WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
A. D. Banker & Company v. Domain Invest
Case No. D2010-1044
1. The Parties
1.1 The Complainant is A. D. Banker & Company, Kansas, United States of America, represented by Hovey Williams LLP, United States of America.
1.2 The Respondent is Domain Invest, Luxembourg, represented by Law.es, Spain.
2. The Domain Name and Registrar
2.1 The disputed domain name <adbankers.com> (the “Domain Name”) is registered with Fabulous.com. (the “Registrar”)
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 23, 2010. On June 24, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 25, 2010, Fabulous.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
3.2 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 June 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 19, 2010. The Response was filed with the Center on July 19, 2010 and a corrected form of the Response was filed later that day.
3.3 On August 16, 2010 the Complainant filed a “Request for Further Statement” in order to rebut factual allegations in the Response that the Complainant contended it could not have been expected to anticipate in the Complaint. The following day the Respondent’s representative objected by email to the Complainant’s filing, asserting that no excuse had been provided by the Complainant for the 26 day delay between the filing of the Response and the filing of the “Request”.
3.4 The Center appointed Matthew S. Harris, Debra J. Stanek and Diane Cabell as panelists in this matter on September 2, 2010. 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.
3.5 On September 10, 2010, the Panel, having reviewed the case file, issued a Procedural Order, a copy of which is at Annex A to this decision. Pursuant to that Procedural Order, the Complainant filed a further submission on September 17, 2010. The Respondent also filed a further submission on Friday September 24, 2010. Exhibits which were inadvertently left out from the Respondent’s further submission were filed by the Respondent on Monday September 27, 2010. The question of the admissibility of those submissions and exhibits is addressed in greater detail later on in this decision.
4. Factual Background
4.1 The Complainant is a Kansas limited liability Company, that offers courses, training and workshops in the field of insurance. It (or more likely its predecessor in business) has used the terms “A. D. Banker” and “A. D. Banker & Company” in the United States since 1982. It has offered its goods and services online from a website operating from the <adbanker.com> domain name since 1998.
4.2 The Complainant is the owner of the following U.S. registered trade marks:
(i) Registration No. 1351051 for the word mark A.D. BANKER in class 41 for educational services filed on September 17, 1984;
(ii) Registration No. 1686820 for the word mark A. D. BANKER & COMPANY in class 41 for educational services filed on April 1, 1991;
4.3 The Complainant acquired these marks by assignment in 1997 from a partnership trading using the A. D Banker & Company name.
4.4 The Respondent goes by the name of “Domain Invest”. This appears to be either the trading name or previous name of DI SA, a Luxembourg company.
4.5 WhoIs details for the Domain Name record that the Domain Name was first registered on August 22, 2000.
4.6 Historic WhoIs records also record that as at the April 27, 2010 the Domain Name was registered in the name of WhoIs Privacy Services. As at June 22, 2010 Domain Name details had changed so as to record the Respondent as the registrant. The WhoIs record for that date also states that the record had last been modified on June 21, 2010.
4.7 As at June 22, 2010 the Website that appeared to be operating from the Domain Name was generated by a pay-per-click or domain name parking service. The searches displayed on the page were as follows:
Under the heading “Most Popular”:
Insurance Continuing Education
Under the heading “Popular Categories”:
Apartment or Rent
4.8 The meta data for that page also included references to “ad banker” and “Ad Banker”.
4.9 If the term “Ad Banker” was clicked upon, the following sponsored listing would be displayed:
Ad Banker Insurance School
Personalized Financial Advertising Tools
Hondros College – Ohio Insurance Courses
Ad Banker Insurance
4.10 None of these sponsored listings linked to websites operated or authorised by the Complainant.
4.11 A few days later the registrant of the Domain Name recorded in the WhoIs appears to have changed to record “DI S.A.” as the registrant.
