Bad Decision: HugeDomains.com Turns Down $6K & Loses Generic Domain In UDRP

Austin Pain Association (“Complainant”), just won control of the domain name AustinPain.com which was owned by HugeDomains.com

As someone who is the subject of UDRP complainants as well (2 pending) it brings me no joy to report on these cases, but the cases are the cases and in this case HugeDomains.com lost control of AustinPain.com which the panel acknowledged was generic in nature and for which the complainant didn’t even have a registered trademark and a common law trademark which “Complainant has done just barely enough to show trademark rights in AUSTIN PAIN.:

Yet they awarded the domain to the common law trademark holder,.

Here are the findings of the one member panel:

1.    Complainant operates a number of pain management clinics in Texas doing business as “Austin Pain Associates.”

2.    The disputed domain name was registered by “Interventional Pain Associates” on July 27, 2009.

3.     Complainant registered the business name “Austin Pain Associates” with the County Clerk of Travis County, Texas on December 20, 2003.

4.    Respondent is a domain name reseller.

5.    Respondent registered the disputed domain name on January 1, 2013.

6.    Respondent has not used the domain name.

The question before Panel is whether Complainant has done enough to prove common law or unregistered trademark rights. 

To do so it has been said that “[T]he complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services.”

Complainant claims to have used the name AUSTIN PAIN ASSOCIATES since 2002 and provides evidence of registration of the business name “Austin Pain Associates” in Travis County, Texas on December 20, 2003.

 It alleges that it is commonly known by the name AUSTIN PAIN but essentially all of the supporting material provided with the Complaint and in response to the Panel Order shows use of the assumed business name, AUSTIN PAIN ASSOCIATES. 

Nonetheless, if it can be said that Complainant has trademark rights in that name, then Panel is of the view that Complainant has trademark rights in the truncated form, AUSTIN PAIN, since the word “Associates” adds nothing more of value to the expression “Austin Pain.”

It is far from easy to assimilate the evidence into a sustainable case for unregistered rights. 

The Texas business name registration from December 2003 is not a substitute for proof of trademark rights in the sense already discussed. 

Registration of the assumed name might be an indication that the name was adopted for use then and may have been used since, but there is no proof of those matters.  To the contrary, the date of first use of AUSTIN PAIN ASSOCIATES is vague.  

Complainant suggests it once owned and lost the disputed domain name but its own evidence in that regard shows that on July 27, 2009 the disputed domain name was registered by “Interventional Pain Associates.”

There is no explanation of a connection (if any) between Complainant and Interventional Pain Associates.  Complainant has not described the circumstances under which it lost the disputed domain name.

In response to the Panel Order in which Complainant was invited to provide further and better particulars of its trademark rights and, in particular, its claim to a common law trademark right, submissions and some, limited, physical evidence was received. 

The submissions are of no assistance and proceed primarily on the mistaken belief that in law the essential element in the establishment of common law rights is proof of first adoption and use.  It is not.  The foundation of unregistered trademark rights is a proven reputation in the asserted trademark such that use of the same term by another would involve a misrepresentation and potential damage to the person or business associated with that reputation.

Moreover, Respondent correctly contends that the disputed domain name is comprised of generic terms which have been used by a number of third parties including “Austin Pain Therapy Associates, Inc.” and “Austin Pain Society.” 

Whilst the majority of UDRP panelists have taken the approach that the descriptive or generic character of a domain name is a factor best considered in the context of paragraphs 4(a)(ii) and/or (iii) of the Policy, the potential non-distinctiveness of the trademark nonetheless remains an issue germane to the determination of trademark rights.

In that regard, the place name, “Austin,” in combination with the ordinary word “pain,” for pain management, do not lend themselves generously towards trademark protection, thus leaving Panel with the awkward task of deciding whether Complainant has done what is necessary to prove trademark rights in an otherwise descriptive term which other traders may wish to use, and as the evidence shows, do in fact use in some form or another.

That task is best approached from the basic proposition that Complainant is required to show rights, not exclusive rights.  The determination must then be moderated by the observation that, in general terms, UDRP panelists have approached the proof of trademark rights in keeping with the spirit of the Policy, the aim of which is to provide a quick and effective means of combating abusive domain name registration, and not as a rule with the rigor with which a court might scrutinize a claim.

The physical evidence is largely undated and unimpressive. 

Nevertheless what can be usefully distilled is that the August 2012 edition of a publication entitled Austin Business Journal reports that Complainant was founded in 2002, has nine clinics and 155 employees.  Another article, “Top Doctors”, from austinmonthly.com in January 2013 lists one of Complainant’s medical practitioners and partners. 

Finally, a piece of evidence shows that in November 2012 another practice partner gave a presentation to other professionals which counted for “CME” (which Panel assumes in the lack of explanation stands for “continuing medical education”) points.

 Although this evidence is meagre it nonetheless points to a medical practice with a substantial employee base providing specialist services with geographical spread outside simply the city of Austin and which has a degree of stature and respect in its field of expertise. 

