The Complainants are Jumeirah International LLC and Jumeirah Beach Resort LLC of Dubai, United Arab Emirates, represented by Rouse and Co. International, United Arab Emirates.
The Respondent is Vertical Axis, Inc, Domain Administrator / Jumeira.com of Christ Church, Barbados, represented by ESQwire.com Law Firm, United States of America.
The disputed domain name <jumeira.com> is registered with Nameview Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2009. On February 17, 2009, the Center transmitted by email to Nameview Inc. a request for registrar verification in connection with the disputed domain name. On February 23, 2009, Nameview Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on February 24, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on March 1, 2009 and a further amendment on March 3, 2009. The Center verified that the Complaint together with the amendments to 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 March 10, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 30, 2009. The Response was filed with the Center on March 30, 2009.
The Center appointed Dr. Clive N.A. Trotman, Jonathan Turner and Diane Cabell as panelists in this matter on April 27, 2009. 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.
The Complainants, Jumeirah International LLC and Jumeirah Beach Resort LLC, have identical contact details and representation in Dubai. Hereafter it will be convenient for the word “Complainants” to refer to either or both. The facts about the Complainants are taken from information submitted in the Complaint.
The Complainants are members of the Jumeirah Group of companies, a part of Dubai Holding. They are in the business of hotels and hospitality with hotels and related businesses in locations including Dubai, London and New York. Jumeirah operates the Emirates Academy of Hospitality Management, in association with Ecole Hôtelière de Lausanne.
Jumeirah is a beachfront area of Dubai. The Complainants own or have applied for some hundreds of trademarks incorporating the word “Jumeirah”. Example trademarks (dated prior to December 9, 2001) include:
Jumeirah Beach Hotel, jurisdiction Australia, Reg. No. 875406, priority date May 11, 2001, classes 16, 35, 41, 42
Jumeirah Beach Hotel, jurisdiction Germany, Reg. No. 30134568, priority date June 6, 2001, classes 16, 35, 41, 42
Jumeirah Beach Hotel, jurisdiction China, Reg. No. 3014342, priority date November 9, 2001, class 16
The Complainants have applied for trademarks for the word JUMEIRAH standing alone in many jurisdictions, including:
JUMEIRAH, jurisdiction United States, Reg. No. 3469962, July 15, 2008 awaiting Reg. Cert. classes 16, 35, 43
JUMEIRAH, jurisdiction Saudi Arabia, Application No. 10599, April 18, 2006, Pending (awaiting examination), class 35
The Complainants own a substantial number of domain names incorporating or essentially comprising the trademark JUMEIRAH running to over seven close-typed pages. A few of them have dates of registration going back to 1999.
The Respondent does not directly state its business on this occasion but it may be inferred that it trades in the registration and sale of domain names on a large scale.
The disputed domain name <jumeira.com> was registered on December 19, 2001.
The Complainants have provided documentary evidence of ownership of the trademarks detailed in the preceding section and numerous others world wide incorporating the name JUMEIRAH. They say that the disputed domain name was registered on December 19, 2001 several years after the Complainants' JUMEIRAH BEACH HOTEL, BURJ AL ARAB HOTEL and JUMEIRAH EMIRATES TOWERS HOTEL had achieved international renown.
The Complainants state that their name is well-known and advertised with a substantial Internet presence, including for example the websites:
Some of these including <jumeirah.com> date back to 1999.
The Complainants contend that the disputed domain name is virtually identical to the Complainants' trademark JUMEIRAH. The words “Jumeirah” and “Jumeira” have identical pronunciation in English and visually are almost identical. It is therefore highly likely that members of the public would assume that the disputed domain name refers to the Complainants' business. The English word “Jumeira” or “Jumeirah” is a transliteration of the Arabic pronunciation of the word. In the Arabic, the final syllable is pronounced with an “h” sound (the Arabic “ah”) although it is not written. It is common for words transliterated from Arabic to English to be spelt in a variety of ways, with each version being acceptable and interchangeable. Thus the disputed domain name is identical or confusingly similar to the Complainants' trademarks pursuant to paragraph 4(a)(i) of the Policy.