4.12 More recently the nature of the searches appearing on the website operating from the Domain Name has changed. The references to “Ad Banker” and “education” related searches appear to have been removed. For example, as at July 12, 2010, the searches that appeared under the heading “Most Popular” were as follows:
Internet Marketing Online
Internet Marketing Services
Marketing and Advertising
Online Marketing Services
Search Engine Marketing Company
4.13 The Respondent had been a party to previous proceedings under the Policy; i.e. GoFit LLC v. Dom Administration, DI S.A. and International Services Company SA, WIPO Case No. D2010-0367. The three person panel in that case found in the Respondent’s favour.
5. Parties’ Contentions
5.1 The Complainant refers to its two United States trade mark registrations and asserts that the Domain Name is identical or confusingly similar to those marks.
5.2 The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name contending that none of the examples of rights or legitimate interests provided by the Policy apply. Instead, it asserts that the Respondent is attempting to profit from the Domain Name by misleading or diverting consumers to the websites of commercial rivals of the Complainant.
5.3 The Complainant contends that the Respondent knew or should have known of the Complainant’s registered trade marks when it registered the Domain Name. It maintains that the website operating from the Domain Name as at June 22, 2010 shows that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s marks. Particularly complaint is made about the fact that if an Internet user clicks on the “Ad Banker” the website displays a page of links to the Complainant’s competitors.
5.4 The Complainant also claims that the Respondent has failed to make good faith use of the Domain Name for a substantial period of time for a legitimate business. This is said to indicate bad faith and reliance is placed on the decision in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004.
5.5 The Respondent asserts that it is the business of registering generic or descriptive domain names of use in connection with advertising or other suitable purposes. It claims to have acquired the Domain Name as part of a bulk purchase. It claims that it cannot provide the document in which the sale is recorded because of confidentiality provisions in the same.
5.6 The Respondent contends that the reason why it acquired this specific Domain Name was because of its obvious potential use to provide information about the banking sector as it comprises “ad”, which is a reference to “advertising”, and “bankers”.
5.7 The Respondent does not deny the Domain Name has been used in the fashion described by the Complainant but contends that these were the uses of the previous owner of the Domain Name for which it is not responsible. It contends that immediately upon registration the “Respondent changed the DNS settings so that the Domain Name resolved to web pages depicting advertisements for banking”. However, it claims that it would have taken “up to 3 days” for that to be reflected in the sponsored results displayed. It also claims that prior to acquisition it undertook a European trade mark search using the OAMI database and that “no European trademarks were located”.
5.8 The Respondent also contends that neither it nor the previous registrant of the Domain Name had given any prior warning of these proceedings from the Complainant.
5.9 The Respondent claims that a TESS search shows only the “A.D. Banker & Company” mark for educational services in relation to Insurance. It contends that the Domain Name is a reference to “ad“ and “bankers” and claims that the Complainant’s reputation is limited to the United States (providing evidence of an Alexa statistics in relation to the Complainant’s own website). In the circumstances, the Respondent asserts that although the “Complainant may have established rights to pass the threshold test in paragraph 4(a)(i) ... these rights are extremely limited”.
5.10 On the issue of rights or interests the Respondent contends that the Complainant’s case amounts to no more than assertion without supporting evidence and criticises the “burden shifting” rule that has been applied in respect of this element of the Policy in a number of cases.
5.11 In any event the Respondent contends that it holds a right or legitimate interest by reason of the fact that it “invests in generic and descriptive domain names for use in connection with dedicated websites providing goods or services or as generic popular search terms to provide advertising and other content”.
5.12 The Respondent also provides evidence in the form of Google searches that is said to show that the terms “ad” and “bankers” are not exclusively associated with the Complainant. Further, so far as the combination of these terms is concerned in the Domain Name the Respondent contends that “[w]hile perhaps not the ‘best’ keyword search domain, the combination of ‘ad’ and ‘bankers’ is not illogical”.
5.13 The Respondent denies that it was aware of the Complainant or its rights when it acquired the Domain Name and claims its immediate post registration actions “removed any potentially conflicting content”. Reference is made in this respect to Churchill Insurance Co Ltd v. Churchill Financial Services Limited, NAF Claim No. 1270466.
