Baccarat SA of Baccarat, France just won a UDRP on the domain name onlinebaccarat.com owned by Virtual Clicks of San Diego, California which may have been owned by the domain holder for as many as 12 years.

At the end of the day, the domain holder couldn’t prove to the panel satisfaction that they owned the domain name continuously since it moved to privacy a number of years back.  The other problem for the domain holder is that the landing page at some points had links to crystal rather than gambling.

The four UDRP loses that Robert Farris d/b/a Virtual Clicks had didn’t help either.

Here are the relevant facts and findings by the one member panel:

The Respondent operates a website at the disputed domain name which appears to offer for online sale a variety of products which appear on the home page to comprise essentially card or gambling related services.

The home page features items of jewelry as well.

The search function allows a visitor to type in “crystal” and sponsored links to other sites appear.

So also does a window for related searches which displays Waterford and Swarovski products, both very well-known manufacturers and suppliers of crystal.

These would appear to be pay-per-click (“PPC”) links or links that default to other online shopping websites.

The Respondent’s website does not appear to feature Baccarat crystal at all nor any online games for the card game commonly known as Baccarat. Typing Baccarat into the search window displays other websites for crystal products and also websites for card games.

The various windows on the website at the disputed domain name all have a banner at the top “the domain online-Baccarat.com is for sale” and direct inquiries to BuyDomains.com.

That website appears to be a warehouse that deals in selling domain names.

 

The disputed domain name was registered in the name of VirtualClicks.com in 2001.

Although there is no evidence to the point it is assumed it has been live (as opposed to being merely a parking site) since that time.

The Registrant was changed in April 2010 to Domains by Proxy, Inc. The Registrant was changed again in April 2012 to Virtual Clicks.

 

The Respondent relies on its registration of the disputed domain name since 2001.

It says the domain name of the Complainant <baccarat.com> has been registered for only 9 months. In contrast the Respondent has owned the disputed domain name for 12 years.

The Respondent does not address the change in Registrant in April 2010 nor later in April 2012.

It then says that the Complainant has previously failed to secure the domain name <baccarat.biz> so the contention is made that the root mark or sign “Baccarat” is generic (Baccarat S.A. v. Priority Software Inc., WIPO Case No. DBIZ2002-00081).

 

The Respondent asserts that the word, name or mark “Baccarat” connotes a card gambling game and points to a significant number of landing pages for Baccarat gambling sites.

 

In response to the Complainant’s assertion that the website at the disputed domain name enables a visitor to access other websites selling online the Complainant’s competitors’ crystal products, it says this is simply the Respondent using what it describes as “underdeveloped domain names with professional domain name parking services which pay a share of the advertising revenue they generate”.

The Respondent also responds to the Complainant’s reference to and reliance upon previous involvement by the Respondent in adverse UDRP decisions.

The Respondent does not address the change in Registrant in 2010 nor later in 2012.

The Respondent relies upon its registration of the disputed domain name now for exactly 12 years.

The Respondent raises a criticism of the Complainant for its contention that the Complainant has operated the website <baccarat.com> for several years whereas the WhoIs registration shows that domain name was registered less than a year ago.

There is nothing in this point. The issue is whether the Respondent has any rights or legitimate interests as defined by the Policy.

Here, too, the Respondent relies upon the failure by the Complainant to claim the domain name <baccarat.biz>.

A reading of the decision of that panel in that UDRP case shows that the respondent there was a business apparently engaged in promoting gaming online.

It had a number of other gaming related domain names all featuring the name of the particular form of gaming or gambling.

There was therefore no basis for confusion. Nor was the respondent there offering the domain name for sale. That case is therefore wholly different from the present and has no relevance.

The Respondent denies the relevance of the four other UDRP decisions involving the Respondent. It explains those on the basis that they contain domain names that were unique (not a highly generic root word such as “Baccarat”). It also says it owns over 10,000 domain names and four orders of transfer by UDRP panels is a minuscule proportion.

The Respondent, if it used the disputed domain name for offering services relating to online games and gambling, including the game of Baccarat, would likely have a defence. But that is not what it does.