The Complainants further contend that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In an amendment to the Complaint, the Complainants say that the Respondent, having been identified, is not commonly known by the disputed domain name or a similar name. Furthermore it has become possible to conduct searches about the Respondent, and that it trades in domain names, owns over 8900, and has been the Respondent in about 34 proceedings under the UDRP.
The Respondent has not been authorised by the Complainants or any associated companies to use the trademark JUMEIRAH, any other Jumeirah Trade Marks or any confusingly similar names. On the basis of reasonable enquiries the Complainants assert that the Respondent has no trademark or service mark rights in respect of the disputed domain name or any corresponding business name.
The use of the disputed domain name for the Respondent's website has the likely purpose of generating pay-per-click revenue or of being for sale and therefore does not constitute a bona fide offering of goods or services in the terms of paragraph 4(c)(i) of the Policy or a legitimate noncommercial or fair use in the terms of paragraph 4(c)(iii) of the Policy.
The Complainants contend that the Respondent is using the disputed domain name in a trademark sense. The Respondent's website is not using “Jumeira” merely to describe the type of businesses located in the Jumeira area of Dubai, but to feature references to the Complainants' famous hotels and links to third party hotels and hotel booking sites for accommodation in Jumeira and Dubai.
The Complainants further contend that the disputed domain name was registered and is being used in bad faith.
The Respondent must have been aware of, and had constructive knowledge of, the Complainants' reputation in the field of hotel and hospitality services when it registered the disputed domain name. The Complainants have a number of trademarks with earlier priority and are well-known internationally. If not aware, the Respondent should have undertaken a search in order to check whether the disputed domain name would violate any third party rights.
The Complainants state that they have monitored the website corresponding to the disputed domain name and have noted three variants over time:
Version 1 of the website dating from May 20, 2008. This was headed “for resources and information on Jumeirah Beach Hotel and Jumeirah”. It provided links to hotels operated by the Complainants and competitors in Jumeirah and Dubai.
Version 2, dating from about December 16, 2008 (shortly after the Complainants' representative was first contacted by the Respondent's representative). Some links had been removed but it still included links named after hotels of the Complainants and competitors.
Version 3, with links of a more generic nature but still with links to Jumeirah properties, hotel booking sites and third party hotels not located within the Jumeira area of Dubai.
It is contended that the recent amendments to the Respondent's website are designed to create the false impression that the Respondent is using the disputed domain name in good faith.
The Respondent receives pay-per-click revenues each time a consumer is lured to, and clicks on the links on, the Respondent's website in the mistaken belief that it has found one of the Complainants' websites.
The Complainants accordingly contend that the Respondent, by registering and using the disputed domain name, which is an obvious misspelling of the Complainants' trademark, has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a strong likelihood of confusion with the JUMEIRAH trademarks as to the sources, sponsorship, affiliation or endorsement of its website.
The Complainants provide a number of citations of previous WIPO UDRP decisions as proposed precedent for their position.
The Complainants request that the disputed domain name <jumeira.com> be transferred to Jumeirah International LLC.
The Respondent denies the Complaint.
The Respondent contends that the Complainants did not have enforceable trademark rights in the word “Jumeirah” prior to December 9, 2001, when the disputed domain name was registered, and do not have a registered trademark for JUMEIRAH standing alone. Of the 46 trademarks identified by the Complainants as registered prior to December 9, 2001, none is for the geographic term “Jumeirah” standing alone. The Complainants' marks are geographically descriptive. The U.S. Patent and Trademark Office (USPTO) refused each of the Complainants' attempts to register trademarks incorporating JUMEIRAH on the Principal Register, based on grounds of descriptiveness, and said, “The primary significance of the term JUMEIRAH is geographic.” The Complainants' trademarks were placed on the Supplemental Register as descriptive marks for which secondary meaning has not been proven.
Three weeks after submitting the formal Response, the Respondent wrote to take issue with a factual statement in the Complaint. The Respondent pointed to the Complainants' submission of a WhoIs record for the Complainants' own domain name <jumeirah.com>, with a creation date of March 2, 1999 highlighted in the Complaint, and said the Complainant's position is that this demonstrates use of JUMEIRAH standing alone prior to December 9, 2001. The Respondent says that a WhoIs History Report reveals that <jumeirah.com> was owned by Jumeirah Trading Company or Establishment since at least as early as November 27, 1999 and remained so until the Complainants acquired it around June 27, 2005 (documentation submitted).