5.14 On the issue of bad faith the Respondent refers, inter alia, to various factors which are said to point away from bad faith in this case. They include an alleged lack of fame of the Complainant’s marks, the fact that the parties are in different geographical places and the alleged limited scope of the marks.
5.15 It claims that the Domain Name was registered because of its alleged generic nature, to be used in its generic sense without any intention to target the Complainant. It denies “constructive notice” of the Complainant’s marks.
5.16 As to the metatag data relied upon by the Complainant, the Respondent claims that this was data that existed prior to the Respondent’ registration.
5.17 The Respondent also makes reference to the fact that the domain name was initially registered over 10 years ago and yet the proceedings have only been commenced now. The Respondent cites in this respect Charter Communications Inc v. CK Ventures Inc. / Chaterbusiness.com, WIPO Case No. D2010-0228, which is said to be authority for the proposition that a delay in commencing proceedings “raises an inference that the Complainant did not truly believe that [the] Respondent had engaged in bad faith registration”.
5.18 Last, the Respondent claims that it is “troubled” by the fact that the mark upon which the Complainant relies is a “Nunc Pro Tunc” assignment. It claims that this sort of assignment is “inconsistent with a valid assignment that requires assignment of all goodwill”.
C. Complainant’s additional Submission.
5.19 The Complainant in its additional submission asserted that although the direct references to “Ad bankers” had disappeared from the web page operation from the domain name, this was nothing more than a “whitewash” of the home page. According to it, there were still to be found links to its competitors. In particular, it listed the following links, which it claimed appeared on July 19, 2010:
“Insurance CE Course
Insurance Education Online
Kaplan Ins Education.
Hondros College - Ohio Insurance Courses”
5.20 The evidence submitted in support of this assertion took the form of two printouts of pages operating from the Domain Name on July 19, 2010.
5.21 The Complainant also contended that as at July 20, 2010, the meta tags for the web page appearing from the Domain Name contained references to “insurance classes” and “insurance” and exhibited a copy of the web page source code in this respect. Exactly which page was being referred to in this respect was unclear.
5.22 The Complainant also claimed that the website had been taken down and that this was “suspect”. It contended that:
“Wholesale removal of the website smacks of bad faith or, at a minimum, an inability to control the website's content, which illustrates the inherent deficiencies in Respondent's position”.
5.23 The submission also included further submissions on the issue of whether the term "Ad Banker's" was distinctive or generic. For reasons explained later on in this decision, it is not necessary to record these claims.
5.24 Last, the Complainant addressed the issue of why it waited 26 days to make a request to put in further submission. It claimed this was because it deliberately waited until a Panel had been appointed, claiming:
“Being that no rules expressly address a party's request to supplement its original filing or the proper timing of such a filing, and the fact that there are few cases explaining the protocol for making such a request, Complainant was waiting to submit its Request once the Panel was appointed”
It maintained that the Respondent had suffered no prejudice by the delay.
D. Respondent’s additional Submission.
5.25 The Respondent clarified in its supplemental response that the Domain Name was acquired pursuant to a written agreement dated June 7, 2010. Respondent offered to provide a redacted version of the agreement if the Panel so required. It asserted that it first became the registrant of the Domain Name on June 21, 2010 and repeated its claim that the DNS settings for the Domain Name were changed “upon gaining control”.
5.26 It asserted that the website pages appended to the Complaint’s additional submission did not show the landing page displayed when one enters a Domain Name in a browser, but the page generated after a query made in the search box displayed on that landing page. In support of this the Respondent referred to the long url appearing at the bottom of the page. It also provided a copy of an email from the Respondent’s pay-per-click provider “DDC”. In that email DDC explained:
(i) that even if the domain name owner blocks certain keywords (for example, “insurance” and “insurance classes”), the user can still generate search results related to those keywords by searching against those terms;
(ii) by searching against specific terms, the person entering the search will influence not only the sponsored links but the “search categories” shown and the meta tags that appear in the source code for the page.
