Complainant is City Views Limited of Belize City, Belize, represented by Bowman Gilfillan Inc., South Africa (“Complainant”).
Respondent is Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE of Praesent Ave, Belgium (hereinafter referred to, jointly and severally, as “Respondent”).
The disputed domain name <mummygold.com> is registered with Moniker Online Services, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2009. On May 14, 2009, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On May 15, 2009, Moniker Online Services, LLC 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 Complainant on May 20, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on May 25, 2009. The Center verified that the Complaint together with the amendment to the Complaint (hereinafter referred to as 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 on May 27, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 16, 2009. An informal Response was filed with the Center on June 16, 2009.
The proceedings were suspended at Complainant's request in order to allow the parties an opportunity to explore amicable settlement options between June 23, 2009 and June 29, 2009. On June 29, 2009, Complainant requested re-institution of proceedings. The proceedings were re-instituted on June 29, 2009.
The Center appointed M. Scott Donahey as the sole panelist in this matter on June 30, 2009. The Panel finds that it was properly constituted. 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.
Complainant is the operator of an online gaming business. The business is conducted under the name and logo “Mummys Gold Casino.” Complainant uses the domain name <mummysgold.com> to resolve to the Internet gaming web site referenced. Complainant began using the web site in September 2002. Complainant has expended a minimum of USD 50,000.00 per month in the promotion of its web site and of the mark MUMMY'S GOLD, and the web site receives over 500,000 visitors per month. Complaint, Annex D. Complainant asserts that its mark was so well known by the time that Respondent's predecessor registered the domain name at issue that Respondent must reasonably have known of Complainant's trademark at that time. Complainant however offers no evidence as to the establishment of secondary meaning, or as to when the words “mummy's gold” were generally recognized as the source of Internet gaming services.
Complainant applied for the MUMMYS GOLD trademark with the trademark authorities of Australia, Canada, and the European Union shortly before Christmas 2007. The application in Canada is still pending. The registration in Australia issued August 1, 2008, and that in the European Union issued November 27, 2008.
The domain name was first registered on November 15, 2005, more than two years prior to the applications for the MUMMYS GOLD trademark by Complainant, but more than three years after the “Mummys Gold Casino” began its Internet gaming operations.
In an informal email response to the Center, one Peter Jacobs claimed to have purchased the domain name at issue “a while ago” for a considerable sum of money from “a Mattel Operations Agent.”1 The domain name was allegedly initially used to resolve to a web site related to “the very popular toy with the name of ‘Mummy's Gold.'” However now the domain name is being used “to promote a Casino brand of Wagersharecom, and at no time has Peter Jacobs and/or Respondent “promoted any competitors of Wagershare.” Peter Jacobs and/or Respondent is currently using the domain name at issue to resolve to a web site at which Complainant's distinctive “Mummys Gold Casino” logo is featured prominently, together with a detailed description and promotion of Complainant's Internet gaming site. If a user clicks on the copy of Complainant's “Mummy's Gold Casino” logo on Peter Jacobs'/Respondent's web site, he is taken to Complainant's Internet gaming web site.
In the Complaint, Complainant identifies Wagershare.com as a third-party administrator of an affiliate program, under which affiliates drive traffic to Complainant's web site and receive compensation for such traffic from Complainant through the administrator. The standard agreement which Wagershare.com enters into with affiliates permits the affiliates to register “derivative URLs,” which are defined as URLs that include Complainant's trademarks in whole or in part. The standard agreement requires that such derivative URLs be registered in Wagershare.com's name and that Wagershare.com be informed of any and all such URLs. Failure by an affiliate to comply with these provisions gives Wagershare.com the right to terminate the agreement with the offending affiliate.
In its Targeted Amendment to Complaint, Complainant indicates its belief that Respondent is not an affiliate under the administration of Wagershare.com, but if Respondent is in fact a member of the affiliate program administered by Wagershare.com, then Respondent has breached its agreement with Wagershare.com, Inc. by failing to register the domain name at issue in the name of Wagershare.com.
Complainant contends that the domain name at issue is identical or confusingly similar to Complainant's MUMMYS GOLD trademark, that Respondent has no rights or legitimate interests in respect of the domain name at issue, in that Respondent has no connection or affiliation with Complainant and has not been given any permission, express or implied, to use Complainant's trademarks, and that Respondent has registered and is using the domain name at issue in bad faith, since Respondent's predecessor registered the domain name more than three years after Complainant established the gaming web site and that Respondent had to have been aware of Complainant's well-known mark.
Peter Jacobs and/or Respondent alleges that the domain name was purchased “a while ago” for a considerable sum, that the domain name is being used to resolve to Complainant's web site and implies that Peter Jacobs and/or Respondent has some relationship with “Wagershare,” Complainant's third party administrator of Complainant's affiliates program, but that, while Peter Jacobs and/or Respondent has no interest in selling the domain name at issue, Peter Jacobs and/or Respondent would be willing to do so for an amount equal to the initial purchase price “plus the work that was put in to it.”
