Fortrend Group LlC of Port Orange, Florida, whose website is located at Theprive.com, lost its bid to grab the generic domain name Prive.com

Unfortunately  the panel did not find Reverse Domain Name Hijacking and even failed to discuss the issue although the complainant only started in business in 2008, only received a  trademark in 2010 and the domain name was registered in 1996 and of course the word Prive is generic the English translation of the French word private.

Of course the domain holder didn’t help by not responding and asserting when the registered or obtained the domain name.

Here are the relevant findings by the one member panel:

“”On July 11, 2013, the Complainant’s attorney emailed the Respondent advising that it has been instructed to pursue acquisition of the disputed domain name, now that the US and Canadian trade mark oppositions had been resolved. The attorney stated that this could be accomplished either through a voluntary transfer or else a UDRP proceeding seeking mandatory transfer of the disputed domain name due to “previous and ongoing trademark infringement committed through your use of the PRIVE mark”. The attorney added that that its client would be willing to consider a reasonable offer for the disputed domain name but that “the price you offered when we originally negotiated several years ago is not acceptable”. There is no evidence indicating that the Respondent replied to that email.

“The WhoIs information shows that the disputed domain name was registered on December 1, 1996.”

“If the Respondent was the party who first registered the disputed domain name in 1996, then the registration occurred some twelve years before the Complainant says it started trading under the name “Privé” and fourteen years before the Complainant applied for its registered trade mark, and so the Respondent could not at that time have contemplated the Complainant’s then non-existent right.”

“The Complainant is required to prove its case on the balance of probabilities – see paragraph 4.7 of WIPO Overview 2.0. This is notwithstanding the Respondent’s failure to respond – see paragraph 4.6 of WIPO Overview 2.0.”

“If it is the Complainant’s case that the Respondent acquired the disputed domain name after the Complainant had acquired rights in the name “Privé”, then it is the Complainant’s responsibility to make this argument and supply supporting evidence. This is typically done by means of archive WhoIs printouts showing evolution of ownership of the disputed domain name. However, the Complainant does not even address the issue of when the Respondent acquired the disputed domain name, let alone supply supporting evidence. ”

“The Complaint must therefore fail on this ground alone.”

“According to the record before the Panel, the earliest date on which the Respondent is shown to be the owner / controller of the disputed domain name is August 10, 2011. This is the date on which a Canadian company called 9228-4330 Quebec, Inc., filed an opposition to the Complainant’s US trade mark, in the course of which it stated that it was the owner of the disputed domain name. The Complainant describes this Canadian company as the “brand owner” of the Respondent. In the circumstances, the Panel thinks it reasonable to infer that the company is connected with the Respondent.

However, even if the Complainant had proved that the Respondent had only acquired the disputed domain name on or about August 10, 2011, so putting the acquisition date at its most favourable to the Complainant and after the first establishment of the Complainant’s rights, the Complaint would still have failed for the following reasons.

First, the disputed domain name consists of the generic term “privé”, meaning private. There is therefore nothing in the disputed domain name itself which suggests that the Respondent selected it with reference to the Complainant.

Second, the Complainant gives no detail whatever, let alone any supporting evidence, as to the scale of its own business. For example, the Complainant does not say how many “retail consignment stores” it operates. There are no statistics indicating the extent of its online or other operations. There is no information as to turnover or marketing spend. There is no explanation of the kinds of marketing undertaken and no examples of the Complainant’s marketing of its trade mark.

Nor is there anything indicating the extent of the Complainant’s activity, if any, in Canada where the Respondent is located. It is possible that such information may have featured in the Complainant’s opposition to the Respondent’s Canadian trade mark application but the Complainant has not provided those documents in this case. It is clear, at least, that the Complainant does not operate any retail consignment stores in Canada; it describes its stores as being located in the US.

In short, the Complainant has not demonstrated a level of, or indeed any, activity by reference to its name which would give reason to think that that, if the Respondent acquired the disputed domain name as late as August 2011, it did so with knowledge of the Complainant or its mark.

Third, there is nothing to show that the Respondent has used the disputed domain name in a manner which targeted the Complainant in some way, e.g., for a competing business, and which might have indicated that the Respondent registered the disputed domain name for a malign purpose vis-à-vis the Complainant.

