Sébastien Paches v. Dvlpmnt Marketing, Inc.
WIPO Case No. D2019-0742
May 14, 2019
There has been a spate of recent cases before WIPO where the disputed domain name has been registered by the respondent well before the complainant acquired trademark rights. In such instances, there are often unsurmountable difficulties for the Complainant in succeeding.
The following case, in which the Complainant was denied, not only highlights the difficulty of proving bad faith use and registration in such circumstances, but also gives insights into both the limited cases in which panels may find bad faith registration and use, and when a Panel may find Reverse Domain Name Hijacking (RDNH) against the complainant.
The Complainant, a budding businessman, registered the trademark PACHES with the Swiss trademark office on December 2, 2016, with the intention of selling clothing under the same name.
The disputed domain name <paches.com>, was acquired by the Respondent, a dealer in domain names, on September 17, 2013.
It is easy to understand the Complainant’s interest in the domain name, but as the parties could not agree on a price, proceedings were commenced under the UDRP.
The panel had no issues finding that the domain name was confusingly similar to the trademark, but the Complainant ran into insurmountable troubles convincing the panel the domain name had been registered and used in bad faith.
The complainant offered a weak and unconvincing argument based solely on the fact that the Respondent’s business model was to buy and resell domain names, that it was unwilling to sell it for the price offered by the complainant, that the domain name was currently parked and that the respondent was engaged in cybersquatting.
But did that show a bad faith intention? Not really.
The Panel stressed there “was no evidence at all why the respondent could or should have known of the complainant.” Given the complainant’s lack of reputation (“anywhere” as the Panel put it), and the fact the domain name was registered well before trademark rights were acquired, there was no basis whatsoever for a finding of bad faith. That decision is well in line with Section 3.8.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions.
In particular, in the few cases in which Complainant’s claims have succeeded when domain registration precedes the trademark acquisition, it is almost exclusively when respondents have registered domain names in anticipation of trademark rights being accrued, or in cases where the complainant is “famous” or holds a “a distinctive and long-standing brand” and other aggravators of bad faith are present. That was not so in the present case.
As to cybersquatting, the panel noted that “pay per click [use] is not per se use in bad faith,” and can only be considered such when it directly targets the complainant. As such, it is abundantly clear that the complainant had little chance of ever winning this case.
As you know, this is not the first time (and it will probably not be the last time), when we say that this is a case that has been lost on the evidence. Allegations made must be supported by the facts and in this case the facts were just not there.
Reverse Domain Name Hijacking (RDNH)
Where a complainant loses a case, the panel may find Reverse Domain Name Hijacking against the complainant if it finds “that the complaint was brought in bad faith” or to “primarily harass the domain name holder.” In this case, the panel acknowledged that the “case should never have been brought and the complainant had no prospects whatsoever of succeeding.” But that, of course does not mean the claim was brought to harass the Respondent. The panel therefore decided not to make a finding censuring the Complainant for RDNH.
While panels have found RDNH in similar cases where the registration of the website well preceded the trademark acquisition of the complainant, the Panel, pointing to the fact that the complainant was unrepresented, decided, on the balance of probabilities that the Complainant failed to understand the Policy, rather than deliberately acted in bad faith. Clearly, this outcome highlights that panels depend on the evidence before them, and demonstrates a reluctance to find RDNH where there is a plausible scenario that the complainant did not make the claim in bad faith, based on the evidence available.
 See Ontario Inc. operating as Tech Sales Co. v. EXAIR Corporation, WIPO Case No. D2009-0567, <nexflow.com>et al., (Transfer);
Stoneygate 48 Limited and Wayne Mark Rooney v. Huw Marshall, WIPO Case No. D2006-0916, <waynerooney.com>, (Transfer);
Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc), WIPO Case No. D2003-0320 (Transfer);
Madrid 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598 (Transfer);
General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Center Online, WIPO Case No. D2003-0845 (Transfer).
 See Donald J. Trump v. SD Dillon Case No. D2015-0077., <trumpcard.com> (Transfer);
Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). (Transfer).
 See The WIPO Jurisprudential Overview 3.0 Paragraph 4.16