Francois Carrillo Wins UDRP On ZUT.com
Francois was represented by Zak Muscovitch of The Muscovitch Law Firm, Canada.
Here are the relevant facts and findings by the three member panel:
“The Complainant is the owner of the following trademarks:
(i) ZUT, International Trade Mark No. 701302 (registered October 20, 1998);
(ii) ZUT, U.S. Trade Mark No. 2881956 (filed October 30, 1999 and registered September 7, 2004); and
(iii) ZUT, Community Trade Mark No. 5951843 (registered May 21, 2007) (together, the “Trade Marks”).
“The Respondent is Francois Carrillo, a French citizen residing in Juvignac, France. The Respondent is the administrator of the business, Cybertonic, which was registered with the Tribunal De Commerce De Montpellier on August 1, 2004.”
“The Respondent purchased the Disputed Domain Name at a Sedo auction in 2008 for EUR 8,600.”
“There is no evidence that the generic Disputed Domain Name was registered for the purpose of profiting from the Complainant’s trade mark rights, therefore, there can be no finding of bad faith registration or use (see e.g., Ultrafem, Inc. v. Warren R. Royal, NAF Claim No. FA097682). On this point, the Respondent submits the following:
(i) it was not aware of the Complainant’s trade mark rights until it received notice of the Dispute;
(ii) it never approached the Complainant to sell the Disputed Domain Name;
(iii) it has not interfered with the Complainant’s business; and
(iv) it never attempted to intentionally deprive the Complainant of the Disputed Domain Name, the Complainant could have purchased the Disputed Domain Name itself at the auction, or could have purchased it at any time since its original creation date.”"
“”The Respondent submits that Mr. Gallinari (who is not counsel, but a domain name specialist) approached the Respondent and made offers to purchase the Disputed Domain Name without any solicitation from the Respondent. ”
“”He did not identify himself as being associated with the Complainant and did not assert any trade mark rights. The Respondent replied to the first offer with “Zut!”, to express his displeasure at the offer. The Respondent thought he was replying to an automated or general offer and not a genuine offer to purchase the Disputed Domain Name for market value.”"
“”The Complainant has not provided any facts to support its allegation of bad faith registration. ”
“Accordingly there is no basis for a finding of bad faith registration ”
“The Complainant’s submissions on this element can be summarized as follows: The Complainant owns a trade mark registration for “ZUT” and the Respondent, who is not commonly known by that name, is using the Disputed Domain Name without license from the Complainant.”
“This barely establishes a prima facie case. ”
“The Respondent has provided substantial submissions to rebut the Complainant’s prima facie case, and in the opinion of the Panel, succeeds in doing so for the reasons set out below.”
“The Disputed Domain Name consists of a common and widely used dictionary word in the French language.”
“The mere registration of a domain name that is comprised of a common dictionary word may not of itself confer rights or legitimate interests in the domain name.”
“Generally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning (and not, for example, to trade off third-party rights in such a word) ”
“Both the Respondent and the Complainant have referred to the fact that the Disputed Domain Name leads to a website which advertises the Disputed Domain Name for sale by auction. The Panel has verified this use through an examination of the relevant website.”
“The sale of domain names can be legitimate interest if a respondent was not aware of a complainant’s trade mark rights”
The Complainant has provided no evidence that the Respondent was aware of its trade mark rights at the time it registered the Disputed Domain Name.
The Respondent is a native French speaker, and resides in France.
“Zut” is a common French word.
“The Complainant’s Zut brand of perfume was launched in 1948, discontinued in 1954 and re-launched in 1998. Although well-known in the 1940s, the brand is not so well known today.”
“There is no evidence that the Respondent was otherwise targeting the Complainant or its Trade Marks. This conclusion is supported by the fact that part of the Respondent’s business is to register dictionary words in order to take advantage of the commercial value of such words as domain names, purchased the Disputed Domain Name at an auction for a substantial sum of money, and owns many domain names.”
“On the facts of this case, the Panel concludes that the Respondent purchased the Disputed Domain Name not for its association with the Complainant’s trade mark, but because of its dictionary meaning. The Respondent’s subsequent use and conduct is consistent with that view.”
“For the Panel to decide in favour of the Complainant on this element, the Panel would in effect be deciding that a domain name owner who acquires a dictionary term domain name in good faith, and then warehouses the domain name, does not have rights or legitimate interests in the domain name. This Panel is not prepared to reach such a broad conclusion.”
“The Respondent’s brief use of the Disputed Domain Name to host a “hangman” type game also evidences bona fide use, but the Panel does not need to rely upon such use for the purposes of this element.”
“In light of the above, the Complainant has failed to show that the Respondent lacks a legitimate interest. The second element of the Policy is not satisfied.”
“There is no evidence of any bad faith registration or use of the Disputed Domain Name by the Respondent. Specifically, the Panel concludes that:
(i) the Respondent was unaware of the Complainant’s trade mark rights;
(ii) the Respondent has never approached the Complainant to sell the Disputed Domain Name;
(iii) the website which the Disputed Domain name redirects to does not sell goods/services which compete with the goods sold under the Trade Marks;
(iv) the website which the Disputed Domain name redirects is not a pay-per-click website; and
(v) the Complainant provided no evidence that the public has been confused or misled by Respondent’s use of the Disputed Domain Name.”
“In light of the above, the Complainant has failed to show that the Disputed Domain Name was registered and is being used in bad faith. The third element of the Policy is not satisfied.”
The panel denied the domain holders request for Reverse Domain Name Hijacking (RDNH) saying that:
The Rules define RDNH as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”. The onus of proving this is generally on the Respondent.”
“This is not an appropriate case for such a declaration. Although the Complainant provides little evidentiary support for its allegations, it appears that the Complainant genuinely believes that the Respondent is attempting to profit from a bad faith registration of the Disputed Domain Name. The Panel notes that the fact the Disputed Domain Name was being offered at such a high price may have led the Complainant to believe that this was an offer to sell in excess of out-of-pocket expenses.”