On balance, Panel has come to the conclusion that Complainant has done just barely enough to show trademark rights in AUSTIN PAIN.

It remains only for Panel to find that the disputed domain name is legally identical to the trademark

The publicly available WHOIS information identifies Respondent as “Domain Admin / THIS DOMAIN IS FOR SALE / HugeDomains.com” and so there is no prima facie evidence that Respondent might be commonly known by the disputed domain name. 

There is no evidence that Respondent has any trademark rights. 

There is no evidence that Complainant has authorized Respondent to use the trademark.  The domain name is not in use, has never been used and is for sale.

Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name.

The only live question is whether the disputed domain name has been used in connection with a bona fide offering of goods or services prior to notice of the dispute. ‘

Respondent states that it is a generic domain name reseller, and submits that the sale of domain names containing generic terms is a bona fide offering of goods or services. 

Respondent goes on to state that it has a particular interest in domain names with “a geo-locational value” and in names somehow related to the medical field.  It provides evidence that it has registered, for example, <austinelectrolysis.com>, <austinmeditation.com>, and <austinneurologist.com>, along with names such as <augustapain.com>, <bocaratonpain.com>, and <centralvalleypain.com>.  In short, Respondent claims to have registered 235 domain names that begin with the word “Austin” and 354 domain names that end with the word “pain.”

Panel accepts that Respondent is a domain name reseller and the reasoning of many panels that the business of registering and selling domain names for their generic value is a legitimate business practice protected under the Policy.

However, the issue is not the legitimacy of Respondent’s business model but whether it has a legitimate interest in the disputed domain name.  Put another way, the legitimacy of Respondent’s business does not, of itself, create rights or a legitimate interest in a domain name corresponding with the trademark of another. 

If that trademark is generic, it might say something of the bona fides of the domain name registrant for the purposes of paragraph 4(c)(iii) of the Policy, but the mere genericness does not create a legitimate interest in a domain name if it corresponds with the trademark of another. 

Whether this issue has been approached as a matter of “willful blindness” of third-party rights, or constructive knowledge of those rights, the same result has followed and so it follows here.  Panel finds that Respondent has no rights or interests in the disputed domain name.

 Panel makes two preliminary findings. 

First, it accepts as more likely than not to be true Respondent’s claim that, at the time it registered the disputed domain name, it had no knowledge of Complainant or of its trademark.  

Accordingly, it would be open to the Panel to decline to find bad faith registration.

Secondly, Panel also accepts that on a balance of the evidence it would appear that, contrary to Complainant’s submission, it was in fact Complainant who first contacted Respondent about purchasing thedomain name for USD 6,000. 

There is no evidence that Respondent reached out to Complainant.

However, Panel has come to the view that Respondent’s actions nonetheless fall under paragraph 4(b)(i) above. 

In terms of paragraph 4(b)(i), it is indisputable that (a) Respondent’s business requires that it registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration, and (b) Respondent would do so for valuable consideration in excess of the out-of-pocket acquisition costs. 

It therefore remains only to consider whether it had these intentions apropos Complainant “who is the owner of the trademark or service mark or to a competitor of Complainant” and it stands to reason that is the only class of persons to whom the domain name would have interest.

Panel finds registration and use in bad faith.

So this is a troubling for large domain holders since the generic domain was given to a common law trademark holder on a generic term seemly just because the owner of the domain was a large  domain holder.

UDRP Panel Orders Return of Purportedly Stolen Domain

A one member UDRP panel has ordered the return of a purportedly stolen domain name, Teenee.com

The UDRP was decided by the Asian Domain Name Dispute Resolution Centre.

UDRP panels in the past generally have refused to transfer purposed stolen domain names finding the UDRP is the wrong process to return such a domain.

However this panel noting that the domain name was owned by the Complainant since 2001 until it was transferred without its authorized in September 2013; The Complainant has filed a criminal complaint with the Royal Thai Police against the Respondent for the illegal transfer of the domain name to the Respondent.

The disputed domain name was originally registered by an authorized director of the Complainant for it to be used by the Complainant in its business. It has achieved success and the website to which it resolved prior to its transfer to the Respondent has acquired a substantial reputation because of the valuable services it provides, achieving up to 3 million page hits per day.

Whoever was responsible for the transfer of the registration to the Respondent was able to convince the then registrar to do so, but the Complainant never consented to that transfer taking place.

After the transfer took place the Respondent tried to blackmail the Complainant to have the domain name transferred back to the Complainant.

The Respondent has tried to sell the domain name back to the Complainant for the equivalent of $91,000 and has threatened the Complainant that if it will not do so, the Respondent will re-direct the domain name and reveal confidential information about the Complainant.

The panel found that “It is clear from the evidence that the Respondent has acted dishonestly, had no right to acquire the domain name and that, having acquired it dishonestly, has now set about trying to extract money from the Complainant illegally for returning its own property. Not only is it clear from the evidence that this was and apparently still is the Respondent’s plan, but she has brazenly admitted and asserted it in emails she wrote to the Complainant which are annexed to the Complaint and which are clear attempts at extortion. She has demanded the equivalent of USD 91,000 from the Complainant and threatened that if the Complainant does not co-operate she will re-direct the domain name elsewhere, reveal confidential information about the Complainant and unleash some “unpleasant surprises”. The clear intention of that attempted extortion shows that the Respondent’s primary purpose in acquiring the domain name was to obtain from the Complainant “valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name.”