As discussed in the previous section, it appears now at least to operate on a PPC basis with related links to sites that offer crystal products which compete with those of the Complainant. It also offers links to card gaming and gambling sites. The disputed domain name is also for sale.

It is not known for how long the Respondent’s associated website has been for sale, nor for how long it has been displaying links to sites offering crystal ware. That is more relevant under the following section. Nothing historical about the website at the disputed domain name has been put before the Panel by either the Complainant or the Respondent.

If the Respondent was offering solely information concerning online gaming and gambling including for the game Baccarat, as earlier indicated, it would have a defence.

However, it is quite clear that this is not the limit of its offerings. As it includes the links to third party sites including sites offering crystal ware for sale online, it must follow that at least at the present time, the Respondent cannot rely upon any business or trading operation known as or by reference to the trade mark in suit. Again, it is its actual use that matters. It is to be noted in particular that even with respect to the card games, the Respondent’s website is merely a pass through vehicle.

It is unclear how far back any activities of the Respondent reach whereby it has offered, even on a PPC basis, access to third party gambling or gaming sites, of which the Complainant could raise no complaint.

The documents annexed to the Response (Annexes 8 and 9) do not establish this. Recourse to Archive.org and WayBackMachine do not assist either. It is therefore not possible to establish whether the present impugned activities of the Respondent (the links to the Complainant’s competitors’ products) go back to prior to 2010 or have only arisen at around the time of the two Registrant changes in April 2010 and April 2012.

Thus, neither the Complainant nor the Respondent has adequately dealt with this element.

Addressing the principle adopted by most UDRP panels that the standard of proof is on balance of probabilities and that an asserting party bears that burden, the Complainant puts forward no direct evidence as to the historical position at registration of the disputed domain name in 2001, nor at any time thereafter when it may have become abusive through wrongful use, and whether in 2010 or in 2012. It has simply not shown when the Respondent began its offerings of links to third party sites selling crystal ware. Then again nor does the Respondent clearly address this. As set out above, Annexes 8 and 9 in the Response document do not assist.

The Respondent does however clearly assert, twice in its Response, that it has used the domain name since 2001 so the inference may properly be drawn that, Registrant details notwithstanding, this Respondent has been the owner of and responsible for the disputed domain name and the website at the disputed domain name for some 12 years with a seamless ownership during that time.

However, at the same time the Respondent has adapted its website so as to include as click-through links to third party sites which offer for sale crystal ware of manufacturers who compete with the Complainant. This, even when coupled with certain elements of potentially legitimate use (online gaming or gambling) cannot be considered legitimate use for purposes of the second element of the Policy. The Panel thus finds the extension of the online offerings in this way to be in material breach of the Policy.

The Complainant recognizes this. It relies upon its mark as being a famous mark and draws the inference that the Respondent must have known of this when (and if) it registered the disputed domain name in 2001 and that it did so for some ulterior purpose.

That of course assumes that at the time of registration 12 years ago, the Respondent was using its website much in the manner it does today. There is simply no evidence to the point nor is there any evidence which may be peripheral and from which an appropriate inference could be drawn.

The Complainant also relies upon other registrations which appear to be associated with the Respondent at least to the extent of the same address. It would be unsafe for the Panel to rely upon such material without an inquiry into the circumstances relating to those registrations. They therefore have been put to one side.

More telling are the four other UDRP decisions and in particular the decision in Russell H. Fish v. Robert Farris d/b/a Virtual Clicks, WIPO Case No. D2005-1035. That decision was not directly responded to by the Respondent in this matter. In Russell H. Fish v. Robert Farris d/b/a Virtual Clicks, the panel described the business of the respondent, as no doubt in evidence before the panel in that decision. The Respondent in the present case does not dispute or deny the same business purpose, methodology or model operates in the present case. In that the Respondent has 10,000 or more domain name registrations and has not denied the nature of its business operation as the same as in Russell H. Fish v. Robert Farris d/b/a Virtual Clicks, the inference can be drawn that it is the same or similar. This Panel gratefully adopts the description of the business model as set out in Russell H. Fish v. Robert Farris d/b/a Virtual Clicks.

