ARBITRATION

AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Bespoke Services Group S.A. v. Garth Piesse
Case No. D2014-1533

1. The Parties
The Complainant is Bespoke Services Group S.A. of Genve, Switzerland, represented by SBKG & associs
- A.A.R.P.I., France.
The Respondent is Garth Piesse of Palmerston North, New Zealand, represented by Adlex Solicitors, United
Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <bespoke.com> is registered with InsaneNames LLC (the Registrar).

3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the Center) on September 8,
2014. On September 8, 2014, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain name. On September 9, 2014, the Registrar transmitted
by email to the Center its verification response confirming that the Respondent is listed as the registrant and
providing the contact details.
On September 10, 2014, the Center received an email communication from Adlex Solicitors informing the
Center that they are the legal authorized representative of the Respondent.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name
Dispute Resolution Policy (the Policy or UDRP), the Rules for Uniform Domain Name Dispute Resolution
Policy (the Rules), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy
(the Supplemental Rules).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the
Complaint, and the proceedings commenced September 16, 2014. In accordance with the Rules, paragraph
5(a), the due date for Response was October 6, 2014. The Response was filed with the Center on
October 1, 2014.

page 2
The Center appointed James A. Barker, Nathalie Dreyfus and The Hon Neil Brown Q.C. as panelists in this
matter on October 17, 2014. The Panel finds that it was properly constituted. Each member of the Panel
has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required
by the Center to ensure compliance with the Rules, paragraph 7.
On October 22, 2014, the Complainant made a supplemental filing to re-argue the grounds of its Complaint.
On October 23, 2014 the Respondent replied. The Respondent objected to the Complainants filing and
requested that it be allowed to respond if the Panel decided to admit the Complainants supplemental filing.

4. Factual Background
The Complainant has a registered international mark that incorporates the word bespoke, and is followed
by design that incorporates the letters BSPK within a small box. That mark was registered in 2013. The
Complainant provides no evidence of its reputation. The Complaint attaches what appears to be a business
plan or description of the services it provides. Among other things, this document states that BESPOKE is a
compelling alternative to American Express, Diners and other premium cards from generalist networks.
The disputed domain name was registered in May 2014.
The Complainant provides evidence that the disputed domain name reverted to a parking website. That
website includes a variety of links to a miscellany of subjects, including Jobs, Real Estate, Insurance,
Finance, and Games, among other things. When the link for Finance is clicked, a page of sponsored
links appears, including to various banking and financial services.
The word bespoke is a common English word. Dictionary.com defines it (as a noun) as (of clothes) made
to individual order and making or selling such clothes.

5. Parties Contentions
A. Complainant
The Complainant says that the disputed domain name is identical or confusingly similar to its mark. The
Complainants intended use of that mark is in connection with premium services relating to bank cards.
The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain
name. The Respondent has no relationship with the Complainant or permission to use its mark.
The Complainant also says that the Respondent has registered and used the disputed domain name in bad
faith. The Complainant contends that the Respondent registered the disputed domain name for the purpose
of attracting Internet users to the Respondents website by creating a likelihood of confusion with the
Complainants trademark. The Complainant says that the Respondent had knowledge of its mark, which is
evidenced by the fact that the disputed domain name is used in reference to services provided by the
Complainant.
B. Respondent
The Respondent denies the allegations against him.
The Respondent says that the Complainant has provided no evidence of actual trade under the name
bespoke, and has misleadingly sought to give the impression that it does trade under that name. The
Complainants business plan (as attached to the Complaint) states that the projects domain name is
<bspk.com> but this domain name simply resolves to a parking page with links to websites selling baseball
caps and the like. The Respondent provides evidence that there is no mention of the Complainant on the

