In the recent domain name dispute decision of Ville de Paris v. Jeff Walter WIPO D2009-1278, November 19, 2009, a single member Panel was faced with a dispute over the domain www.parvi.org. Complainant is the City of Paris, France, who claims ownership of two French trademark registrations from 2002 for PARVI (for communications by computer terminals) and PARVI PARIS VILLE NUMERIQUE (for computerized file management and communications by computer terminals). Respondent registered the disputed domain in June 2006. The background story of this case involves a series of communications between the parties regarding Respondent’s use and continued ownership of the domain. Essentially, the Respondent contended he registered the domain with no knowledge of Paris’ PARVI marks and instead picked the word because it meant “small” in Latin and was to be used for a social networking site. Paris even acknowledged that he lacked the intention of causing confusion when he registered the domain. Apparently, sometime later Respondent then changed his mind and was going to run a web site dedicated to open source software projects. The resulting domain dispute occurred.
Generally, paragraph 4(a) of the ICANN UDRP Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. In the instant case however, the Panel took some liberties and has made some interesting interpretations of the Policy and prior case decisions.
First, the Panel quickly dispelled with the first element, noting that it was identical to Paris’ PARVI trademark. The Panel also quickly rolled through the second element, noting that the word parvi is not Latin for small, but instead the correct word is parvus. The Panel found that Respondent failed to show demonstrable preparations for the domain and thus lacked any rights or legitimate interests.
The Panel spent most of the decision discussing the third element, registration and use in bad faith. Paragraph 4(a)(iii) states that Complainant must prove that Respondent’s “domain name has been registered and is being used in bad faith.” The Panel explained that recently many decisions have reviewed the interpretation of this policy paragraph to mean something slightly different then it has been applied. The Panel explained:
The Policy expressly states that the Paragraph 4(b) scenarios are “without limitation” – that is, the Policy makes clear that there can be other scenarios that are also evidence of registration and use in bad faith. It follows, therefore, that the Policy expressly recognizes that the Paragraph 4(a)(iii) requirement of bad faith can, in certain circumstances, be satisfied where the respondent has used the domain name in bad faith, even though the respondent may not have been acting in bad faith at the time of acquisition of the domain name.
The Panel attempted to justify its findings, based upon a hypotheical:
There seems no reason in logic or in principle why the availability of redress should be confined to situations where bad faith is present at the time of acquisition of the domain name. To limit the trademark owner’s redress in this way would result in outcomes that make no sense. In particular, it would mean that even the most damaging abuse of a trademark right through the most egregious bad faith use of a domain name would be immune from remedy under the Policy so long as the registrant was not acting in bad faith when the domain name was acquired. It would, in short, give a “green light” to good faith domain name registrants to later abusively use their domain names, safe in the knowledge that any such bad faith use could not provide the basis for a successful action under the Policy.
The Panel found that Respodent probably did not register the disputed domain with the intention of benefitting from Pari’s PARVI mark, but this did not end the decision.
The Respondent’s decision to change the intended use of the disputed domain name to a use that could cause confusion with, and disruption to, the Complainant’s activities, and the Respondent’s demand that the Complainant provide it with an option to acquire the Complainant’s domain names, were actions by which the Respondent sought to use its registration of the disputed domain name to derive a benefit from the Complainant’s trademark.
Ultimately, the Panel found that Complainant satisfied all three elements, and ordered the domain be TRANSFERRED.