Disturbing: 12 Year Old Hobbex.com Registered 4 Years Before Trademark Lost In UDRP

Hobbex AB of Borås, Sweden, just won a UDRP on the domain name Hobbex.com which is owned by Vertical Axis Inc.

The case is disturbing because  the domain holder registered the domain four years before the trademark holder got their trademark yet the majority of the three member panel gave the domain to the trademark holder finding that they used the “trademark for many years before it secured its registration”.

Moreover the trademark holder registered it in 2006 and waited until late 2013  to file the UDRP.

Here are the relevant facts and findings by the three member panel including a dissent issued by the Honorable Neil A. Smith:

“The Complainant is a Swedish company that sells a variety of toys, radio controlled craft or vehicles and other hobby products. It has stores across Sweden and sells online in Sweden and Norway. The business has been carried on by reference to HOBBEX for some 50 years.

The application for this trademark was filed on February 20, 2006 and it was registered on June 16, 2006.

The Respondent registered the disputed domain name on February 1, 2002.

It is in the business of registering domain names which it says are descriptive terms.

It hosts the disputed domain name and others it has registered through “Hitfarm.com” which it says is a service that places pay-per-click (PPC) advertising links based on a Google advertiser feed on hosted domain names, sharing the advertising revenue with the domain name owners

According to the Respondent, it plays no role in the selection of the links placed on the website. The links actually displayed may vary according to the country where the browser is located. Accordingly, the screenshot included in the Response (generated after the Complaint was notified) shows links under topics including:

- Term Life Insurance

- Health Insurance

- Travel Insurance

- Dental Plans

- Business Insurance

- Online Courses

- Business Schools

- Home Degree

- Distance Learning

- Colleges

- Work from Home.

On the other hand, when accessed from Sweden before the Complainant’s representatives sent a cease and desist letter to the Respondent the website contained links to various online shopping sites offering products of the same kind as, but not sourced from, the Complainant.

5. Discussion and Findings

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name

The Respondent does not dispute it has no licence or permission from the Complainant, but contends it does not need one. The Respondent notes, as is undoubtedly the case, that the use of domain names to generate PPC revenues is not per se in contravention of the Policy. It says it had no knowledge or awareness of the Complainant or the Complainant’s trademark when it registered the disputed domain name. Instead, it says it registered the disputed domain name “because ‘hobbex.com’ is a typographical variation of the common English work – hobby followed by “ex” standing for “exhibit” or “exhibition” to which [it] believed no party could claim exclusive rights.”

In support of that claim, it points out that it has registered many generic or descriptive domain names based on the word “hobby” such as:

“<aviationhobby.com>; <crafthobbyshopss.com>; <crafthobbysupply.com>; <creativehobby.com>; <directhobby.com>; <discounthobbys.com>; <discounthobbyshop.com>; <electrichobbystore.com>; <hobbiesandcrafts.com>; <hobbiestores.com>; <hobbycars.com>; <hobbyclasses.com>; <hobbyclay.com>; <hobbycollectible.com>; <hobbycrafters.com>; <hobbyenthusiasts.com>; <hobbygarend.com>; <hobbyrooms.com>; <hobbyshopsonline.com>; <hobbysupplyshops.com>; <internethobbys.com>; and <secrethobby.com>.”

and, further, it has registered many domain names that incorporate typographical variations of generic dictionary words such as:

“<aircondioners.com>; <airelines.com>; <alibama.com>; <ambassy.com>; <andriods.com>; <arilines.com>; <asthama.com>; <asume.com>; <attoreys.com>; <attornie.com>; <batterys.com>; <benifets.com>; <bibile.com>; <calandar.com>; <catolic.com>; <classifields.com>; <colllege.net>; <cometology.com>; <convertion.com>; <copuons.com>; <coupoons.com>; <creidtcards.com>; <cristian.com>; <deoderant.com>; <disabilty.com>; <disibility.com>; <facuet.com>; <fitnes.com>; <flemarket.com>; <freemuisc.com>; <furnitute.com>; <headaces.com>; <hemorroid.com>; <lotery.com>; <moblephones.com>; <partysuplies.com>; <partysuply.com>; <pattent.com>; <promdrsses.com>; <reantals.com>; <recepie.com>; <reigions.com>; <resaraunt.com>; <restauraunts.com>; <resteurant.com>; <saphires.com>; and <satifaction.com>.”

