainant was willing to rent the disputed domain name for US$90 a month and have the Respondent’s banners on its own website rather than incur the expense of pursuing legal remedies. However, these negotiations broke down and the Respondent was so advised on April 27, 2007.

The Complainant has discovered through various web search-mechanisms that the Respondent has listed the disputed domain name on the Internet for sale since at least April 4, 2005 through to December 7, 2006. This fact is contrary to the Respondent’s claim that he chose the disputed domain name because he operated a beauty contest for erotic female movie actresses and exotic dancers held in Los Angeles”. There was no archived activity for the disputed domain name before April 2005.

In response to the Respondent’s allegation that it has no trademark, the Complainant filed a declaration under penalty by Farley Cahen, the publisher of AVN Online and Director of Corporate Licensing. This said that since 1996, the mark EROTICALA has always been used in connection with all the products and services relating to the Erotica LA trade show organised by the Complainant. Annexed to the declaration was an archived website that showed that in 1999, the Complainant advertised its show on its website as Erotica LA in much the same way as it advertised in 2007.

The Respondent knows the Complainant’s mark is EROTICALA. He stated that he reads the Complainant’s magazine regularly and stated in his Response, that the Complainant:

“…was kind enough to send me their issues in the past when I was involved in the adult movies industry.”

These publications frequently advertise the Complainant’s show.

Respondent’s Further Submissions

Although the Respondent did not specifically respond to the Reply by September 8, 2007, his email in opposition to the filing of the Reply dated August 23, 2007, has been considered by the Panel. It did not add much on the relevant issues to what is in the Response, although the email is replete with repetition and recrimination and comment about procedural issues.

There are two main issues in the case on which the Respondent should have concentrated his energies, namely:

(a) has the Complainant shown it has a mark entitled to protection under the Policy? and

(b) can the Complainant prove bad faith registration in 1998?

Both of these key issues seem to have been covered at least implicitly in some parts of his Response or his opposition to the filing of a reply.

 

9. Discussion and Findings

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this 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.”

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

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

(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.

A. Identical or Confusingly Similar

Under this heading of the Policy, the Complainant has to prove that the disputed domain name is identical to or confusingly similar to a mark in which it has rights. Normally, there is exhibited to the Complaint details of a trademark registration which puts the issue of the Complainant’s rights beyond doubt.

However, here the Complainant has produced no evidence of a registered trademark. It has not addressed the tests for common law trademark discussed in various decisions under the Policy.

Tests for a common law trademark have been discussed in many cases over the years. The Panel adopts, with gratitude to the various panels cited, the following summary from the recent decision ProCPR, LLC v. Name Administration Inc. (BVI), WIPO Case No. D2007-0823:

“Proof of a Common Law Mark – Legal Considerations

(i) The Panel readily accepts that an individual or entity may in certain circumstances be entitled to a common law trademark or service mark without registering the mark with the appropriate authority. To establish such a common law trademark, the Complainant must show that the claimed mark has achieved sufficient secondary meaning, or association with the Complainant. In Universal City Studios, Inc. v David Burns and Adam-12 Dot Com; WIPO Case No. D2001-0784, the three-member panel said:

“Secondary meaning is the consumers’ association of the mark with a particular source or sponsor and is established out of long association of the name with the business, whereby the name and the business have become synonymous in the mind of the public, submerging the primary meaning of the name in favor of its meaning as a word identifying that business.”

The Panel in the Universal City Studios, Inc. case held that, in assessing secondary meaning, a Panel should consider a variety of factors, including, but not limited to, the following:

(a) The Complainant’s advertising expenditures;

(b) Evidence of consumers linking the claimed mark to the claimed source (the Complainant);

(c) Evidence of any unsolicited media coverage of the product/claimed mark;

(d) Sales success;

(e) The length and exclusivity of the use of the mark.

(ii) The approach of the panel in Universal City Studios, Inc. was followed in a recent decision, Maritime-Ontario Freight Lines Limited v. Magic Domain, WIPO Case No. D2007-0202, where the panel said:

“The Panel feels it should, nevertheless, reiterate its concern that where Complainants rely on establishing common law trademark rights, the onus is fair and square on the Complainant to provide adequate evidence to support such a finding. The factors identified in [the Universal City Studios, Inc. case] provide a good guideline in that respect to Complainants and their legal advisers.”

(iii) Even if no response is filed in a proceeding under the Policy, the complainant must still furnish adequate proof of the rights on which it relies. Use of a mark sufficient to establish a secondary meaning of the kind described in the Universal City Studios, Inc. case is, to borrow the words of the panel in Brooke Bollea, a.k.a. Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383, “an objective matter entirely within the knowledge of and documentation available to a complainant.” The panel in Brooke Bollea noted: “In this proceeding such proof from 2002 – if it exists – could have been found and submitted by Complainant without the need to obtain anything from Respondent … In these circumstances no favorable inference is justified from a naked allegation of a legal conclusion, even in the absence of a denial from Respondent.”

(iv) Where the claimed common law mark is a dictionary word, or descriptive expression, which is not inherently distinctive, the task of the Complainant in establishing the necessary proof of secondary meaning is that much harder. As the panel put it in the very recent three-member panel decision in Orbis Holdings Limited v. Lu A Feng (First Respondent) and Orbis Search (Second Respondent), WIPO Case No. D2007-0515:

“Being a dictionary word, and not inherently distinctive, there is an onus on the complainant to present the Panel with compelling evidence of secondary meaning and distinctiveness through extensive use.”

See also the WIPO Overview at 1.7.