page 3
first page of either Google.com and Google.co.nz searches for bespoke plus card. These searches
mainly bring up references to personalised stationery services, and a third party The Bespoke Privilege
Card, apparently unrelated to the Complainant.
The Respondent says that the relevant component of the Complainants mark is BESPOKE BSPK and, when
that mark is compared to the disputed domain name, there is no confusing similarity. Marks which include
common descriptive terms are not confusingly similar to domain names consisting of such terms.
The Respondent says that he is using the disputed domain name in connection with a bona fide offering of
goods or services. The Respondent has registered the disputed domain name in connection with its
dictionary meaning.
The Respondent denies that he registered and has used the disputed domain name in bad faith. The
Respondent is in the business of buying, selling and monetizing generic domain names. The Respondent
already owned a number of bespoke-related domain names. The Respondent provides a list of domain
names which incorporate that term which he claims to own, and the dates on which they were registered.
These include <bespokebuilders.com>, <bespokeproperty.co.uk>, and <bespokecuisine.co.uk>.
The Respondent says that there are a vast number of third party businesses that use the term bespoke as
part of their name. The Respondent provides the results of a search via Google.co.nz which provides a list
of such business, including businesses in the finance sector.
The Respondent says that he purchased the disputed domain name ultimately to sell it, and says that he has
received a large number of enquiries about the purchase of it. He was not aware of the Complainant when
he registered the disputed domain name, and nor was there any reason he should have been.
The Respondent says the Complainant has engaged in reverse domain name hijacking.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i)

the disputed domain name is identical or confusingly similar to a trademark or service mark in which
the Complainant has rights; and

(ii)

the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii)

the disputed domain name was registered and is being used in bad faith.

These elements are discussed in turn below, immediately following consideration of whether to admit the
Complainants supplemental filing.
A. Supplemental Filing
Paragraph 15 of the Rules prescribes that the Panel shall decide a complaint on the basis of the statements
made and documents submitted and in accordance with the Policy, the Rules and any principles of law that it
deems applicable. As noted above, the Center received a further submission from the Complainant, which
sought to re-argue matters addressed in the Complaint.
This filing was not requested by the Panel pursuant to paragraph 12 of the Rules. The objectives of the
Policy and the Rules is to ensure a speedy and inexpensive determination of the relevant issues. Unless a
compelling reason is presented, such as new facts relevant to the determination, that requires a response, it
would be contrary to these objectives to invite or allow supplementary pleadings and evidence. Each party is
given a single opportunity to present its case. If it fails to do so, there must be compelling reasons to invite

page 4
further contributions.
The Complainant provided no explanation for why it made the supplemental filing. The Panel does not
consider there is a compelling reason to consider it.
B. Identical or Confusingly Similar
The Complainant is the registered owner of a trademark which prominently includes the word bespoke and
a design element which includes the letters b, s, p and k within a square. If the letters b, s, p and
k are ignored, the disputed domain name is relevantly identical to the Complainants mark.
The Respondent argued that those additional letters should not be ignored and that the disputed domain
name could not be seen as confusingly similar to the Complainants mark as a whole.
Whether a domain name is identical or confusingly similar to a mark is to be judged against the dominant
textual elements of a complainants mark. See WIPO Overview of WIPO Panel Views on Selected UDRP
Questions, Second Edition (WIPO Overview 2.0), paragraph 1.1; Sweeps Vacuum & Repair Center, Inc. v.
Nett Corp., WIPO Case No. D2001-0031. Whether particular text is dominant is something that can only be
judged on a case-by-case basis. But the concept of a dominant text clearly implies that other components of
the mark may not be sufficiently prominent for the purpose of comparison.
One of the majority Panelists does not consider that the smaller letters b, s, p, k, as included in the
Complainants mark, are sufficiently prominent for this purpose. As they appear in that mark, those letters
form part of a relatively small design element, separately appended to the word bespoke. The word
bespoke is the dominantly appearing element. For this reason, and on balance, one of the majority
Panelists finds that the disputed domain name is relevantly identical to the Complainants mark. Being
identical, it is not also necessary to consider whether the disputed domain name is confusingly similar.
The other majority Panelist would however find that the disputed domain name is not identical or confusingly
similar to the Complainants mark. This Panelist considers that the Complainants trademark is not for
BESPOKE, but is instead for BESPOKE BSPK. On this basis, the disputed domain name is not identical to
that mark. Neither would this Panelist find that the disputed domain name is confusingly similar. No-one
would think that the disputed domain name was invoking or referencing the Complainants mark because noone would think the word bespoke in the disputed domain name, which is a very generic, dictionary word,
was referring to the Complainant. The Complainant has designated itself as BESPOKE BSPK and no other.
C. Rights or Legitimate Interests
It is for the Complainant to establish at least a prima facie case, that the Respondent has no rights or
legitimate interests in the disputed domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet
Ltd., WIPO Case No. D2003-0455.
The Complainant makes a very brief case against the Respondent on this ground. The Complainant says
that the Respondents name has no resemblance to the word bespoke, and the Respondent is not
permitted by the Complainant to use its mark.
The difficulty for the Complainant is that Common words and descriptive terms are legitimately subject to
registration as domain names on a first come, first served basis. Asphalt Research Technology, Inc. v.
National Press & Publishing, Inc., WIPO Case No. D2000-1005. Bespoke is a common English word.
The first come, first served rule is subject to an exception. A respondent may not have rights or legitimate
interests if it registers a domain name to unfairly exploit a complainants mark. The Complainant suggests
that this is what the Respondent did.
The Complainant provides little evidence to support this allegation. There are strong factors against this

