A WIPO panel has denied the claim of a Netherlands company on the word BOUNZ. Much of the decision rested on the Affidavit that we filed on behalf of the Respondent. Here is the full decision.
ADMINISTRATIVE PANEL DECISION
Bounz B.V. v. Whois Privacy Services Pty Ltd. / Stanley Pace
Case No. D2015-1230
1. The Parties
The Complainant is Bounz B.V. of Badhoevedorp, the Netherlands, represented by Muller & Eilbracht B.V., the Netherlands.
The Respondent is Whois Privacy Services Pty Ltd. of Queensland, Australia / Stanley Pace of Texas, United States of America, represented by Law Office of Howard M. Neu, United States of America.
The Complainant produces and services high quality trampolines and designs and implements trampoline courts. It also operates a business that offers various services including ways of combining exercise sports and entertainment, with a focus on gymnastics and trampoline jumping. The Complainant has franchised its concept and operates in various locations in the Netherlands and each year also operates for a period in Belgium. The Complainant commenced its business in 2010 under the BOUNZ mark and opened its first location in 2011. It owns various trade mark registrations for, or that incorporate, the word mark BOUNZ, including in particular a combined word/device Benelux Trade mark registration under number 891361, filed on October 27, 2010 and Community word mark registration number 10895191 for BOUNZ, filed on May 18, 2012. The Complainant maintains a website for its business at its current domain name
The disputed domain name was first registered on May 5, 2003. The Respondent Mr. Stanley Pace swears on affidavit that he acquired it on June 12, 2008. It was subsequently moved by the Respondent to the Registrar on April 4, 2009. On or about September 30, 2011 the Respondent, Mr. Stanley Pace, changed the registration for the disputed domain name from his own name into the name of the other Respondent Whois Privacy Services Pty Ltd. The disputed domain name has been parked with Sedo.com and resolves to a “pay per click” parking page, the content of which is discussed in Section 6-C below.
Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns a combined word/device Benelux trade mark registration under number 891361, filed on October 27, 2010 incorporating the BOUNZ word mark and a Community word mark registration number 10895191 for BOUNZ, which was filed on May 18, 2012. As a result the Panel finds that the Complainant owns trade mark rights in the BOUNZ mark for the purposes of this element of the Policy. As the disputed domain name wholly contains the BOUNZ mark and features no other element apart from the “.com” suffix, the Panel also finds that the disputed domain name is identical to this mark.
As a result the Complaint succeeds under the first element of the Policy.
B. Rights or Legitimate Interests
The Panel declines to make a finding in relation to the second element of the Policy in view of its findings concerning bad faith under the third element, as set out below.
C. Registered and Used in Bad Faith
The disputed domain name was first registered on May 5, 2003 but the Respondent, Mr. Stanley Pace, swears on affidavit that he acquired it on June 12, 2008. The Respondent says that he subsequently moved the disputed domain name to his usual registrar “fabulous.com” on April 4, 2009. Around September 30, 2011 he subsequently changed the disputed domain name into the name of the other Respondent Whois Privacy Services Pty Ltd. Mr. Pace says that he did this as a matter of course together with almost all his portfolio of domain names in order to avoid spam. The disputed domain name along with most of the other domain names in his portfolio was then parked with Sedo.com and resolves to a “pay per click” parking page.
The initial question for determination by the Panel is whether the relevant date of registration under this element of the Policy is June 12, 2008 or the date on which the disputed domain name was transferred to the privacy service around September 30, 2011? Notwithstanding section 3.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) in-house transfers can sometimes be deemed a new registration, for ex. See BMEzine.com, LLC. v. Gregory Ricks / Gee Whiz Domains Privacy Service, WIPO Case No. D2008-0882; ehotel AG v. Network Technologies Polska Jasinski Lutoborski Sp.J., WIPO Case No. D2009-0785. However panels have held such transfers do not restart the clock on measuring bad faith when a respondent offers a valid business reason for the transfer, e.g., Wall-Street.com, LLC v. Marcus Kocak / Internet Opportunity Entertainment (Sports) Limited, Sportingbet PLC, WIPO Case No. D2012-1193. The Respondent says on oath that he made that change on all or most of his domains to avoid spam, which the Panel considers to be a credible explanation and legitimate explanation for the change. The Complainant’s contention that the Respondent re-registered in order to avoid the Policy is unsupported by the evidence and amounts to conjecture. The fact that the Respondent may have been found in another UDRP case to be a serial cybersquatter does not persuade the Panel in the circumstances of this case that the Respondent acted in bad faith on his re-registration of the disputed domain name. Therefore the Panel accepts that the relevant date of registration for consideration under this element of the Policy was on June 12, 2008 being the date on which Mr. Pace has sworn on affidavit that he acquired the disputed domain name.
Although the Complainant says that it registered the trade name Bounz for a foundation in the Netherlands in 1987 and subsequently registered the domain name
Mr. Pace was living in Texas at this time. In these circumstances, Mr. Pace’s sworn statement that he was unaware in June 2008 of the Complainant’s business or mark is entirely credible. Mr. Pace says on affidavit that although he checked on the Google search engine and searched the USPTO website before bidding for the disputed domain name, he found no evidence of potentially conflicting trade marks. In reality and based on the material before the Panel, Mr. Pace could have searched on any number of search sites or trade mark or business name registers in June 2008 but it is only if he had searched the business name register in the Netherlands that he might have even been alerted to the existence of the Complainant. Accordingly, the Panel finds that there is no evidence before it to suggest that Mr. Pace registered the disputed domain name in bad faith.
Although this technically ends the matter, as this element of the Policy requires a finding of both registration and use in bad faith, the Panel also finds that the Respondent has not used the disputed domain name in bad faith. It is well accepted by previous panels that using a domain name to resolve to a “pay per click” parking page is not per se use in bad faith. It is only when it is apparent that such use is actually targeting the complainant that it may amount to use in bad faith. Here the hyperlinks do not refer to the Complainant or its business, other trampoline companies, or products competitive of those of the Complainant. Most in fact refer to party rentals, or paraphernalia, or amount to plays on the word “bounce”. In this case the Panel finds that there is no evidence that the Respondent, who is involved on a large scale in the domain name broking and holding business, has ever actively targeted the Complainant.
Accordingly the Panel finds that the Respondent has not registered and used the disputed domain name in bad faith and the Complaint fails under this element of the Policy.
For the foregoing reasons, the Complaint is denied.
Willem J. H. Leppink
Richard G. Lyon
Date: September 28, 2015