While recognizing that the use of a domain name for PPC revenue generation may be a legitimate activity for the purposes of the Policy, panels have repeatedly rejected the proposition that there is an absolute right to operate a PPC landing page based on a domain name which has as its primary meaning a descriptive term. Rather, as the three member panel observed in Balglow Finance S.A., Fortuna Comércio e Franquias Ltda. v. Name Administration Inc. (BVI), WIPO Case No. D2008-1216:

“[…] those who register domain names in large numbers for targeted advertising, often using automated programs and processes, cannot simply turn a blind eye to the possibility that the names they are registering will infringe or violate third-party trademark rights. See, e.g., Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448; mVisible Technologies Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304.”

The learned three member Panel explained:

“These Panel decisions are firmly grounded in an appreciation that paragraph 2 of the Policy requires registrants to make reasonable efforts to ensure they are not infringing upon third-party rights.

Moreover, as has been recognized in both Asian World of Martial Arts Inc., supra, and mVisible Technologies Inc., supra, many domain names have both dictionary word meanings and trademark-related meanings.

The disputed domain name at issue here falls into this category.

Bringing to bear the force of these Panel decisions in the context of this case, where the Respondent has not indicated that it explored the possibility of third-party rights before registering the disputed domain name, the Panel concludes that to establish rights or legitimate interests in the domain name the Respondent must come forward with credible evidence that the disputed domain name was registered because of its attraction as a generic or descriptive term, and not because of its value corresponding to a trademark, and credible evidence that there has been no use of the domain name inconsistent therewith.

“Simply stated, to demonstrate rights or legitimate interests under paragraph 4(c) of the Policy, it is not sufficient for the Respondent merely to show that the domain name has a commonly understood or descriptive meaning, while turning a blind eye to the use of the domain name with a pay-per-click landing page containing links to ads that relate at least in part to a trademark (as opposed to merely the generic or descriptive meaning of the domain name).

While the Panel acknowledges that the Respondent has used the disputed domain name to target paid advertising keyed to the domain name’s generic or descriptive meaning, the domain name also has been used to attract paid advertising that appears in part related to the CHILLI BEANS trademark (as opposed to any merely generic or descriptive meaning). In the Panel’s opinion, it is immaterial that this may be the result of the Respondent’s use of an automated relevance-matching system and advertising retrieval software that even the Respondent acknowledges is incapable of distinguishing between the generic or descriptive meaning and any trademark-related meaning.

Turning to the present case, the Panel observes that the disputed domain name is not in fact a descriptive or dictionary term. It is an invented or coined term – according to the Respondent being a combination of “hobby” and “exhibit” or “exhibition”. T

hat itself is a distinguishing factor from the “hobby” and “typographical” examples advanced by the Respondent and set out above.

In addition, all of the “hobby” examples include both syllables of the word and all of the “typographical” examples are obviously misspellings of the descriptive term or phrase rather than portmanteau constructions. Further, the Complainant has submitted evidence showing that, before the Complainant sent a cease and desist letter to the Respondent, the website featured links in Swedish to businesses in the same line as the Complainant, but which were not associated with the Complainant.

 

The Respondent says that the links vary from country to country and, in any event, it has no control over what links are placed.

As noted above, the illustration included in the Response features links for a range of activities which appear to be wholly outside the Complainant’s field.

The illustration, however, is of the website after the Complaint had been filed.

Moreover, the links do not appear to have anything to do with the asserted descriptive meaning or association of the disputed domain name.

Further, as the extracts from Balglow Finance S.A., Fortuna Comércio e Franquias Ltda. v. Name Administration Inc. (BVI), supra, show, a Respondent cannot absolve itself of any responsibility for the selection of links by leaving that to the unconstrained choice of the website host or PPC service provider.

In these circumstances, the Panel finds that the Complainant has established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name under the Policy and, further, the Respondent’s justification of its position does not rebut that case. Accordingly, the Panel finds that the Complainant has established the second limb under the Policy.

D. Registered and Used in Bad Faith

Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and is being used in bad faith by the Respondent.

The use of the disputed domain name for a landing page for PPC links to businesses in the Complainant’s field but not associated with it satisfies in this case the requirement of use in bad faith.

 

The Panel also accepts that typically a finding of registration in bad faith requires demonstration, either explicitly or circumstantially, that the Respondent did have some awareness of the complainant’s trademark before registering the disputed domain name.

On this part of the case, the Respondent has filed a declaration by the Respondent’s director of finance declaring that the disputed domain name was registered without any knowledge of the Complainant, its website, its business name or trademark and, as noted above, stating that the disputed domain name was registered for its purely descriptive significance. The Respondent also points out that it registered the disputed domain name four years before the Complainant registered its trademark.

In finding registration and use of the domain name <chillibeans.com> in bad faith, the learned three member panel in Balglow Finance S.A., Fortuna Comércio e Franquias Ltda. v. Name Administration Inc. (BVI), supra, noted:

“There are circumstances, however, where an unwavering adherence to conventional wisdom may unduly and unnecessarily frustrate the fundamental purposes of the Policy.

This is clearly the teaching of Panel decisions holding that that those who register domain names in large numbers for targeted advertising through the use of automated programs and processes cannot be willfully blind to the possibility that the names they are registering will infringe or violate third-party trademark rights.