page 5
allegation:
Firstly, the descriptive nature of this term indicates that it is not distinctively associated with the Complainant.
Secondly, and related to the first factor, the Respondent points to substantial third party use of this term.
This evidence reinforces the conclusion that the Complainant has no special claim on the term bespoke.
Thirdly, there is no evidence that the Respondent, in fact, sought to use the disputed domain name to trade
on the Complainants mark. Indeed, there was no good evidence that the Respondent was either aware of
that mark or aware of the Complainant. The Respondent claimed that the Complainants BESPOKE BSPK
trademark was registered in connection with only a proposed business idea, and that the Complainant does
not actually trade using that mark. The Complaint includes no clear evidence to the contrary. The Complaint
includes what appears to be a business plan for the use of its trademark. It does not include evidence of
actual trade or of its reputation more generally, to suggest that the Respondent might reasonably have been
aware of it.
Fourthly, the Respondent has his address in New Zealand. The Complainant has its address in Switzerland.
The Complainants mark is registered with the United States Patent and Trademark Office (USPTO). The
Complainant provided no evidence of its reputation in New Zealand or anywhere else. Some panels have
found constructive bad faith, based on a Complainants registered mark with the USPTO and in cases where
both are resident in the USA. However, as noted in the WIPO Overview 2.0, panels have mostly declined to
introduce the USA concept of constructive (deemed) notice per se into the Policy. For this reason, the Panel
does not consider, as the Complainant suggests, that the Policy includes some obligation for the Respondent
to have undertaken a trademark search.
The majority of the Panel therefore finds that the Complainant has failed to make out its case under
paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
To support its case that the Respondent relevantly acted in bad faith, the Complainant asserts that the
Respondent knew of its mark, evidenced in part by the references to the services provided by the
Complainant.
But a review of the Respondents website suggests no such thing. The Respondents website is a parking
page which includes a miscellany of links. Some of those links refer generally to subjects such as finance. It
is hardly a surprise that those links would refer to websites dealing generally with financial services. The
Respondents website does not appear to refer to the Complainant itself, or in any obvious way to the
particular services the Complainant proposes to offer.
The Complainant also claims that the use of the disputed domain name in connection with a parking
website is itself evidence of bad faith. The Complainant refers to United States Cellular Corporation v.
Ready Asset, WIPO Case No. D2014-0644, as support for the proposition that parking sites are generally
indicative of bad faith. However in that case, the Complainant had a well-known mark and the panel found
that the respondent sought to exploit it in connection with a parking website. There is little such evidence in
this case. Further, prior UDRP decisions have not found that mere use of a domain name in connection with
a parking website is, by itself, sufficient to establish bad faith. Gold Medal Travel Group plc v. Damir
Kruzicevic, WIPO Case No. D2007-1902.
The Respondent has provided a plausible alternative account of its registration of the disputed domain name
that this was in connection with the secondary market for domain names. As noted in previous cases
under the Policy, there is nothing inherently wrongful with this activity, in circumstances where a respondent
was not seeking to exploit a complainants trademark. See, e.g., Channel Television Limited v. Legacy Fund
LLC / Protected Domain Services Customer ID: R-3108040, WIPO Case No. DTV2011-0008.

page 6
The majority of the Panel also finds that the Complainant has failed to establish that the Respondent
registered and used the disputed domain name in bad faith.
E. Reverse Domain Name Hijacking
The Respondent argues that the Complaint constitutes reverse domain name hijacking against the
Respondent. Allegations of reverse domain name hijacking have been upheld in circumstances where a
respondents use of a domain name could not, under any fair interpretation of the facts, have constituted bad
faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint
under the Policy. See Rohl, LLC v. ROHL SA, WIPO Case No. D2006-0645. The Panel declines to make
such a finding. Although the Complaint is weak, it appears that the Complainant may have misunderstood
the requirements of the Policy, rather than being motivated by bad faith.