The Respondent denies registration of the disputed domain name 12 years ago for the purposes of denying the Complainant the same or similar domain name. It says there is no evidence of such a pattern of conduct and that it is an absurd contention. It also says that the fact of the disputed domain name being for sale is irrelevant. It has sold hundreds and hundreds of URLs in its time.

The Respondent also relies upon the decision in Phase Eight (Fashion & Designs) Limited v. OCC Domain Admin, WIPO Case No. D2012-2502, holding that the longer a domain name has been registered the more difficult it is for a complainant to prove registration in bad faith. There the domain name had been registered in April 2004 and the complaint was made in December 2012, some 8 ½ years later. Here, the time is considerably greater by almost 50% more, namely 12 years, again assuming that is when the Respondent first acquired the disputed domain name.

The facts and circumstances in Phase Eight (Fashion & Designs) Limited v. OCC Domain Admin were quite remarkable and not at all analogous to those in the present case. There however, as in the earlier decision that was relied upon by the panel in Phase Eight (Fashion & Designs) Limited v. OCC Domain Admin, there were serious concerns about the delay in complaining (there 8 ½ years, here 12). There were also other disquieting features before the anel in Phase Eight (Fashion & Designs) Limited v. OCC Domain Admin that do not exist here. The panel in that decision also noted that there was no evidence of any attempt to sell the domain name and no evidence of trading by the respondent in domain names for sale or other improper purpose.

It is a concern that in this case the Complainant has put on no direct evidence of the Respondent’s intention or inferred intention when the disputed domain name was initially registered in 2001, if that is when the Respondent first acquired it. Nor has it explained at all the delay. That may be for good reason and it may be that the links presently on the associated website are only of recent origin. The Respondent’s website may originally have been registered and operated purely for providing links to online gaming and gambling including the game of Baccarat. It is however no part of a Panel’s function to speculate. It is for the parties to the Complaint to put on such evidence as they have available to them and seek to rely upon in support of their respective and rival contentions.

The present difficulty causes the Panel to have to decide whether, regardless of purpose at assumed initial registration, subsequent renewals by the Respondent (again assuming initial registration in 2001 and no break in the Respondent ownership) including its current content could constitute registration in bad faith. This would be necessary because, if the Respondent indeed first acquired the disputed domain name in 2001 and has owned it since, there is simply no evidence either directly or otherwise, from which the Panel can conclude that the initial registration of the disputed domain name in 2001 was in bad faith.

The preponderance of UDRP decisions favour the view that subsequent renewals do not of themselves and without more constitute new registrations. However, something more if it exists may do so. That something more can be a change of Registrar, sale or transfer of the disputed domain name, repeated offers for sale. There does not appear to be any evidence in this case that the Registrar details have been changed for such a purpose, indeed there is no evidence of any Registrar change. Nor does it appear as if the ownership of the disputed domain name has changed and nor is there any direct evidence as to when any links to third party sites offering for sale online crystal ware were first loaded on to the website at the disputed domain name.

All that has happened is that a WhoIs search shows the Registrant identity changed in or about April 2010. On original registration the Registrant was VirtualClicks.com. In April 2010 it was changed to Domains by Proxy, Inc.

Following Registrar clarification there is now the evidence of a further Registrant change in April 2012. That is all theevidence put before the Panel by the Complainant. Most importantly there is nothing at all to indicate or from which to draw an inference that the change in Registrant was accompanied by the offering of the disputed domain name for sale, the inclusion for the first time of links to the Complainant’s competitors’ products or anything else to enable a finding of bad faith.

Further, the first change of Registrant occurred in April 2010, 3 years before the present Complaint was lodged. Once again the delay has not been explained by the Complainant.

The Registrant change in 2012 has not been explained. In April 2012 the Registrant changed yet again, this time to Virtual Clicks. It appears the Complainant was not aware of this as the original Complaint was against Domains by Proxy, Inc.

The burden is clearly on the Complainant to establish registration and use in bad faith. The Complainant does not adequately address this issue. It has been left to the Panel to consider what approach will therefore be adopted.

On the question of use in bad faith, it is relatively easy to conclude, in light of the current and assumed recent use of the website to enable links to third party websites that offer for sale crystal products, coupled with the current offer for sale of the disputed domain name, that it is now being used in bad faith.

