BARBET of Spain, ust grabbed the domain privata.com which was registered and has been owned by the domain holder since 1999.
The Complainant didn’t register its domain name privata.es, until August 6, 2001
The Complainant is a Spanish clothing company, which is engaged in the design, manufacture and sale of clothing (and accessories) under the “Privata” name.
“The Complainant is the proprietor of a number of trade mark registrations of or including the name “Privata”, the earliest of which is Spanish registration No. 980325 PRIVATA filed on July 14, 1981 in class 25 for clothing and granted on July 20, 1982.”
“The Complainant acquired the rights to the “Privata” clothing brand from its predecessor in late 2000.”
According to the record on June 20, 2013, nominalia, the registrar for the complainant’s domain name <privata.es>, sent an email to the respondent stating that it was interested in purchasing the domain name.
On July 3, 2013 a company named namecase.com claiming to be a specialist in buying and selling domain names, emailed nominalia stating that it had been approached by the respondent and informing nominalia that the price for the domain name was $40,000.
The correspondence appears to have culminated in an offer by nominalia on July 12, 2013 to pay $3,000 for the domain name, an offer which was not acceptable to the domain holder and this UDRP followed.
It did not help the domain holder that it had lost several previous UDRP’s
“The unchallenged evidence of the Complainant is that “privata” is not a dictionary word in the English or Spanish languages and that it is appropriate to focus on Spanish because the Respondent has a track record of registering domain names with Spanish connections.”
“On what basis could the Respondent be said to have any rights or legitimate interests in respect of the Domain Name?
Self-evidently, “Privata” is not the Respondent’s name.
Moreover, the Respondent is not making any active use of the name “Privata” save for the fact that the advertising links on the webpage to which the Domain Name is connected refer to various “Privata” entities
In the view of the Panel, the Complainant has made out a prima facie case requiring an answer from the Respondent.
In the absence of any explanation from the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name for the purposes of paragraph 4(a)(ii) of the Policy.
The Complainant contends that the Respondent registered the Domain Name in 1999 knowing of the existence of the Complainant’s predecessor’s trade mark PRIVATA and with intent to sell the Domain Name at a profit to the owner of the brand (or one of the owner’s competitors) within the meaning of paragraph 4(b)(i) of the Policy.
The Complainant places emphasis on the fact that the Respondent’s name (as identified on the Registrar’s WhoIs database) ends “domain for sale”.
However, the fact that a domain name registrant registers a domain name solely for the purpose of selling it at a profit is, of itself, of no significance.
The Respondent is clearly a domain name trader.
Trading in domain names, as such, is not an objectionable activity within the terms of the UDRP.
For it to be objectionable under the UDRP, the registration has to have been made with a view to exploiting the Complainant’s trademark, whether for commercial gain or in order to cause damage to the Complainant.
The Panel is satisfied on the unchallenged evidence of the Complainant that the Respondent registered the Domain Name with knowledge of the PRIVATA trade mark, the rights to which were acquired by the Complainant in 2000, and with the intent of exploiting the value of the trade mark.
In particular the evidence of the previous UDRP decisions going against the Respondent .
Each of those cases involved Spanish complainants whose trade marks had been adopted by the Respondent for the domain names in dispute in those cases.
Moreover, one of the domain names in question, atll.com, was registered in 1999 only a few months after the Domain Name was registered. It is this fact, which has swung the Panel in favour of the Complainant in this case.
It is possible, of course, that the Respondent has thousands of domain names of which the Spanish group only constitutes an insignificant minority and that the Respondent registered the Domain Name for its significance as a Latin word and for no other reason.
While the Panel recognizes that as a possibility, the evidence suggests to the Panel the probability that the Respondent has a penchant for Spanish trade marks and had the Spanish PRIVATA trademark in mind at time of registration. Were it otherwise the Respondent could so easily have come forward with an explanation, but has instead decided not to participate in this administrative proceeding.
That deals with registration in bad faith, but what about use in bad faith? To succeed, the Complainant needs to demonstrate on the balance of probabilities, not only bad faith registration, but also bad faith use.
The Complainant contends that the Respondent’s intention was to sell the Domain Name to the owner of the trade mark. If that were so, the Respondent has been extraordinarily patient waiting 14 years before naming a price and even then only after having been approached by the Complainant
Nonetheless, if the Respondent had succeeded in obtaining the price of USD 40,000 (or the reduced price demanded of USD 37,500), the wait would have been well worthwhile, so the Panel does not discount the idea altogether.
Alternatively, it may be that the webpage to which the Domain Name is connected is deriving revenue for the Respondent. However, having found that the Respondent registered the Domain Name with the Complainant’s trade mark in mind and with intent to exploit the trade mark value of the Domain Name as contended for by the Complainant, the Panel finds that at the very least the Domain Name constitutes an abusive threat hanging over the head of the Complainant and therefore a continuing abusive use.
In light of the above, the Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.””