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) that the respondent has no legitimate interests in respect of the domain name; and
(3) that the domain name has been registered and is being used in bad faith.
Peter Jacobs and/or Respondent appear to concede that the domain name at issue is identical or confusingly similar to Complainant's MUMMYS GOLD trademark. A difference of one letter, such as the addition or deletion of an “s”, does not preclude a finding of confusing similarity. Aurora Foods Inc. v. David Paul Jaros, WIPO Case No. D2000-0274 (<duncanhine.com> compared to trademark DUNCAN HINES).
The Panel finds that the domain name at issue is confusingly similar to Complainant's MUMMYS GOLD trademark.
Whether Respondent can be said to have rights and legitimate interests in respect of the domain name will depend on whether the domain name at issue had been registered or is being used in good faith. If the Panel finds, that the domain name has been registered and is being used in bad faith, then Respondent could not have rights or legitimate interests in respect of the domain name. Busy Body, Inc. v. Fitness Outlet, Inc., WIPO Case No. D2000-0127.
The domain name at issue was registered some two years prior to the issuance of Complainant's registered MUMMYS GOLD mark and while Peter Jacobs and/or Respondent asserts that the domain name was acquired by Peter Jacobs and/or Respondent “a while ago,” Complainant has failed to establish that any transfer of the domain name at issue occurred after Complainant's trademark registration issued. Complainant made no attempt to establish by competent evidence that it had common law rights in the MUMMYS GOLD mark, or to establish when such rights, if they existed, first arose.
The generally accepted panel view is that, absent certain limited exceptions not applicable here, the registration of a domain name prior to the establishment of trademark rights precludes the finding that the registration was in bad faith. See, e.g., PC Mall, Inc. v. Pygmy Computer Systems, Inc., WIPO Case No. D2004-0437. However, based on the inconsistencies which have arisen in panel decisions on the issue of bad faith registration, and based on a close analysis of the landmark decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that under certain facts and circumstances “passive use” of a domain name could constitute bad faith use) and a careful reading of the language of the Policy, the Panel is convinced that this majority view is neither consistent with the Telstra approach, nor with the language of the Policy itself.
In this Panel's view, in attempting to reconcile the consensus view with the actions taken by respondents in various cases, panel decisions have sometimes reached inconsistent and contradictory results in the requirements for bad faith registration. In generally rejecting the concept of constructive notice of the existence of trademark rights, panels have held that a domain name registrant has no obligation to conduct a trademark search prior to the registration of a domain name in order for the registration to have been done in good faith. Alberto-Culver Company v.Pritpal Singh Channa, WIPO Case No. D2002-0757. On the other hand, when faced with the bulk registration of domain names using automated software programs, decisions have found that a domain name registrant involved in such bulk registrations cannot be willfully blind to the fact that some of the domain names registered infringe valid trademarks. Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448. It seems at a minimum inconsistent to require a registrant registering multiple domain names to perform some kind of trademark search in order to establish good faith registration, while a registrant registering only one or two domain names is not required to do any search whatsoever.
Moreover, a transfer of the domain name is held to be a new “registration,” such that the good faith of the registration must be evaluated as of the date of the transfer. However a renewal of the registration is not considered a new registration, so that the renewing registrant's good faith is to be evaluated as of the date of the original registration even where, at the time of the renewal, the registrant is well aware of the trademark and is using or intends to use the domain name in the future to trade on the good will inherent in the mark. Weatherall Green & Smith v. Everymedia.com, WIPO Case No. D2000-1528. In this Panel's opinion, it is not logical to place a transferee (in many cases a bona fide purchaser) in a worse position than the registrant who elects not to sell, but who is using or intends in the future to use the domain name to trade on the good will established by a mark holder.
In Telstra, supra the respondent had registered the domain name <telstra.org>, and the second level name “telstra” was identical to the mark held by complainant, which was the largest company listed on the Australian stock exchange and the largest telecommunications provider in Australia. The problem for the panel was that the domain name at issue neither resolved to a Web site nor had any other online presence. Nor had the respondent made any offer to sell the name to complainant or to anyone else. In such a situation, how could it be said that the domain name was being used in bad faith?
The panel looked at the four examples given under the UDRP that by definition constituted evidence of registration and use in bad faith. Those four, non-exclusive examples enumerated in paragraph 4(b) of the UDRP are:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.
After a careful examination of the four non-exclusive examples, the panel ultimately found, that, based on the available facts and circumstances, the registration and use of the domain name could be said to have been made in bad faith.