5.27 The Respondent also further contends that it has learnt from DDC (although this is not directly reflected in the email) that so far as changes to search categories and meta tags are concerned, the speed at which this occurs “depends on the number of times the search is entered compared with the total traffic that the Domain Name achieves”. The Respondent claims that it was unaware that this was how the DDC service operated and that it was actively working with DDC to “find a solution and failing to find a solution will be forced to alter service providers to prevent a similar situation from arising in future”.
5.28 The Respondent admitted that it has deactivated the Domain Name, but contends that this was not because it was trying to hide anything, but simply because it considered it to be the most professional course of action until the various technical issues described had been resolved.
5.29 The Respondent also goes on to object both generally to the Complainant being able to submit a Supplemental Response and specifically to those parts of the Complainant’s Supplemental Response that involve further submissions on the issue of whether the term "Ad Banker's" was distinctive or generic, as well as to the timing of filings, the effect of which was to give Complainant a much longer period in which to prepare its supplemental filing than that provided to Respondent.
6. Discussion and Findings
6.1 Under paragraph 4(a) of the Policy, the Complainant has the burden of proof of showing the following:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
6.2 The Panel considers these requirements in turn below. Before it does so it addresses the question of whether or not and to what extent the additional submission filed by the Complainant should be admitted in these proceedings and the issue of the procedure to be followed when a party wishes to submit the same.
A. Admissibility of supplemental submissions
6.3 A supplemental filing will rarely be considered. In DK Bellevue, Inc. d/b/a Digital Kitchen v. Sam Landers, WIPO Case No. D2003-0780, the panel stated as follows:
“As is by now well-established, the Rules do not provide any right of reply. Parfums Christian Dior S.A. v. Jadore, WIPO Case No. D2000-0938 (November 3, 2000). Although supplemental submissions may be accepted to address new legal developments, see, e.g., Pet Warehouse v. Pets.Com, Inc., WIPO Case No. D2000-0105 (April 13, 2000), or to rebut unexpected factual assertions, see, e.g., Pacific Fence & Wire Co. v. Pacific Fence and Jim Paradise, WIPO Case No. D2001-0237 (June 11, 2001), they should be allowed sparingly.”
6.4 However, on reviewing the case file the Panel formed the preliminary view that the Respondent’s factual submissions as to changes in DNS settings could not have been anticipated by the Complainant. On the Respondent’s own case there was a period of time, albeit brief, following the transfer of the Domain Name to the Respondent in which the landing page for the Domain Name carried links that at least prima facie suggested that the Domain Name had been registered and used in a fashion which suggested an intention to take advantage of the A.D. BANKER mark. Given the Respondent’s assertions that this was merely temporary, the Panel considered it appropriate to provide the Complainant with an opportunity to address that issue. The Procedural Order was drafted accordingly.
6.5 Although the Procedural Order left it open to the Respondent to put forward arguments as to why no additional submission ought to be admitted in this respect, the Panel remains of the view that was appropriate to admit further evidence and argument from the Complainant on this issue.
6.6 The Complainant’s submission also goes much further. It contains submissions and argument as to the extent to which “Ad Bankers” is distinctive of the Complainant. This is the sort of issue that the Complainant was quite capable of addressing in its original Complaint. Further, the Procedural Order did not invite further argument in this respect. Therefore, that part of the Complainant’s additional submission has been ignored.
6.7 As the Complainant’s further submission has in part been admitted, it follows that it is appropriate to admit the Respondent’s further submission insofar (but only insofar) as it responds to the same. The exhibits to that submission were submitted late. However, it is not necessary to consider whether they should or should not be admitted as the Panel is of the view that this material does not affect the Panel’s reasoning and decision in this case.