Indeed, the application of conventional wisdom to what once might have been considered an unconventional use of a domain name, but which today has become increasingly commonplace, would in effect render paragraph 2 of the Policy a nullity in such cases.

As noted by the panel in Mobile Communication Service Inc. v. WebReg, RN, supra, where a respondent registers large swaths of domain names through the use of automated programs that snap up domain names as they become available, with no attention whatsoever to whether they may be identical or confusingly similar to trademarks, such practices may support a finding that the respondent is engaged in a pattern of conduct that deprives trademark owners of the ability to register domain names reflecting their marks.

Under such circumstances, a claim of ‘no actual knowledge’ may not obviate a respondent’s ‘willful blindness’ to the existence of such third-party rights. Rather, those who register domain names in large numbers for targeted advertising through automated programs and processes must make reasonable good faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others.

In this Panel’s view, whether such good faith efforts have been undertaken by a respondent in any give case is best determined from the pertinent facts and circumstances reflected in the record of that case, bearing in mind that the burden of proof respecting all three elements of the Policy always rests with the complainant.”

The Respondent does not claim to have made any attempt to ascertain whether its use of the disputed domain name would or could infringe another’s trademark rights. Rather, it states that it believed no one could claim exclusive rights in the term “hobbex” because of its descriptive nature.

 

The Complainant, however, was using its trademark for many years before it secured its registration.

Further, as explained above, the Panel does not accept that the disputed domain name is a purely descriptive term and notes further that, even on the Respondent’s case, the disputed domain name is not in fact being used for its claimed descriptive significance. Moreover, there is clear evidence that the disputed domain name was being used before any objection was raised by the Complainant to take advantage of the trademark significance of the term “hobbex”.

In these circumstances consistently with the approach of many previous panels dealing with such cases, the Panel finds that the Complainant has established that the disputed domain name has been registered and is being used in bad faith.

Insofar as the Respondent invokes delay or laches, that is also not typically a defence: WIPO Overview 2.0, paragraph 4.10. Further, where, as here, the term in question is a coined term and not a descriptive term and there is no evidence that the Respondent has relied to its detriment on the Complainant’s inaction,1 the Panel would not treat this case as an exception to the usual rule

Neil A. Smith filed this dissenting option:
I respectfully dissent, on the ground that I do not believe the Complainant has sustained its burden of proving that the disputed domain name was registered in bad faith. While the Complainant has proven ownership of Swedish Trademark No. 0381572, such registration was filed for and made many years after the registration of the domain name at issue, on February 1, 2002.

The application for this trademark was filed on February 20, 2006 and it was registered on June 16, 2006.

This dispute here was initiated in late 2013.

 

The majority assumes that “Given the length and extent of use, it is also likely that the Complainant would have protectable rights under Swedish law as an unregistered trademark including under the Swedish law concerning misleading market practices.”

However, while such unregistered trademark rights might exist under Swedish law, I do not know this to be the case, and, particularly, the Complainant has not made this argument or cited any Swedish authority for the proposition of law. I cannot presume that even if such is within what I would call the “common law” of Sweden, I cannot find that the Respondent should have or would have had such knowledge of the rights of mere user of a mark in Sweden, so as to make its acquisition of the domain name in bad faith under the Policy here

When the domain name was registered, the HOBBEX trademark was not yet registered in Sweden.

It is one thing to presume, perhaps, that registration is in bad faith if an identical trademark has been previously registered in a country different from that of the applicant or owner.

I cannot extend that assumption to the mere use of a trademark, even for a long time, in a faraway country.

As the panel noted in Trade Me Limited v. Vertical Axis, Inc., WIPO Case No. D2009-0093: “Certainly no trademark search in July 2001 would have revealed the Complainant’s trademarks since they were not registered until early 2004. And whilst we think it would not suffice for the purposes of the Policy, there is nothing in the provided record to establish that the Respondent actually knew, reasonably should have known, or could have any constructive notice of the Complainant’s common law rights in the trademark TRADEME mark at the time the Respondent acquired the disputed domain name.”

Here we have a sworn statement filed here on behalf of the Respondent that it was unaware of the Complainant and its use at the time of the acquisition of the domain name, which states, in part: “We did not register the Disputed Domain with Complainant’s trademark in mind and had no knowledge of Complainant, its website, its business name or trademark when we registered the domain name almost twelve (12) years ago.” Declaration of L. Wilfred-Boyce.

While I do not find the strict application of equitable laches, I agree with the Respondent that it is notable that the Complainant waited almost twelve years (6 years from the date it registered its trademark in Sweden) to initiate this Complaint.

As previous panels have noted, such a long delay in taking action can raise an inference that the Complainant did not truly believe the disputed domain name was registered in bad faith.

Accordingly, I would find that Complainant has failed to demonstrate that the disputed domain name was registered in bad faith, and would deny the Complaint on this basis

15 Year Old Quebec.com Owned By Anything.com Saved In UDRP

The government of Quebec just lost its bid to grab the domain name Quebec.com, but the domain owner failed to get a Reverse Domain Name Hijacking Ruling.

