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August 24, 2010 / Nate Harris

Rosa Maria Clarà Pallarès v. Domains by Proxy, Inc. / Domain Discreet / Dennis Heinz

Summary of Rosa Maria Clarà Pallarès v. Domains by Proxy, Inc. / Domain Discreet / Dennis Heinz
(WIPO Case No. D2010-0867)
Filed May 28, 2010; Decided August 13, 2010 (Panelist: Tony Willoughby)

Domain Names: <rosaclara.com>

rosaclara.com

rosaclara.com

The Parties

Complainant Rosa Maria Clarà Pallarès is a Spanish wedding dress designer whose company has used the trademark ROSA CLARA since 1995, establishing a “significant reputation” in connection with the mark.

The Respondent Dennis Heinz is an “American individual” who registered the domain in 1999. The site lay dormant until December 2007, when it began pointing at a site called “Rosa Clara—Diary of a Suicide Girl.” The site detailed the romantic goings-on of one Rosa Clara, from the early, heady high of a wedding proposal [I know of a great dress designer!] to the dizzying low of a broken engagement in October 2008. [Never mind.]

This was not the parties’ first time down the aisle, however. In 2005, when the site was still dormant, Ms. Pallarès brought a complaint against Mr. Heinz trying to recover the disputed domain. See Rosa María Clara Pallarés v. Dennis Heinz (WIPO Case No. D2005-0548). However, the Panel in that decision denied the complaint, on the ground that Ms. Pallarès failed to prove that the domain was registered in bad faith.

Procedural History

In the present case, Ms. Pallarès initially named Domains by Proxy, Inc. (a privacy service owned by the current registrar, GoDaddy.com, Inc.) as the Respondent. GoDaddy.com informed Ms. Pallarès that, according to its records, a different privacy service, Domain Discreet (owned by the former registrar, Register.com) was the owner of the domain.

GoDaddy.com alerted Mr. Heinz, who soon joined the fray to assert that he was the true registrant of the domain. Mr. Heinz had switched from Register.com to GoDaddy.com, and claimed that the latter had not yet updated its records to reflect his ownership of the domain. GoDaddy.com confirmed, somewhat vaguely, that Mr. Heinz “does have a legitimate interest in/association with the [disputed] domain name.”

The Panel accepted Mr. Heinz’s explanation, noted that GoDaddy had confirmed his “legitimate interest” in the disputed domain name, and pointed that the Ms. Pallarès herself had referred to him as “the supposed owner.” Thus, the Panel accepts that Mr. Heinz is the “underlying registrant,” and treats him as the respondent for purposes of the complaint.

Since Mr. Heinz is the respondent, the question arises as to whether this is an improper re-filed complaint—“a second or subsequent complaint filed by the same complainant against the same respondent in respect of the same domain name.” Under the “consensus view” set out in Paragraph 4.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, a re-filed complaint can only be filed in limited circumstances, such as (i) relevant new actions occurring since the original decision [shouldn’t that be measured since the original complaint?]; (ii) a breach of natural justice or due process, or (iii) serious misconduct, such as perjury.

[The Panel puts off the issue of the re-filed complaint until its discussion of bad faith, below.]

Identical or Confusingly Similar

The Panel adopts the previous Panel’s finding that the disputed domain name is “as close to being identical with the Complainant’s mark as it could be, and it certainly is confusingly similar to those marks.”

Rights or Legitimate Interests

“In light of the Panel’s finding under the next head, it is unnecessary for the Panel to address this issue.” [Never a good thing to read when you’re the Complainant.]

Registered and Used in Bad Faith

The Panel considers Ms. Pallarès’s arguments for bad faith, namely, Mr. Heinz’s use of a privacy service to hide his identity and his “nonsensical” use of the site to make references to marriage and bridal services (contrary to the assurances he made to the earlier panel).

The Panel disposes of these arguments, however, noting that there is still no evidence that Mr. Heinz was aware of Ms. Pallarès’s existence in 1999 when the disputed domain name was registered. Rather, the recent references to bridal services probably owe largely to the earlier dispute.

Ms. Pallarès also argues that several 2009 decisions found bad faith solely on the basis of bad faith use, without proof of bad faith registration. Thus, she argues, a change in the law justifies revisiting the earlier decision to apply the new law.

However, as the Panel points out, many other recent cases have continued to require proof of bad faith registration, suggesting the law has not changed. Even if there were a clear shift in the law, it would make little sense to apply new law to the registration, which occurred in 1999.

Thus, in the Panel’s view, none of the new facts put forth by Ms. Pallarès warrant a revisiting of the earlier decision.


Commentary

The decision notes that “one of the [recent] comments posted refers obliquely to this proceeding.” Obliquely? The post has a picture of the Wicked Witch of the West, accompanied by this text (WARNING: f-bombs dropped):

Some of you will remember the little brush we had with this crazy woman from Spain a few years ago. Five years after I got this site for Rosa she tried to muscle it out of us. This was a big deal and we almost lost it. She threw a bunch of fancy lawyers at us and had it not been for Nate’s help I don’t think we would have managed to be left alone. He really thought I should have sued her, but I figured that after getting the back-hand bitch slap she got we were done.

Another five years went by (kinda like the Predator movies) and the fucking bitch is back. Same story: “this website is mine, you know it is mine, how dare you take something that is mine, etc…” Nate helped me again draft the response and everything has been filed.

To summarize, there was no bad faith where Mr. Heinz registered the domain in 1999, let it sit dormant for eight years and one UDRP proceeding, then used the domain to call Ms. Pallarès a “fucking bitch.” This decision is a powerful reminder that the UDRP is not a mechanism for the person with the strongest claim to the domain name to claim it. Rather, a complainant must affirmatively prove that the respondent has no right in a domain name that was registered and used in bad faith. Anything less and the complainant will likely come up short.

Epilogue

8/23/2010: <rosaclara.com> is still up and running. I highly recommend it for the weird factor alone. Take this bon mot from an October 18, 2008 post: “[o]ne day, I woke up in a freakish scene on which I had no clue how I had gotten into: naked, in a stranger’s warehouse and without a single memory of how I got there.” At that point, does it really matter that it was a stranger’s warehouse?

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