The Respondent cites a number of previous UDRP decisions in which a complainant was found not to have trademark rights in a geographic identifier or descriptive component of a trademark, e.g., Anwar Kazi v. Domain Deluxe c/o Domain Admin, NAF Claim No. 488845 (Complainant does not have enforceable rights in the JOBSLOG mark under the Policy because its mark was registered on the Supplemental Register).
It is contended that six hundred trademark applications and registrations submitted by the Complainants are unenforceable under the Policy in this case because they were registered after December 9, 2001. The Complainants did not commence to use the trademark JUMEIRAH standing alone until December 1, 2006, five years after the disputed domain name was registered.
To establish common law trademark rights to a descriptive or generic term, the Complainants would have to present evidence of secondary meaning. The fact that “Jumeirah” is a descriptive term renders it virtually impossible to establish common law trademark rights in it.
The Respondent contends that the disputed domain name is not confusingly similar to Complainants' trademarks. Among other reasons, it has been held previously that where a trademark incorporates a descriptive term, minor differences are sufficient to eliminate a finding of confusing similarity (citing Tire Discounters, Inc. v. TireDiscounter.com, NAF Claim No. 679485).
The Respondent says that with “Jumeirah” being a geographically descriptive term, the Complainants' mark is very weak and entitled to very limited protection.
The Respondent contends that it has rights and a legitimate interest in the disputed domain name. Geographic names cannot be monopolized by registering a trademark. The Respondent is not a typosquatter because “Jumeira” is a legitimate alternative spelling of “Jumeirah”. The Respondent is entitled to use the word in good faith and has done so without any intention to target the Complainant. The Respondent has similarly registered numerous other geographically descriptive domain names.
The Respondent further contends that the disputed domain name has not been registered and used in bad faith.
It is for the Complainants to prove that the disputed domain name was registered in bad faith. There is no evidence that the Complainants were making trademark use of the word “Jumeirah” standing alone prior to December 9, 2001. Accordingly, it is impossible for the Complainants to prove that the Respondent targeted its trademark, only that the Respondent registered a variation on the spelling of “Jumeirah” which, in the Complainants' own words, is an “acceptable and interchangeable” version of the geographic term.
Links related to the Complainants' hotels on the Respondent's website do not constitute a bad faith use because they were selected through an automated process (citing Mariah Media Inc. v. First Place® Internet Inc., WIPO Case No. D2006-1275). Even if the Respondent's use were deemed to be in bad faith, it would not prove that the disputed domain name was registered in bad faith.
The Respondent cites a number of previous decisions in which the registration and use of a domain name comprising a place name were held not to constitute bad faith.
Paragraph 4(a) of the Policy states that the Respondent is required:
“to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainants have made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
Paragraph 12 of the Rules states: “In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of
the Parties.” Other than technical amendments, the Center received the following substantial supplementary communications:
Amendment to Complaint March 1, 2009
Amendment to Response April 20, 2009
Complainants' reply to the Amendment to Response April 28, 2009
The Panel strongly deprecates the submission of unsolicited supplemental filings. The Panel has the option to proceed on the original Complaint and Response alone unless it positively seeks supplementary material. In the present instance the Amendment to Response has been admitted by the Panel because the Respondent did identify, among 3.5 kilograms of paperwork, a material error that the Complainants have effectively conceded in their reply to the Respondent, the other contents of which are duly noted.
Before any consideration of possible confusing similarity between the disputed domain name and a trademark it is necessary to establish whether the Complainants have rights in the trademark. The wording in the Policy on this point is in the present tense, viz., the Complainants must prove that the disputed domain name “is identical or confusingly similar to a trademark or service mark in which the complainant has rights”.
The Complainants' claim to have rights in a trademark can be divided into two:
(a) Trademarks comprising the word JUMEIRAH standing alone: and
(b) Trademarks incorporating the word JUMEIRAH in combination with other words.
In respect of the word “Jumeirah” standing alone, Jumeirah is a geographic place. It appears to be common ground between the Parties that JUMEIRAH and JUMEIRA are alternative spellings of the same place, and hereafter they will not be distinguished (except in domain names). It is not clear how the Complainants can lay claim to trademark rights in the name of a place, unless there are extraordinary circumstances.