As far as bad faith use, the panel noted that only factor 4 of paragraph 4(b) of the Policy involved a positive action taken in respect of the domain name in the post registration period. Thus, the panel found that the first three factors seemed to contemplate the concept of passive use and that inaction or passive holding can constitute the use of a domain name in bad faith. The panel found that each case must be evaluated on its facts to determine whether the passive use constituted use in bad faith. In Telstra supra, the panel found that the following facts established that the passive use constituted bad faith use:
1. The trademark was widely known in Australia and other countries.
2. The respondent furnished no evidence of actual or intended good faith use of the domain name.
3. The respondent took active steps to conceal its identity.
4. The respondent breached the registration agreement by providing and failing to correct false contact details.
5. It is impossible to conceive of a use of the domain name at issue which would be legitimate.
Thus the panel determined that the UDRP contemplated passive use and that a panel facing a situation involving passive use must analyze the relevant facts and circumstances to determine whether such passive use was in bad faith.
As discussed above, three of the four non-exclusive UDRP examples of bad faith registration and use do not discuss use at all, but rather focus on the state of mind of the registrant at the time that it registered the domain name at issue. Conversely, the fourth example focuses entirely on use without regard to the registrant's state of mind as of the date of registration. Under paragraph 4(b)(iv) of the Policy a respondent that uses the domain name to attract Internet users to its Web site or online location by creating a likelihood of confusion with the complainant's mark and its sponsorship of the Web site is acting in bad faith, without reference to the respondent's state of mind at the time that the registrant registered the domain name. Clearly, as under the Telstra analysis, in this Panel's view bad faith registration can occur without regard to the state of mind of the registrant at the time of registration, if the domain name is subsequently used to trade on the goodwill of the mark holder, just as bad faith use can occur without regard to the fact that the domain name at issue has not been or has been only passively used.
Moreover, panelists, including this Panelist, seem to have largely overlooked the language of the Policy regarding the respondent's representations and warranties. This language negates the temporal distinction suggested by 4(a)(iii) of the Policy (“has been registered . . . in bad faith”) by requiring the registrant to make warranties as to the registrant's future conduct. Section 2 of the Policy, entitled “Your Representations,” provides in pertinent part: “[Y]ou will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name infringes or violates someone else's rights.” Emphasis added.
As this Panelist sees it, this provision not only imposes a duty on the part of the registrant to conduct an investigation at the time of registration, but also includes a representation and warranty by the registrant that it will not now or in the future use the domain name in violation of any laws or regulations. This effectively imposes on the registrant a continuing duty to ensure that the domain name is not used in violation of another's rights and clearly covers intellectual property rights and the laws protecting them, including copyright and trademark. This representation and warranty is not limited to the moment at which the registrant registers the domain name; rather, it extends to any use of the domain name in the future. This obligation is an integral part of the Policy, and it cannot be ignored. A party can register or acquire a domain name in good faith, yet use the domain name in the future in such a way that the representations and warranties that the registrant made as of the time of registration are violated. If a party uses the domain name in the future so as to call into question the party's compliance with the party's representations and warranties, there may be retroactive bad faith registration.
Just as in the Telstra analysis of passive use, whether the future use of a domain name constitutes retroactive bad faith registration will necessarily depend on an analysis of the facts and circumstances of any given case. In the present case, the Panel finds that the language of the policy and the Telstra approach require the Panel to examine the facts and circumstances of the case to determine whether the registration of the domain name could be said to be retroactively in bad faith.
In the present case, Respondent is using the domain name at issue to promote and to link to Complainant's web site. Complainant asserts that either a) Respondent is not involved in its affiliate program run by Complainant's third-party administrator, Wagershare.com, or b) if Respondent is involved in Complainant's affiliate program then Respondent has violated the terms of the standard affiliate agreement with the third-party administrator by failing to register the domain name at issue in the name of Wagershare.com. Respondent does not say, but suggests, that it is in the affiliate program and that it is using and has always used the domain name at issue to resolve to Complainant's web site and to no other. Complainant has produced no evidence to the contrary.
If Complainant's first assertion is accurate, then Respondent is promoting and linking to Complainant's web site without remuneration. Such conduct cannot be said of itself to be in bad faith. If Complainant's second assertion is true, then Respondent's breach of the agreement may give rise to a right in Complainant's third-party administrator to terminate the affiliate agreement between it and Respondent. But it is not clear this would necessarily establish Respondent's bad faith in fact vis a vis the Complainant. There has in any event been no suggestion or evidence that Wagershare.com has purported to terminate any affiliate agreement with Respondent.
Accordingly, the Panel finds that Complainant has failed on the present record to establish facts and circumstances sufficient to establish that Respondent has registered and is using the domain name at issue in bad faith. Accordingly, the Panel must find for Respondent on this issue.
For all the foregoing reasons, the Complaint is denied.
M. Scott Donahey
Dated: July 3, 2009
1 Mattel currently markets a toy product under the MUMMY'S GOLD trademark. Why a “Mattel Operations Agent” would wish to sell to a third party a domain name that closely corresponds to the trademark of one of its popular toys and one for which a trademark application was filed by Mattel with the United States Patent and Trademark Office on April 7, 2008, which application is still pending registration, was not addressed by Respondent.