A one member WIPO panel ruled in the favor of the domain holder in a case published today on the domain name Artek.com
The complaint was brought by Artek oy ab of Helsinki, Finland founded in 1935.
The Complainant has continuously used the sign “artek” in business since it was founded.
“The Complainant’s business is known worldwide as an innovative contributor to modern design and furniture, building on the heritage of the famous architect and designer Alvar Aalto”.
“The Complainant is the owner of numerous registered trademarks globally for the word mark ARTEK including Canadian trademark no. TMA544135 filed on May 2, 1997 and registered on April 25, 2001; European Community trademark no. 518795 filed on April 16, 1997 and registered on February 4, 2000; and United Kingdom of Great Britain and Northern Ireland trademark no. 1192316 filed and registered on March 17, 1983”.
“The Respondent is a software developer presently based in Canada and is the owner of a software development company.”
“The Respondent’s country of origin is Russian Federation.”
“Artek” (in Cyrillic, “Арте́к”) is the name of a famous former Young Pioneer camp in Ukraine, originally established in 1925 as a vacation or summer camp for “Young Pioneers of the Soviet Union”.
Today, Camp Artek is an international children’s center engaged in the provision of educational camps for disadvantaged and gifted children. The Respondent states that he sent his son to Camp Artek in 2007 and provides an associated group photograph.
On September 19, 2010, the Respondent purchased the disputed domain name from the previous registrant for the sum of USD 2,500.
An entry from the “Wayback Machine” shows that on or before May 1, 2011, the Respondent posted two YouTube-hosted videos on the homepage associated with the disputed domain name, the first regarding Camp Artek in 1940 and the second being congratulations offered by Russian astronauts to Camp Artek on its 60th anniversary in 1985.
On August 20, 2011 the website associated with the disputed domain name was hacked and the Respondent took it down. The Respondent says that he has continued to develop the said website on a local computer.
On November 29, 2011, April 29, 2012 and August 7, 2012, the Respondent received unsolicited offers from third parties to purchase the disputed domain name.
On April 23, 2012, the Respondent received an unsolicited offer to purchase the disputed domain name from the Complainant’s representative (although the email concerned did not disclose the Complainant’s interest). The Respondent ignored all of the said approaches however posted a notice on the website associated with the disputed domain name stating “Artek.com / This domain is not for sale”.
“In the present case, the Respondent has demonstrated to the Panel’s satisfaction that the Respondent acquired the disputed domain name on or about September 19, 2010 and accordingly this is the date on which the question of registration in bad faith should be assessed, notwithstanding the fact that the disputed domain name was originally created on November 23, 1998”.
“The essence of the Complainant’s case on this topic is first that the disputed domain name was registered in bad faith because the Respondent primarily intended to sell it to the Complainant or to the Complainant’s competitor, secondly that the disputed domain name has been passively held, and thirdly that the disputed domain name has been used in connection with pay-per-click advertising which targeted the Complainant’s trademark”.
“In the Panel’s view, the Complainant’s screenshot of the website associated with the disputed domain name dated June 23, 2007, showing pay-per-click advertisements targeting the Complainant, must be disregarded for the purposes of the Panel’s assessment of bad faith on the basis that it pre-dates the Respondent’s ownership of the disputed domain name.”
“Accordingly, there remains the question of the Respondent’s intentions regarding a sale of the disputed domain name and the alleged passive holding thereof.”
“With regard to the Complainant’s case that the Respondent registered the disputed domain name with intent to sell it to the Complainant, the Panel notes that the Complainant has not produced any evidence that the disputed domain name was ever offered for sale by the Respondent either to the Complainant or to any third party.
It is clear from the material that the Respondent has presented that he has received no less than four unsolicited approaches regarding a possible sale and has ignored all of these.
Furthermore, there is no evidence in the record that the Respondent ever listed the disputed domain name for sale either on the website associated with the disputed domain name or on online domain name marketplaces.
For his part, the Respondent vehemently denies registering the disputed domain name with intent to sell it to anyone, whether the Complainant or otherwise.
The Respondent also produces evidence that he placed the “not for sale” notice on his website in response to the various inquiries.
Finally, the Respondent produces some limited evidence that his acquisition of the disputed domain name relates to its association with the famous Camp Artek which the Respondent says both he and his son attended. In all of these circumstances the Panel considers that the Complainant has failed to prove on the balance of probabilities that the Respondent intended to sell the disputed domain name to the Complainant.
Panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa. Some panels have also found that the concept of passive holding may apply even in the event of sporadic use, or of the mere “parking” by a third party of a domain name (irrespective of whether the latter should also result in the generation of incidental revenue from advertising referrals).”
In the present case, the disputed domain name is not exactly passively held although its use since acquisition by the Respondent could be described as at best intermittent.
Considering the examples of cumulative circumstances given in paragraph 3.2 of the WIPO Overview 2.0, the Complainant’s trademark is certainly well-known, however the Respondent has filed a fulsome response, the essence of which is that it is his association with Camp Artek which motivated his acquisition of the disputed domain name and not the Complainant’s trademark.
The Respondent does not deny that the use of the disputed domain name has been intermittent since he acquired it however he has explained this by reference to the hacking incident of August 2011, regarding which he provides supporting evidence. While the Respondent may not have replied to the Complainant’s inquiry regarding a possible sale of the disputed domain name, there is no indication on the record that the Respondent has taken any steps to conceal his identity.
In the circumstances of the present case, however, the Panel finds that the Complainant has failed to prove on the balance of probabilities that the disputed domain name was registered and used in bad faith and thus that the requirements of paragraph 4(a)(iii) of the Policy have not been satisfied.