In order for a geographic identifier to acquire trademark rights, it is generally necessary for the connection between the place name and the trademark to be so strong that the geographical significance of the name has become displaced. For example, the producers of the beverage Champagne may assert certain rights in the name Champagne, being a place in France.
The Complainants have applied in numerous jurisdictions for registration of the word JUMEIRAH standing alone as a trademark. Most of the applications are relatively recent and are pending. In certain jurisdictions, e.g., Thailand and Turkey, the list of trademarks provided by the Complainants identifies the trademark as JUMEIRAH and the status as “registered”. Whether that is sufficient to establish protectable rights in the word “Jumeirah” is nevertheless debatable.
According to the Respondent, the USPTO trademark examiner said of the application to register JUMEIRAH as a trademark, “The primary significance of the term JUMEIRAH is geographic” and suggested that [the Complainants] should apply to register the trademark on the Supplemental Register. The Complainants' trademark log submitted to the Panel in evidence shows one entry under USA for JUMEIRAH standing alone (mentioned in section 4 above). It is in the name of Jumeirah International LLC as registrant, shows an application date of December 28, 2005, a registration date of July 15, 2008, the status as “Registered” and the sub-status as “Awaiting Reg. Cert.”. Significantly, it does not mention being on the Supplemental Register.
The Complainants have not submitted registration documents in respect of registrations of the trademark JUMEIRAH standing alone. It is not possible for the Panel to determine the standing of those registrations, for instance, whether they are on the equivalent of a Supplemental Register or can be regarded as enforceable. As pointed out in previous UDRP decisions, a trademark comprising a geographic identifier may be descriptive and registration on the Supplemental Register does not necessarily convey enforceable rights. The Respondent cites, inter alia, CyberTrader, Inc. v. Gregory Bushell, WIPO Case No. D2001-1019 (the Supplemental Register is for descriptive marks for which secondary meaning has not been proven); Michael A. King v. Joey Cambria, NAF Claim No. 1118407 (the fact that the application was amended to the Supplemental Register is itself evidence that the mark was descriptive and does not have protectable common law trademark rights): and Anwar Kazi Case, supra (Complainant does not have enforceable rights in the JOBSLOG mark under the Policy because its mark was registered on the Supplemental Register).
The Complainants also purport to trace common law rights in the trademark back to at least as early as their use of the word “Jumeirah” standing effectively alone in the domain name <jumeirah.com>, of which the registration date was stated to be March 22, 1999. The implication was that usage of the domain name <jumeirah.com> over a decade conveyed certain common law rights in the word “Jumeirah”. The Panel is prepared to accept that the Complainants made a mistake and did not intend to deceive, but the facts of the matter now conceded are that the domain name <jumeirah.com> belonged to an ice cream company until it was acquired by the Complainants in June 2005.
Allowing that paragraph 4(a)(i) of the Policy applies to the present, and that the Complainants own domain names comprising effectively the name Jumeirah, the Panel nevertheless is not prepared to accept in this case a circular argument that the acquisition and use of a domain name creates rights in support of a trademark that supports rights in the same or a similar domain name. The Panel finds that the Complainants have not succeeded in proving enforceable rights in the word JUMEIRAH standing alone as a trademark.
The Complainants own a large number of registered trademarks incorporating the word Jumeirah, typically as JUMEIRAH INTERNATIONAL, JUMEIRAH BEACH HOTEL, or in similar vein. They assert that the disputed domain name is confusingly similar to those trademarks.
In the Panel's view the disputed domain name, comprising the word “Jumeira” standing effectively alone, is similar and in part identical to the Complainants' registered trademarks such as JUMEIRAH INTERNATIONAL or JUMEIRAH BEACH HOTEL. The issue, however, is whether it is confusingly similar. Commonly in UDRP decisions the adoption in a domain name of a key word of a trademark is accepted as evidence of confusing similarity. In the present case, one question is whether the word “Jumeirah” is a definitive word in the Complainants' trademarks. The test to be applied is whether an Internet user would confuse “Jumeira” standing alone in a domain name with JUMEIRAH INTERNATIONAL, JUMEIRAH BEACH HOTEL or any of the Complainants' trademarks. The Complainants submit there would be confusion, and say for example that it is “... therefore highly likely that members of the public would assume that the Domain Name refers to the Complainants' business”.