The above-mentioned notice of opposition to the Complainant’s trade mark dated August 10, 2011, states, but without giving details, that the disputed domain name was then being used for the provision of online retail services under the mark PRIVÉ. Furthermore, the Complainant has produced an email from “[…]@prive.com” dated February 17, 2012, with the subject-line “Closing Day”. It is worth reproducing the email in full:

“Dear Member,

Thank you for shopping at PRIVÉ.

While the past year has seen many accomplishments, we have made the decision to close the company. Several factors have played a part in this decision – most importantly, the overall level of service offered to our members.

The website will close on Friday, February 17th 2012 at 5PM EST. AI! outstanding orders will be filled and our customer service help line will remain open until the end of February, 2012.

Should you have any questions or concerns, please do not hesitate to contact us at […]@prive.com.

Thank you,

The PRIVE team.”

When checked by the Panel, the disputed domain name did not resolve to a website but it is clear from the above that the Respondent formerly used the disputed domain name for some form of online retailing activity.

However, the Complaint skirts carefully around the issue of the Respondent’s usage of the disputed domain name.

Although the Complainant refers to the Respondent’s former use of the disputed domain name on a number of occasions, it does not explain exactly what that usage was. It seems unlikely that the Complainant, which has engaged in a number of trade mark skirmishes with the Respondent and which has evidently gone to the trouble of getting itself onto the Respondent’s mailing list, is unaware of the nature of the Respondent’s former business at the disputed domain name. The Panel suspects that the Complainant has avoided the subject because to reveal it would suggest that the Respondent registered the disputed domain name for the purpose of a business unrelated to the Complainant and its area of trade, perhaps one referable to the generic meaning of the disputed domain name. In any event, there is no evidence before the Panel indicating any illicit usage of the disputed domain name on the part of the Respondent.

For the above reasons, the Panel considers that the Complainant has failed to establish registration in bad faith, irrespective of the date when the Respondent did in fact acquire the disputed domain name,

The Complainant asserts that the disputed domain name is a “passive holding”.

The Complainant focuses on the cessation of the Respondent’s previous (unexplained) use of the disputed domain name, observing amongst other things that the Respondent ignored approaches from the Complainant’s attorney seeking transfer of the disputed domain name, including purchase offers, notwithstanding that the website was no longer in use. The Complainant asserts its belief that the Respondent has no intention to resume its website or trade mark use associated with PRIVE. The Complainant also suggests that the disputed domain name has no value to the Respondent apart from the goodwill and reputation associated with the Complainant’s mark, presumably because the Respondent is no longer using it.

The Complainant entirely misunderstands the concept of passive holding, which is explained at paragraph 3.2 of WIPO Overview 2.0 as follows:

“Consensus view: With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, 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).”

So the principle of passive holding enables a panel to consider all the circumstances of the case and to draw appropriate inferences about bad faith registration and use in cases where there is no active use, or at best sporadic use, of the domain name. Whereas the Complainant wrongly implies that the principle can arise even where there has been previous active use of the disputed domain name and that it entails some sort of separate exercise whereby the nature of that usage, and indeed the circumstances of registration, are ignored and a complainant’s trade mark rights are simply weighed against the fact that a respondent has later ceased using a domain name.

The Complainant relies in particular on Euromarket Designs, Inc. v. Domain For Sale VMI, WIPO Case No. D2000-1195. But that case involved typical indicators of passive holding, none of which are present here: lack of active use of the domain name, a well-known trade mark and the respondent’s concealment of its identity.

In the Panel’s view, this is therefore not a case of passive holding, as that concept has been developed by previous panel decisions and summarised in WIPO Overview 2.0.

As the Complainant has produced no evidence of the alleged parking page, the Complainant’s submissions based on such usage must fail. In any case, paragraph 2.6 of WIPO Overview 2.0 makes clear that use of a parking page with links relating to the generic meaning of a domain name is likely to be permissible, in contrast with a situation where such links capitalise on trade mark value.

If there were such a parking page, it is therefore entirely possible that it was justifiable under such principles or, indeed, the circumstances might have indicated that the parking page post-dated the Respondent’s previous legitimate use of the disputed domain name and was not part of the Respondent’s original purpose on registration. But it is impossible to assess such matters without any evidence of the parking page itself including the date and the nature of the links.

For all of the above reasons, the Panel finds that the Complainant has failed to establish the third element of paragraph 4(a) of the Policy.