Can the two concepts of registration and use in bad faith elide so that the notion and finding of use in bad faith can support a finding of registration in bad faith?

That has been described in other UDRP decisions as the “Mummygold approach” based on the decision in City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE, WIPO Case No. D2009-0643. This approach was discussed in detail by the panel in the later decision in Eastman Sporto Group LLC v. Jim and Kenny, WIPO Case No. D2009-1688 (the “Eastman Sporto Group decision”). This Panel again gratefully acknowledges the discussion of the Mummygold principle in the Eastman Sporto Group decision.

The Mummygold approach adopts, it seems to this Panel, the concept that in initially registering and subsequently re-registering or renewing registration under paragraph 2 of the Policy, the registrant warrants in an ongoing manner, that the continued registration does not violate the rights of any other party.

The decision in Mummygold has its critics, including the panel in Eastman Sporto Group. Having regard to the particularly persuasive analysis by the panel in that decision this Panel, and with some reluctance, finds that the two stage test or requirements of paragraph 4(a)(iii) of the Policy is indeed a two stage and temporally distinct process. Registration, to be abusive, must be decided as at the date of registration. It is wrong to justify, after the event, registration which may well be legitimate, as illegitimate just because subsequent use (and perhaps many years later) may have become abusive. The two concepts of registration and use in bad faith are not, in this Panel’s view, to be conflated.

That however is not the end of the matter.

In the Eastman Sporto Group decision, the panel said of renewals of registration that the introductory clause of paragraph 2 of the Policy sets it applicability as a matter of contract. A registrant provides its undertaking that by applying to register a domain name or by asking a registrar to maintain or renew a domain name registration certain conditions will apply. This, unlike the covenant type interpretation necessary for the Mummygold approach, is a typical once only representation as at a discrete date, or rather in this case at successive discrete dates. Paragraph 2 of the Policy it was noted does not distinguish between the initial date of registration and subsequent request for renewal. As a result, the undertaking by the Registrant by its terms applies as of all such dates including at each date of successive registrations.

Paragraph 2 of the Policy provides:

“2. Your representations. By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.”

The panel in Eastman Sporto Group referred also to an earlier UDRP decision PAA Laboratories GmbH v. Printing Arts America, WIPO Case No. D2004-0338 that:

“… this Panel would have seen no good reason for a renewal not to be considered as equivalent to ‘registration’ in the context of the objectives of the Policy. If the renewal had not been effected the disputed domain name would have lapsed and been available to others. The abusive refreshing of the original registration is an act which this Panel considers should be an act of a kind encompassed by paragraph 4(a)(iii) of the Policy. The benefit of an original good faith registration should not be perpetual to the point where it can cloak successors in title and successors in ‘possession’ long after the original registration would have expired.”

In applying that statement in PAA Laboratories GmbH v. Printing Arts America the panel in Eastman Sporto Group said:

“For the reasons given in the last sentence of the quotation from PAA Laboratories, I doubt that ICANN intended that all renewals could be made without regard to a Registrant’s paragraph 2 undertaking.”

The Panel in Eastman Sporto Group went on:

“If a respondent has registered a domain name for a legitimate business purpose, and another business comes along that chooses to use the same name, should he not be allowed to take advantage of that fact? The answer to that question depends upon how exactly the domain name is used. If he merely intends to continue to do what he has always legitimately done, then it is difficult to see how that continued use could be characterized as use in bad faith.”

In the present case there is some evidence of a change of proprietorship but no other details that might signify conduct or use that tells against the present Respondent. The evidence amounts to no more than current use being abusive, but not necessarily original registration. At best there is only the change in Registrant details in April 2010 and then again in April 2012.

In Eastman Sporto Group and in other UDRP decisions referred to in Eastman Sporto Group the panel there held that the operative words that determined the decision in that case were “the answer to that question depends upon how exactly the domain name is used. If [the respondent] merely intends to continue what he has always legitimately done, then it is difficult to see how that continued use could be characterized as use in bad faith”. The words to be emphasized are “if he merely intends to continue to do what he has always legitimately done”.