Application of Legal Principles to the Facts of this Case

The Panel considers that the Complainant has insufficiently satisfied the criteria for proving an unregistered trademark:

There is no evidence of the following secondary meaning factors:

1. the Complainant’s advertising expenditures;

2. any unsolicited media coverage of the Complainant’s services or activities;

3. the extent of the Complainant’s sales under the mark.

However, there is at least some evidence to indicate that since 1996, the Complainant has operated a show under the trade name “Erotica LA”. There is no evidence of its extent other than the assertion that it is the biggest show of its kind in the world. As was stated in the Brooke Bollea case, no favourable inference can be drawn from a naked allegation of a legal conclusion.

The Complainant’s claim to a common law trademark would not have been viable in 1998. The Panel must look at the situation at the time of filing the Complaint to ascertain whether the common law mark then exists.

The Complainant states that it has been operating this show annually for 11 years. For most, if not all, of those years, it has operated under the Erotica LA name. The Complainant asks why it would have used “erotica-la” as its domain name if that were not its tradename. However, a domain name is not of itself a common law trademark and the Complainant has not satisfied the tests for such. As was said in the Maritime-Ontario Freight Lines case, the onus is ‘fair and square’ on the Complainant to provide adequate evidence to support such a finding. It has failed to do so.

Because of the view reached by the Panel that there is insufficient proof of a common law mark, it is strictly unnecessary to consider the other criteria under paragraph 4(a) of the Policy. However, the Panel considers that, even if it had a common law trademark, the Complainant could not have succeeded in establishing bad faith registration.

B. Rights or Legitimate Interests

The Complainant gave the Respondent no rights or interests in the disputed domain name. Therefore, under paragraph 4(c) of the Policy, the onus shifts to the Respondent to show that he comes within one of the limbs of that paragraph.

There is just no proof that any one of the parts of paragraph 4(c) applies in the present case. The Respondent’s allegations under this heading are generalized and unclear. One would have expected some further documentation about his beauty contest in Los Angeles, other than his bare assertion and copies of his current website display.

Paragraph 4(c)(i) is the only possible heading on which the Respondent could rely but he has failed to discharge the burden of proof. He has not shown that before notice of the dispute he made demonstrable preparations to use the disputed domain name in a legitimate commercial activity. The Complainant would be entitled to succeed under this limb of paragraph 6(a) of the Policy.

C. Registered and Used in Bad Faith

The Panel is concerned that the disputed domain name was registered in 1998, some nine years ago. The longer the time a disputed domain name has been registered, the more difficult it is for a complainant to prove bad faith registration. There was no explanation for the Complainant’s delay in complaining about the Respondent’s domain name.

A complainant can claim an interest in a mark corresponding to a domain name, even when the mark was registered or came into being after the domain name had been registered. Nevertheless, delay in applying for relief under the Policy can make it difficult for a complainant seeking to prove registration in bad faith. A complainant has to prove bad faith registration as well as bad faith use.

The Complainant appears to have held an adult industry exhibition in Los Angeles in 1999 under the name Erotica LA and advertised it on the Internet in April/May 1999. This is after the disputed domain name was registered. The Respondent has admitted involvement in the pornographic industry. He received copies of the Complainant’s newsletter. There is no proof as to when.

There is insufficient evidence for the panel to infer that the Respondent knew of any trademark of the Complainant’s at the time of registration of the disputed domain name in 1998. Indeed, there was some evidence from the Respondent to suggest that the Complainant’s show in 1999 was called something else, even though it might also have been called Erotica LA.

In the Panel’s view, even if the Complainant would now be said to have a common law mark (which the Panel does not accept), there could not have been such a mark established in 1998. The Complainant’s show had then been going for only two years. One of the criteria for a common law mark is length of use. The two-year period would have been insufficient to have turned a trade name into a trademark on the meager evidence before the Panel.

Put another way, subject to limited exceptions, bad faith registration cannot be found if the domain name had been registered before the Complainant acquired trademark rights. See WIPO Overview 3.1 and cases cited therein and also Dreamgirls, Inc. v. Dreamgirls Entertainment, WIPO Case No. D2006-0609. The Panel is not satisfied that, in 1998, the Complainant was entitled to claim a common law mark. Nor is any passive holding of the disputed domain name sufficient evidence of bad faith registration by the Respondent when there was no trademark in being at the time of registration. Nor is there compelling evidence before the Panel that the Respondent’s aim in registering the domain name at that time was to take advantage of likely Complainant rights. See e.g., ExecuJet Holdings Ltd. v. Air Alpha America, Inc., WIPO Case No. D2002-0669, and other relevant decisions cited in Overview 3.1.

The Respondent’s conduct in more recent years, particularly in attempting to sell or rent the disputed domain name for a profit may indicate continuing bad faith use, as may his linking of the disputed domain name with some business of his own. He is likely diverting legitimate visitors into his own website who may think they are arriving at the Complainant’s website. This is conduct contemplated by the various examples of bad faith given in paragraph 4(c) of the Policy.

Although, had the Complainant succeeded in establishing common law rights, there may be evidence of bad faith use, the Policy also requires proof of bad faith registration, which is lacking – mainly because of the length of time since the original domain name registration. Consequently, the Complaint must fail under this limb of paragraph 4(c) as well.

10. Reverse Domain Name Hijacking

The Panel declines to make a declaration of reverse domain name hijacking on the unusual facts of this case as set out above. Although the Complainant failed to prove a trademark and although it brought the Complaint almost nine years after the disputed domain name had been registered, the equities of the case mitigate against such a declaration.

11. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Complaint be denied. The Respondent’s claim for a declaration of reverse domain name hijacking is also denied.

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Sir Ian Barker
Sole Panelist

Dated: September 13, 2007