6.8 There is a further procedural issue here which was touched upon in the Procedural Order. That is the issue of the procedure to be adopted by parties when they wish to file additional submissions. The Complainant in this respect issued a Request to file a supplemental submission. It is an approach that was suggested in a few early decisions under the Policy; see The Thread.com, LLC v. Jeffrey S. Poploff, WIPO Case No. D2000-1470; Pacific Fence & Wire Co. v. Pacific Fence and Jim Paradise WIPO Case No. D2001-0237 and Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
6.9 However, it is an approach that does not seems to have found general favour amongst panelists as a whole in recent years. Also, the fact of the matter is that for good or ill, parties frequently submit additional submissions. In the early days of the Policy, the Center would leave it to the panel to decide whether it wished to see those documents, but the current practice is to place these documents before the panel and the panel will then consider whether to take any notice of the same. Rarely does a panel actually take any notice of these documents. However, whether a formal request or application was made by one of the parties in this respect now seems to play little part in whether or not the document is considered.
6.10 There are also good reasons why “motions”, “applications” and “requests” should not be encouraged in this situation. As was stated in St Andrews Links Ltd v. Refresh Design, WIPO Case No. D2009-0601, the process provided by the Policy is ill suited to the making and hearing of procedural applications and requests. It also intended to be a process on paper that is directed to the speedy resolution of certain sorts of domain name disputes. Panels are expressly mandated by paragraph 10(c) of the Rules to ensure that proceedings take place with “due expedition” and the periods of time fixed by the Rules should only be extended in “exceptional cases”. Applications of this sort jeopardise that process.
6.11 Accordingly, in the St Andrews case the panel, instead, suggested that a better way of dealing with this was as follows:
“..[i]n a case where a party wishes to file a supplemental submission not formally prescribed by the Policy or Rules, the appropriate way to proceed is to prepare a set of reasons as to why it should be allowed to do so. This should then be filled in or together with that supplemental submission.The reasons given should set out clearly and cogently why the additional submission falls within the scope of one of the limited sets of circumstances in which additional submission are submitted” (emphasis added)
6.12 The panel in St Andrews also noted that this was the solution to the issue of uncalled for supplemental fillings that has been successfully adopted by at least one other domain name ADR process (see footnote). Further, this provides the other party with notice of the submission.
6.13 This Panel would endorse that approach.
B. Identical or Confusingly Similar
6.14 The Respondent accepts that the Complainant “may” have satisfied the threshold requirement set down by the Policy when it comes to an assessment of the first limb of the Policy.
6.15 In fact the Complainant has clearly done so. Contrary to the Respondent’s contentions, the Panel is satisfied that the Complainant is the owner of a U.S. registered trade mark for “A.D. BANKER” as a word mark. It is also the owner of another word mark for “A.D. BANKER & COMPANY”. The most sensible reading of the Domain Name is as the terms “ad” and “bankers” combined with the “.com” TLD.
6.16 The relevant comparison to be conducted here is of mark and domain name only. Where the mark is registered and where the domain name is used is not of itself relevant. Conducting the relevant test the Panel concludes that the Domain Name is “confusingly similar” to the Complainant’s marks as that term is understood under the Policy.
6.17 The Panel has also taken little notice of the Respondent’s questioning of the assignments by which the relevant marks have came into the hands of the Complaint. Where a mark has proceeded to be granted a panel will rarely entertain arguments to the effect that a trade mark that is relied upon is in some manner invalid (see paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions). The proper forum in relation to that argument is not proceedings under the Policy but proceedings in the relevant trade mark registry or national court. In this case it is not validity that is questioned, but ownership. However, the same principal applies i.e., that a Panel will be reluctant to second guess the decision of a national trade mark registry in relation to the operation of its own register.
6.18 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
6.19 The Panel accepts that the Domain Name in this case has in the past been used in connection with a “domain name parking” or “pay-per-click” service. That use appears to have continued since the Domain Name was registered in the name of the Respondent. The Respondent makes a more general claim that it registers domain names “for use in connection with dedicated websites providing goods or services or as a generic popular search terms to provide advertising and content”, but essentially does not appear to deny that it is with pay-per-click use in mind that the Domain Name was primarily registered and used.