By analogy, one might ask, would there be confusion in the minds of members of the public between “British” and “British Airways”, between “Huddersfield” and “The Huddersfield Choral Society”, or between “Bodega Bay” and a hypothetical “Bodega Bay Gas Station”? The Panel takes the view that it is highly unlikely and similarly unlikely that a domain name comprising “Jumeira” (in either spelling) standing alone would normally be confused with the Complainants' businesses.
The Panel is not persuaded, on the facts, that the disputed domain name is confusingly similar to a trademark in which the Complainants have rights. Thus, the Complainants cannot succeed under paragraph 4(a)(i) of the Policy, or at all.
It is not formally necessary to proceed further but the Panel opts to do so, particularly because as will be seen, it finds that the Complainants do not succeed under paragraphs 4(a)(ii) or 4(a)(iii) of the Policy.
The Complainants are required to prove that the Respondent does not have rights or legitimate interests in the disputed domain name. As is conventional, since the Complainants are faced with the difficulty of proving a negative without knowing the Respondent's case, the Complainants have stated a prima facie case to the effect that they have not in any way authorised the Respondent to use the Complainant's trademarks. Furthermore the Complainants have detailed how, in their view, the Respondent cannot succeed under the defences provided for in paragraph 4(c) of the Policy or otherwise.
The Respondent says that, in the terms of paragraph 4(c)(i) of the Policy, it does indeed have legitimate rights in the disputed domain name. The Paragraph requires the Respondent to prove:
“before any notice to you [the Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.”
The first notice of the dispute sent by the Complainants to the Respondent was dated August 21, 2008. The disputed domain name was registered by the Respondent before notice of the dispute, on December 9, 2001.
The disputed domain name was in use for a website before notice of the dispute and the question is whether its use was in connection with a bona fide offering of goods or services. On May 20, 2008, the website displayed the heading “Welcome to jumeira.com” and below that “For resources and information on Jumeirah beach hotel and Jumeirah” (verbatim; not Jumeirah Beach Hotel as stated in the Complaint). In all respects the website appears to be a standard pay-per-click or click-through operation whereby visitors are proffered links, which may lead through an expanded range of links, eventually to external sites. The external sites may pay the owner a commission for each referral and may pay to place advertisements on the website. Thus, the operation generates revenue by attracting viewers and referring them to advertisers.
The pay-per-click business model, of itself, may be entirely legitimate. Similar advertising is widely experienced on the Internet and may for instance subsidise an information site or news outlet. Advertisements may be targeted to individual computer users by sophisticated assessment of their location and preferences. Many websites provide information, or act as directories, for the main or added purpose of generating pay-per-click revenue for referrals elsewhere. The operation depends on attracting viewers in the first place, and may not be bona fide if another's trademark is used for that purpose in a domain name without authority.
In the present instance the links and sub-links offered have included, over time, information about specific hotels owned by the Complainants (which evidently may be provided by unofficial websites), competitor hotels, and more general links such as “List of Dubai Hotels”, “Jobs in Dubai”, “Dubai Schools”, “Travel”, “International investing”, “Accredited MBA program” and others. The links, according to the Respondent, are provided automatically by HitFarm. It may reasonably be surmised that the Respondent stands to gain financially from the arrangement. The question remains as to whether this constitutes use by the Respondent in connection with a bona fide offering of goods or services.
This type of question has recently been analysed in considerable depth by the three-member Panel in Trade Me Limited v. Vertical Axis Inc, WIPO Case No. D2009-0093, which has similarities to, and differences from, the present case. In respect of the issue of use alone, the Panel in Trade Me said:
“Whilst the issue is not beyond argument, we think that a use by which the Respondent receives revenue can be use by the Respondent, even if the Respondent never as it were takes ‘possession' of its domain name and delegates to others the exercise of the rights attached to the domain name.”
After further detailed analysis of whether the arrangement between HitFarm and a registrant constituted use specifically by a respondent in connection with a bona fide offering of goods or services, the Panel in Trade Me concluded that it did not, saying:
“This Panel's view is that to register domain names and park them to earn rental revenue by allowing a third party to use the domain name itself is not a bona fide use of the domain name in connection with the offering of goods or services by the registrant of that domain name.”