If you’re in to extremely long proper names,  the complainant in the UDRP is “Ministre des Relations internationales, de la Francophonie et du Commerce extérieur (Minister of International Relations, La Francophonie and External Trade), acting in this proceeding for and on behalf of the Government of Québec, Québec, Canada”

The domain owner is  Anything.com, Ltd who was represented by Esqwire.com.

I think in such a case its important for everyone to read including  the allegations of the parties and the responses.

While you may dismiss this case as a failed attempt to grab a Geographic domain, the panel gave a lot of consideration to the claim and some pretty good guidance of what is the acceptable use for a Geo domain and what might lose you a Geo domain in a UDRP.

Here are the relevant allegations, defenses, facts and findings by the three member panel:
5. Parties’ Contentions

A. Complainant

1. The Disputed Domain Name is identical or confusingly similar to the Canadian trademarks as it is almost identical to the marks.

2. Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, as:

(a) The Respondent has never used it to offer goods or services in good faith;
(b) It is used only as a link to a parking page containing links to businesses in Quebec and other links unrelated to Quebec;
(c) Complainant has never authorized Respondent to use its trademarks;
(d) Respondent does not hold a registered trademark for QUEBEC;
(e) Respondent is not commonly known by the Disputed Domain Name; and
(f) Respondent registered the Disputed Domain Name for profit by creating confusion regarding and tarnishing the image of Complainant’s trademarks.

Respondent registered and used the Disputed Domain Name in bad faith as:

(a) It registered and used the Disputed Domain Name with the objective of taking advantage of Internet users attempting to visit Complainant’s website;
(b) Respondent intended to benefit from hits generated by Complainant’s notoriety and official marks;
(c) Respondent intended to make illicit use of Complainant’s trademarks by creating confusion for Internet users, tarnishing Complainant’s official marks and notoriety, preventing Complainant from registering its official marks in a domain name and creating confusion with Complainant’s marks regarding the source, sponsor, affiliation and approval of the products and services offered on the website quebec.com.

B. Respondent

Respondent made the following contentions:

1. Complainant does not have trademark protection for QUEBEC because it is a descriptive term not subject to trademark protection as a stand-alone word mark.

2. The Disputed Domain Name solely incorporates the geographically descriptive term “Quebec” which is the common name of a Canadian province.

3. The Government of Quebec has also disclaimed any right to the word “Quebec” in connection with the following United States trademarks:

BONJOUR QUEBEC (Registration No. 2,923,549); and
QUEBEC ORIGINAL (Registration Nos. 4483348 and 4483347).

4. Respondent registered the Disputed Domain Name in good faith on July 10, 1998, when it was available for registration. Respondent selected the Disputed Domain solely because it is a common geographic word and it believed that anyone was entitled to register a geographic word domain name like “Quebec.”

5. The Complaint should be barred by the doctrine of laches because Complainant waited 15 years to initiate this proceeding.

6. The Disputed Domain Name is not confusingly similar to Complainant’s trademarks.

7. Respondent has rights and legitimate interests In the Disputed Domain Name because registration and use of a common geographic word domain name in connection with its descriptive meaning is a legitimate interest.

8. Complainant has not demonstrated that the Disputed Domain Name was registered and is being used in bad faith.

9. Registration of a geographic term or common word domain name is not bad faith.

10. Complainant’s inaction for 15 years supports a finding that Respondent did not act in bad faith.

11. There should be a finding of Reverse Domain Name Hijacking.

Discussion and Findings

Complainant’s case is that there is no right or legitimate interest as Complainant has never authorized Respondent to use its official marks, Respondent has never obtained a registered trademark itself for QUEBEC, Respondent is not known as “Quebec” or by the Disputed Domain

Name and, finally, that: “the Respondent registered the domain name with the intention of diverting, for profit, Web users attempting to visit the website of the Government of Quebec, by creating confusion regarding and tarnishing the image of the Complainant’s official marks. The Respondent has made illicit and unfair use of the domain name ”.

Respondent relies on its submission that it has a right or legitimate interest in the domain name because it consists of a “geographic common word”, namely “Quebec” which is both a province and major city in Canada.

It may be said first of all that there is no evidence that Respondent has a registered trademark for QUEBEC or that it is or has been commonly known by the Disputed Domain Name and it has not been alleged that Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name.

Moreover, Respondent is not affiliated with Complainant and has not been authorized by the Complainant to use its trademark in a domain name or anywhere else. Those factors are often factors going to show that a complainant has made out a prima facie case, and they are present in this case.

However, in the present case, it is the geographic indicator which is the determining factor.

On that issue, the Panel accepts the general proposition coming from Junta de Andalucia Consejeria de Turismo, Comercio y Deporte, Turismo Andaluz, S.A. v. Andalucía.Com Limited, supra although of course each case must be decided on its particular facts.

In the present case, Respondent has adopted a geographic indicator as its domain name and has sought to put it to good use in providing links to various information and commercial sites offering goods and services in or related to Quebec.