Thus the panel there held that the undertaking given by the respondent in terms of paragraph 2 can be construed as applicable not only at the time of original registration but can also be applicable at the time of each successive registration or renewal of registration. By this means, what was once a lawful or legitimate registration may become unlawful or illegitimate or abusive. Each case may necessarily depend upon its own facts. The distinguishing facts in the present case are the now current use by the Respondent (but from an indeterminate date) of the website at the disputed domain name enabling links to third party websites offering products competing with those of the Complainant. In addition to this is the fact that the Respondent does not itself appear to offer any gambling or gaming on its website but those activities are once again by pass through clicks to third party websites. Above all else, is the fact that the disputed domain name is for sale. However, what governs any findings of fact is the correct interpretation of the Policy.

At this point it is important to reflect that the disputed domain name was originally registered as onlinebaccarat.com  and of course remains so registered. Baccarat, as outlined earlier, is a very well- known card or gambling game.

The prefix “online” merely indicates that the game may be accessed or played electronically via the Internet. Such gaming or gambling sites are manifold on the Internet so the name “onlinebaccarat” is merely descriptive of such a service. Of such a service the Complainant could have no basis whatever for complaint, if the service was and remains limited to electronic gaming and gambling.

For the Complainant to be able to rely upon the paragraph set out above in paragraph 4(b)(iv) of the Policy would require the Panel to be satisfied that as at April 2010, when the Registrant changed it was at about the same time as the associated website became to be used intentionally to attract for commercial gain visitors who through the click-through system would be able to access websites of supplies of crystal ware, in competition with the Complainant. Alternatively it could be contended that this was deceptive as indicating an association with the Complainant, contrary to the fact.

In the alternative, the Panel would need to be satisfied that as at the reversion back to the original Registrant in April 2012, it was at or about this time that any offending activity was commenced on the website at the disputed domain name.

Given the descriptive nature of “onlinebaccarat” and that the registration and ownership go back to 2001, there is simply no basis to assume original registration or use shortly thereafter was in bad faith.

However, the facts are clearly more complex as at April 2010 or April 2012 when the Registrant changed. That it was in the name of Domains by Proxy, Inc for some two years is simply unexplained. It is to be inferred that the brief hiatus of some two years was of no particular significance to the Respondent as the Respondent unequivocally claims twice in its Response that it registered the disputed domain name 12 years ago and has “continuously owned <onlinebaccarat.com> for almost 12 years”.

This Panel accordingly assumes that the present Respondent has indeed owned the disputed domain name since its original registration in 2001, including during the two years it was in the name of Domains by Proxy, Inc. That is simply accepting the assertions of the Respondent in its own Response, where it appears on two separate occasions.

In light of the unexplained hiatus of two years when the disputed domain name was registered in the name of Domains by Proxy, Inc the Panel is constrained to hold, by virtue of paragraph 4(b)(iv) of the Policy and as explained in the sections above, that at some point in time, not identified by either the Complainant or the Respondent, the Respondent began placing on its associated website links to products of competitors of the Complainant.

Such conduct is clearly misleading.

It has nothing whatever to do with online gaming or gambling sites and is simply an adjunct offering created at some indeterminate point in time. It is therefore unclear as to when these links to third party crystal manufacturers or vendors were created by the Respondent. It may not matter, for at some time the perfectly legitimate registration and use of onlinebaccarat.com with links to gaming and gambling sites became abusive. It may be that this was between 2010 and 2012 when the registration was in the name of Domains by Proxy, Inc. It is not stated in the Policy that the date or time at which an original registration becomes abusive is critical.

The disputed domain name is for sale and the Respondent acknowledges that it owns more than 10,000 domain names and websites. It also acknowledges that it “hosts underdeveloped domain names with professional domain name parking services which pay a share of the advertising revenue they generate” (one assumes to the Respondent). Further, the Respondent states it “has a very active URL sales component to its business. It has sold hundreds and hundreds of URLs during the course of its existence”.

Thus, and by a very slender margin, this Panel concludes that the disputed domain name is now being used for the purposes of attracting business by confusing visitors to the website into thinking the disputed domain name and associated website are in some way associated with the Complainant or alternatively that the Respondent is gaining some commercial advantage by virtue of its links now to third party websites offering for online sale crystal ware but not that of the Complainant.