Cofra Holding AG of Zug, Switzerland which owns the domain name C-and-A.com, just won the rights to the domain name C-A.Com.
The three member panel did not like the fact that the domain owner who purchased the domain name C-A.com in January 2014 for $3k was asking for six figures to the .com holder of the domain name CandA.com
Here are the relevant facts and findings by the panel:
T the Complainant owns over 90 trademark registrations in various countries around the world, including the United States of America (“United States”), Benelux, Germany, France, the European Community, Turkey, China, Brazil, Mexico and Israel for goods, including clothing, and services in international classes 9, 18, 24, 25 and 35.
The Complainant has provided a list of its registrations in the Complaint and copies of its registration certificates in Annex 3 to the Complaint. Generally, these marks are for: (a) the characters “CA” or “C&A” in block letters; (b) the letters “C&A” set against an oval-shaped background having an outer oval-shaped annulus with an undulating outer border; or (c) the oval-shaped background with an undulating outer surface having the superimposed lettering “C&A” but without the annulus. The following is a small representative sample of its registrations:
Since 1998, the Complainant sells clothing online in its European market through its C&A brand via its website at .
The Respondent is a professional pharmacist who resides in Jerusalem, Israel.
On a part-time basis since 2008, the Respondent is also a domain name broker who buys and sells generic domain names.
Respondent claims to be particularly interested in registering two letter domain names separated by a hyphen for the reason that two-letter domain names without a hyphen are mostly in use and are not for sale, or are too expensive due to their scarcity and appeal.
Though the disputed domain name was originally registered in 2001, the Respondent purchased the disputed domain name on January 31, 2014, for USD 3,000
The disputed domain name resolves to a parking page containing sponsored links.
The page states that the disputed domain name is for sale by the Respondent for USD $340,000.
On February 13, 2014, the Respondent sent an email:
“Since you are using the domain name (c-and-a.com) which is a seven characters domain, it would be a fantastic opportunity and a once in life chance for you to own a three characters domain name (c-a.com) which can be a shorter address for you. It would be a very prestigious to you to own a rare, short, and easy to remember brand-able domain name like many other enterprises, recently Facebook.com acquired (FB.com) domain name only for $8 million!”
The Respondent then offered to sell the disputed domain name to the Complainant for “a premium price in the six figures range only”.
On May 5, 2014, the Complainant responded, through email (a copy of which appears in Annex 18 to the Complaint), by requesting the Respondent to provide its “best realistic price” for the disputed domain name.
Thereafter, on May 6, 2014, the Respondent answered by email stating that the asking price is $280,000 reduced from $340,000.
The Complainant did not respond to the Respondent’s May 6th message.
5. Parties’ Contentions
A. Complainant
(i) Identical or Confusingly Similar
The Complainant contends that the disputed domain name is confusing similar to the Complainant’s mark C&A simply because the disputed domain name incorporates that mark but with a hyphen being substituted for the ampersand in the mark, while the “.com” generic Top-Level Domain (“gTLD”) is ignored for the purposes of assessing identity or confusing similarity.
The Complainant further states that an ampersand is an invalid character in a domain name and, as such, for the purpose of assessing confusing similarity, the substitution of a dash for the ampersand should be ignored.
Based on the evidence of record here, the Panel finds that no basis exists which would appear to legitimize a claim of rights or legitimate interests by the Respondent to the disputed domain name under paragraph 4(c) of the Policy.
Further, there is absolutely no evidence of record that the Respondent has ever been commonly known by the disputed domain name or more generally the mark C&A. Nor could the Respondent likely ever become commonly known by either the disputed domain name or the mark, at least with respect to the goods and services provided by the Complainant, without infringing on the exclusive trademark rights of the Complainant. This is so in light of the Complainant’s exclusive trademark rights which date back to 1925. Needless to say, these rights and the Complainant’s reputation substantially predate January 31, 2014, when the Respondent acquired (registered) the disputed domain name.
The Respondent argues that it has legitimate interests in the disputed domain name by virtue of its trading in the disputed domain name itself, i.e., offering what it believes to be a generic name for sale.
For a bona fide offering of goods or services to exist under paragraph 4(c)(i) of the Policy, the Respondent’s possession of those goods or services, in this case the disputed domain name itself, must be legitimate in the first instance. If the Respondent has no rights in the disputed domain name – which is the case here, then its subsequent action in offering the disputed domain name for resale does not convert its illegitimate possession into a legitimate one. If that were not the case, then anyone who illicitly possesses a domain name could have legitimate rights spring up in the name simply by offering it for sale. That makes no sense and would defeat the purpose of paragraph 4(c)(i).
Lastly, the Respondent’s use of the disputed domain name to address a parking page comprised of sponsored links does not constitute either a legitimate noncommercial or fair use within the ambit of paragraph 4(c)(iii) of the Policy.
Accordingly, based on the evidence presently before the Panel, the Respondent does not fall within any of paragraphs 4(c) of the Policy.
Indeed, the evidence is to the contrary.
Pivotal to this decision is the fact that the Respondent acquired the disputed domain name on January 31, 2014, and made his first overture to the Complainant to buy it, at “a premium price in the six figures range only”, as early as February 13, 2014.
The Panel is entitled to draw all reasonable inferences from the evidence and the only inference that can be drawn from the evidence just cited is that the Respondent probably bought the disputed domain name because he realized it was confusingly similar to the Complainant’s well known trademark and that he could see an opportunity for making some substantial money from trading on that similarity. That situation cannot, on any meaning given to the words of the Policy, give rise to a right or legitimate interest in the disputed domain name.
Also, there is simply no evidence that the Respondent has acquired, through any other means, any rights or legitimate interests in the disputed domain name.
Given the Complainant’s worldwide recognition, the Panel finds the Respondent’s argument unpersuasive that it had no knowledge of the Complainant when it acquired the disputed domain name and only later decided to solicit the Complainant to purchase the disputed domain name at a price starting at USD 340,000 – which vastly exceeds any likely out-of-pocket costs of the original registration of the disputed domain name.
Given the Complainant’s showing of its reputation and worldwide recognition of its C&A Marks, it is realistic for the Panel to infer that the Respondent had prior knowledge of the Complainant when it acquired the disputed domain name and sought to exploit that reputation for its own financial gain.
Based on the totality of the evidence before the Panel, the Panel finds, as it has already noted, that: (a) the Respondent likely knew of the Complainant and its C&A Marks before it acquired the disputed domain name; (b) discovered the disputed domain name was available and then purchased it for USD $3,000 thinking that it could likely resell the disputed domain name at a significant profit to the Complainant; and (c) intentionally attempted to so resell the disputed domain name starting just two weeks after he acquired it by ultimately offering it to the Complainant to purchase for $280,000 (down from USD 340,000).
Given the views expressed by panelists in many decisions issued under the Policy, a respondent will very likely not admit that it acquired a domain name that incorporates the mark of another or a term confusingly similar to the mark specifically for the purpose of offering the domain name for sale to the trademark rights holder at a substantial profit well in excess of its cost of registration – and the Respondent here is no exception. To do so is simply to concede bad faith under para 4(b)(i). By now, respondents have probably learned, not to do that.
Hence, the Panel believes that the Respondent perceived an opportunity to target the Complainant and exploit its reputation for the Respondent’s own financial gain, seized that opportunity by acquiring the disputed domain name and then actually attempted to sell the disputed domain name to the Complainant for a sum far exceeding the original costs of registration, thus violating paragraph 4(b)(i) of the Policy.