That conclusion impinges on two phrases of paragraph 4(c)(i) of the Policy, namely “bona fide use” and “in connection with”. The present Panel accepts that the receipt of click-through revenue by the Respondent is indicative of use, but reasons that such use by the Respondent is almost bound to be in connection with something. We are unable, in the present case, to decouple the use that produces revenue from the advertising service that generates it, even if the advertisements are remotely placed with the Respondent's acquiescence. There is a degree of connection that passes through the Respondent.
It then remains to be decided whether the Respondent's use of the disputed domain name is bona fide. The provisions of paragraph 4(c) of the Policy are not exclusive and failure to demonstrate use in connection with a bona fide offering of goods or services by the Respondent does not necessarily mean that the Respondent has no legitimate interest in connection with a disputed domain name. If the Respondent has not registered or used the disputed domain name in bad faith, it may well have rights or legitimate interests. It will be seen in section 6C below that bad faith registration and use are not found in this case.
A majority of the Panel takes either the view that the Respondent provides an advertising or directory service that is legitimate in itself, or that at the very least, since there is no bad faith, the Complainant has failed to prove that it is not legitimate. Thus the majority finding is that the Complainant does not succeed in the terms of paragraph 4(a)(ii) of the Policy. The dissenting view on this point is set out below.
The Complainants are required to prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith. The Complaint focuses largely on the last of these:
“(iv) by using the domain name, you [the Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
There is no realistic evidence that the initial registration of the disputed domain name was done with abusive intent. The Complainants have demonstrated that at least 46 trademarks were registered prior to the creation of the disputed domain name. As previously discussed, however, all of those are for the word “Jumeirah” in combination. The Panel finds the word “Jumeirah” to be a geographic identifier and that the Complainants have not proven that the disputed domain name was registered in bad faith.
The use of the Respondent's website for commercial gain is undoubted. For mainly the reasons discussed under 6A and 6B above, however, the Panel finds that the Complainants have not proven, on balance, that the Respondent in its use of the disputed domain name has attempted to create confusion with the Complainants' trademarks.
Bad faith registration and use may be found other than under paragraphs 4(b)(i)-(iv) of the Policy. The Complainants sent a cease and desist letter to the Respondent dated August 21, 2008. It was eventually acknowledged by the Respondent some three months later, notwithstanding that it had been sent to the address of the privacy service under which the disputed domain name was registered. A month later the Complainants and the Respondent held telephone discussions without prejudice but also without success in resolving the dispute. Shortly afterwards, changes addressing some of the Complainants' concerns were made to the Respondent's website.
Thus the Respondent neither hid behind a privacy service to the extent of evading contact, nor failed to reply, either of which mode of default has been held to be evidence of bad faith (respectively: Ebay Inc. v. Ebay4sex.com and Tony Caranci, WIPO Case No. D2000-1632; and Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163). Furthermore the Respondent has reacted constructively to at least some of the concerns of the Complainants as to the content of the website, which is indicative of a degree of good faith, and it is open to the Parties to pursue further concerns relating to trademark infringement in another forum.
The Panel does not find that the Complainants have proven bad faith registration and use within the terms of paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, the Complaint is denied.
Dr. Clive N.A. Trotman
Dated: May 21, 2009
This Panelist agrees that the Complaint should be rejected on the grounds that the Complainant has not proved the first and third requirements of the UDRP. However, in this Panelist's view the Respondent cannot claim rights or legitimate interests in respect of the disputed domain name. This Panelist agrees with the careful analysis of the principles in Trade Me Limited v. Vertical Axis Inc, (supra), subject to one point. In this Panelist's view, registration of an attractive domain name without bad faith does not of itself suffice to give the registrant a right or legitimate interest in it. In this case, this Panelist considers that the Respondent's website displaying automatically generated pay-per-click links does not constitute a bona fide offering of goods or services by the Respondent within the meaning of paragraph 4(c)(i) of the UDRP, and that the Respondent does not have a right or legitimate interest in the disputed domain name on any other basis.
Dated: May 21, 2009