7. Decision
For the foregoing reasons, the Complaint is denied.

James A. Barker
Presiding Panelist

The Hon Neil Brown Q.C.

Panelist
Date: November 5, 2014

DISSENTING OPINION
With due respect to my distinguished fellow Panelists, I must dissent from virtually all but one conclusion
they reached pertaining to the disputed domain name.
Identical or Confusingly Similar
The Dissenting Panelist agrees with one of the majority Panelists that the disputed domain name is identical
with the trademark in which the Complainant proved it has rights.
Rights or Legitimate Interests
As far as the Respondents rights or legitimate interests are concerned, the Dissenting Panelist disagrees
with the majority of the Panel. The majority of the Panel focused on the descriptive nature of the word
bespoke and therefore its registration as a domain name would be legitimate. However, as it was pointed
out, the legitimacy is lost if the Respondent is seeking to exploit the Complainants trademark.
Firstly, the Complainant has a registered trademark in numerous countries all over the world and the validity
of these trademarks is not to be examined by the Panel. The Respondent uses the disputed domain name
for pay per click parking pages. It is a commercial use of the domain name, which brings him profits from
advertising links related to services similar to those registered under the BESPOKE trademark.

page 7

Secondly, the parking page offers links to the Complainants competitors for services covered under the
BESPOKE trademark, like Finance. Even if the trademark is not used per se, this does not constitute a
nominative fair use. On the contrary, in the Asian World of Martial Arts Inc. v. Texas International Property
Associates, WIPO Case No. D2007-1415 it was found more like a deceptive practice:
Respondents websites offer links to and advertisements for Complainants competitors. That does
not constitute a nominative fair use; rather, it appears to constitute deceptive bait and switch
advertising practices.
Thus, the Dissenting Panelists opinion is that the Respondent has no rights or legitimate interests in respect
of the disputed domain name.
Registered and Used in Bad Faith
The Dissenting Panelist thinks that the Respondent registered and used the disputed domain name in bad
faith.
Firstly, concerning the Respondents awareness of the trademark at the moment of the disputed domain
name registration, the Dissenting Panelist disagrees with the majority of the Panel. Given the international
registration of the Complainants trademark, a simple search on the WIPO Global Brand Database would
have sufficed to reveal it. Furthermore, considering the services referenced by the Respondent on the
parking page and the offer of advertising links to the Complainants competitors, it is very hard to believe that
he wasnt aware of the BESPOKE trademark.
Moreover, the Respondent offers the domain name for sale to the public; even if it could be a legitimate
activity, it does not imply a right in such registrants to sell domain names that are identical or confusingly
similar to trademarks or service marks of others without their consent. As it was noted in Trip.com, Inc. v.
Daniel Deamone, WIPO Case No. D2001-1066, such an offer for sale to the public may nevertheless
constitute evidence of bad faith under the Policy:
Respondent has offered the domain name for sale to the public. There is nothing inherently
wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith
under the Policy. However, the fact that domain name registrants may legitimately and in good faith
sell domain names does not imply a right in such registrants to sell domain names that are identical
or confusingly similar to trademarks or service marks of others without their consent. Although
Respondents offer of the domain name for sale was not made specifically to Complainant or its
competitor, offers for sale to the public may nevertheless constitute evidence of bad faith under the
Policy.
The Dissenting Panelist finds that the Respondents only interest in buying the disputed domain name was to
sell it for valuable consideration in excess of its out-of-pocket expenses, either to the trademarks
competitors, or to the trademark owner.
Secondly, as the pay per click parking page brings profits to the Respondent, it represents a commercial use
of the domain name. Given the advertising links related to services covered by the BESPOKE trademark,
the Dissenting Panelist thinks that the Respondent used the disputed domain name in bad faith.
Therefore, the Dissenting Panelist is of the view that the Complainant adduced sufficient evidences to prove
that the disputed domain name has been registered and used in bad faith.
Consequently, the Dissenting Panelist considers that the disputed domain name should have been
transferred to the Complainant.

page 8

Nathalie Dreyfus
Dissenting Panelist
Date: November 5, 2014