Respondent’s current website carried links to information services such as maps, directions and driving instructions and also links to sites offering hotel and flight bookings, other travel related businesses and a few other services such as immigration visas. It is true as Complainant says that some of the links do not relate specifically or exclusively to Quebec, but a fair reading of the website leaves no doubt that it is a site for goods and services offered in Quebec and in Montreal in particular.

The Panel’s overall assessment of the way that Respondent is using the Disputed Domain Name is that it is using the Disputed Domain Name in its geographic sense, i.e. that it deals with goods and services available in and specifically related to the region.

If Respondent were pretending to be Complainant itself, if its website purported to offer governmental services, if it laid some claim to speak on behalf of the region or to be an authoritative voice on governmental or municipal matters, or if it sought to mislead Internet users as to the true nature of the site, the outcome may well have been different. But one can examine Respondent’s website closely and yet not find any such matters. The website is what it presents itself to be, namely a site for people minded to find goods and services in Quebec through commercial links and for businesses in Quebec to advertise and promote their wares. An examination of the record of the website at “www.archive.org” reveals the same use over the years.

Accordingly, the Panel finds that the use to which Respondent is putting the Disputed Domain Name is the legitimate one of using a word for its value as a word, analogous to the use of a generic, descriptive or common dictionary word and not as an attempt to transgress by using it as a trademark.

In particular, the Panel does not accept the argument of Complainant that Respondent registered the Disputed Domain Name with the intention of diverting Internet users looking for the Government of Quebec, by creating confusion regarding and tarnishing the image of Complainant’s official marks.

There is no evidence at all to support that proposition and, given the contents of the website it is unlikely that the proposition reflects Respondent’s intention, although the passage of such a long period of time since Respondent registered the Disputed Domain Name makes it difficult to discern this one way or the other, making it more difficult for Complainant to satisfy its burden proof.

It is far more likely, judging from the contents of the site, that it was established to attract users wanting information on subjects such as travel and accommodation to, from and in Quebec and the other services referred to above, being precisely the use that has been made of it.

For all of those reasons, the Panel finds that Complainant has not made out its case that Respondent does not have a right or legitimate interest in the Disputed Domain Name.

E. Registered and Used in Bad Faith

Complainant submits that the Disputed Domain Name in the present case was registered and used in bad faith and that that is so for several reasons.

The first and principal reason advanced is the argument used with respect to rights and legitimate interests and now renewed under bad faith, the argument that Respondent registered the Disputed Domain Name “with the ultimate objective of taking advantage of Web users attempting to visit the Complainant’s website.”

That is essentially a submission that Respondent formed such an objective or intention. But Complainant also argues that the same conclusion can also be drawn by inference from the fact that Respondent intended to benefit from hits generated by Complainant’s notoriety and official marks and that Respondent intended to make illicit use of Complainant’s trademarks by creating confusion for Internet users, tarnishing Complainant’s official marks and notoriety, preventing Complainant from registering its official marks in a domain name and creating confusion with Complainant’s marks regarding the source, sponsorship, affiliation and approval of the products and services offered on the website “quebec.com”.

Respondent has replied to these allegations to the effect that registration of a geographic term or common word as a domain name is not bad faith and it adds correctly that this is in the absence of evidence to the contrary.

Respondent also submits that Complainant has been inactive in the 15 years since Respondent registered the Disputed Domain Name and that such a delay supports its view that it acted in good faith.

Turning first to paragraph 4(b) of the Policy, the Panel finds that there is no evidence bringing the case within sub-paragraph (i), that relating to an intention to sell or rent the Disputed Domain Name. That is so because acquiring a domain name, holding it for 15 years and using it solely for what appears to be a legitimate purpose and apparently not attempting in 15 years to sell or rent, seems to be to the contrary and to evince an intention at the time of registration to keep the domain name and use it to produce income from advertising rather than an intention to sell or rent it.

It must also be remembered that to rely on sub-paragraph (i), it must be shown that the intention to sell or rent was not just an idea at the back of a registrant’s mind, but that the registrant was “primarily” motivated by that fact and that its intention was to sell the domain name to Complainant or a competitor. There is no evidence that such was the intention of Respondent or that it was its primary intention and the fact that Respondent kept the Disputed Domain Name for 15 years without selling or renting or even attempting to do so, militates against the conclusion that it was ever the intention of Respondent to sell or rent the Disputed Domain Name.

It is also difficult to conclude that there has been a breach of paragraph 4(b)(ii) as Respondent has not prevented Complainant from reflecting its Q UEBEC trademarks in a corresponding domain name; there are numerous domain names available consisting solely of the word “Quebec”, alone and in combination with other words.

Likewise, the facts of the case do not bring it easily within sub-paragraph 4(b)(iii) of the Policy. Again, the fact that Respondent registered and used the Disputed Domain Name for an apparently legitimate purpose and retained it for 15 years, continuing to do the same thing with it during that period does not fit comfortably with the notion of Respondent wanting to disrupt Complainant’s business. Again it must be remembered that this intention must be shown to be the registrant’s primary intention. There is no evidence that Respondent had any such intention or evidence of any facts from which such an inference could be drawn.

Accordingly, the only real chance of Complainant succeeding on bad faith comes from sub-paragraph 4(b)(iv) of the Policy and the general notion of bad faith which of course is available to it as well as the specific criteria in sub-paragraph 4(b)(iv).

The Panel has already indicated in the section of the Decision dealing with rights and legitimate interests that it is difficult to conclude that Respondent had the intention to create confusion with the Canadian marks as to Respondent’s website. If this were its intention it has had 15 years to get up a website to suggest that it was the website of the Government of Quebec, but it has not done so. Its website makes no suggestion that it is the Government of Quebec, that it is modeling itself on the government, that it has any authority in governmental affairs or that it is in any other way trying to induce in a visitor the false notion that it is anything other than the commercial site that it plainly is.

Again, the Panel must also ask whether, if there is no direct evidence, are there nevertheless other matters from which it may be inferred that this was the intention of Respondent. The fact that Respondent appears to have kept strictly to promoting its own interests, namely commercial links, suggests that there are no such matters from which such an inference may be drawn.

The situation in this regard is summed by the remark of the three-member panel in Consejo de Promoción Turística de México, S.A. de C.V. v. Latin America Telecom Inc., WIPO Case No. D2004 0242 in which the trademark at issue was MEXICO and the domain name and where the panel observed:

“In this regard, Complainant has not persuaded the Panel that Internet users, typing the word MEXICO into their browsers, expect to find the goods or services of Complainant, as distinct from goods, services or information about the country Mexico.”

Likewise, in the present case, there is nothing either expressly or by inference to suggest that Internet users would think that by typing into their browsers, they would find the governmental services of the Province of Quebec, rather than goods, services or information about Quebec, which was clearly Respondent’s intention, judging from the available evidence.

There are two other considerations in this regard to which the Panel also draws attention.

The first is that bad faith, in general, means there has been a malicious or recklessly indifferent intention to do harm, which is not present on the facts in this case.

Indeed, there are no facts that are inconsistent with the intention of Respondent being solely to promote its own interests in a lawful manner.

Moreover, Respondent’s website seems to be promoting Quebec and enhancing the goods and services available there; if anything, such conduct is more akin to good faith than to bad faith. In that regard the Panel notes that the website under the Disputed Domain Name yields advertisements related to the geographic application of the term such as “Things to do (in) Quebec”, “250 Hotels in Quebec”, “Cheap flights” and “Montreal to Quebec City” as stated by the Respondent in its Response.

There is nothing related to/or capable of being branded as bad faith in such advertisements which in fact promote, in fairness or good faith, the province or City of Quebec.

Secondly, although the argument on laches in UDRP proceedings can be a sterile one, the present case is a classic example of the problems facing complainants who do not pursue their remedies in a timely manner.

The Panel is not prepared to say that laches is available as a defence in all UDRP proceedings, but it is also not prepared to say that the delay in bringing proceedings may never be considered.

In the present case, if it is assumed that Complainant has been performing its governmental duties properly, it must have been aware or should have made itself aware of the Disputed Domain Name and the way it was being used, not briefly, but for 15 years.

Yet is has brought this claim very late in the piece and has not volunteered a reason for the delay or explained it, although Respondent raised the issue of delay in the Response and it is a very live issue in this case.

The long delay means that with the limited forensic tools available to a UDRP panel, it is difficult to ascertain the intention of a registrant 15 years previously and in the time that has elapsed since then.

That state of affairs can only weaken Complainant’s case; if it cannot prove its case on the balance of probabilities because of delay for which it is responsible and for which the registrant is apparently blameless, Complainant fails on one of its most important proofs.

For these reasons, the Panel finds that the Disputed Domain Name was not registered or used in bad faith.

F. Reverse Domain Name Hijacking

The Panel finds that Complainant’s motivation in filing the Complaint was more likely than not to protect its trademarks and to stop for the future what it saw as a violation of its rights, rather than an attempt to intimidate or harass Respondent.

To bring a claim that does not succeed, which has difficulties because of the passage of time or where there turns out to be a lack of conclusive evidence does not amount to Reverse Domain Name Hijacking where it essentially must be shown that the complainant has tried to harass the respondent, which is not so in the present case.

In any event, the Panel has discretion on this matter and after considering all of the evidence and the submissions the Panel declines to make a finding of Reverse Domain Name Hijacking.

Frank Schilling Gets Hit With UDRP On the Domain Name ClearCare.com

One of Frank Schilling Name Administration domain names has been hit with a UDRP.

The domain name ClearCare.com has been owned by Name Administration since at least 2008 according to DomainTools.com

The complainant is not listed but Alcon a publicly traded company (ACL) makes a contact lens cleaning productknown as Clear Care, which it uses the URL Clearcaresolution.com.

There are multiple live trademarks for the term ClearCare in the US by:

Arch Chemicals, Inc.

ClearCare, Inc

Novartis AG

Group Health Cooperative

Mothers Polishes Waxes Cleaners which seems to be the oldest of the trademarks

We will keep our eye on this one.