6.20 It is possible for use of a domain name for a parking site with advertising revenue generating sponsored links to provide a legitimate interest within the meaning of paragraph 4(a)(ii) of the Policy. For example, if a registrant intends to profit solely from the descriptive nature of the word or words in the domain name without intending to take advantage of a third party's rights and reputation in that term, then it may have a right or legitimate interest in the domain name (see Section 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions). On the other hand, if the owner of the domain name in question is using it with such a service in order to unfairly capitalise upon or otherwise take advantage of a similarity with another's mark then such use would not provide the registrant with a legitimate interest in the domain name (see, for example, the decision of the three member panel in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267.
6.21 Therefore, in a case such as this, the question of the existence or otherwise of a legitimate interest will involve similar questions of intended use that arise in the context of an examination of the issue of bad faith. It is however, not necessary to consider these points in greater detail, given the Panel’s findings on bad faith set out below.
D. Registered and Used in Bad Faith
6.22 As the Panel has already recorded, there is little doubt that the Respondent registered the Domain Name with pay-per-click or other advertising use in mind. The key issue is, instead, whether the Respondent sought by means of that use to profit from the similarities between the Complainant’s mark rather than any generic meaning of the domain name. If it did, the Domain Name is likely to have been registered and used in bad faith.
6.23 There are a number of factors that point in the direction of a finding of bad faith. The first is the nature of the Domain Name itself. The Domain Name can be read as the terms “Ad” and “Bankers” in combination and the Respondent has not sought to argue that the Domain Name can be sensibly read in any other way. Indeed, it contends that was with this combination in mind that the Domain Name was registered.
6.24 Whilst the terms “Ad” and “Bankers” may be each capable of being understood as ordinary English words (or in the case of “Ad” a common abbreviation for an ordinary English word) in isolation, there is no obvious and compelling reason as to why they might be combined. Prima facie, the Domain Name suggests a reference to the Complainant and the Complainant’s mark.
6.25 However, the Respondent addresses this issue head on in its Response. It claims that the Respondent intended and intends to use the Domain Name in order to promote content related to advertising and bankers. It accepts that this is “Perhaps not the ‘best’ keyword search domain”, but contends that it is not an entirely illogical combination for that purpose. The assertion is backed up with a witness statement signed by Markus Schnermann, the general manager of the Respondent.
6.26 The Panel accepts that this is not entirely implausible explanation for the registration and would be reluctant to conclude that Schnermann statement is untruthful which it would need to do if the Complainant is to succeed in these proceedings) in the absence of further compelling evidence in this respect.
6.27 This leads the Panel on to the second factor that points to bad faith. That is the fact that following registration of the Domain Name in the name of the Respondent, the main web page of “landing page” that operated from the Domain Name that contained links and searches that could only sensibly be understood as references to the Complainant’s mark. They include searches for “Ad Bankers” itself and even more tellingly “Insurance Continuing Education”. There is no obvious connection between the alleged generic reading of the Domain Name and “Insurance of Continuing Education”. The appearance of that search term can only be explained as a reference to the trade mark meaning of the Domain Name.
6.28 Sensibly, the Respondent does not attempt to defend that use. Instead, it claims that these search terms resulted from the pay-per-click settings chosen by the previous owner of the Domain Name. Claims by respondents that they are not responsible for material advertised from their domain names that result from the actions of third parties, such as “pay-per-click” provider or a previous owners, are frequently given short shrift by panels and rarely are successful in preventing a finding of bad faith. The reasoning that panels give in such cases may vary. Sometimes, the reasoning is simply that the respondent’s assertions are false and what appears provides direct evidence of the registrant’s intention. At other times, the knowledge of the person alleged to be responsible for the links is imputed to the registrant (see for example, paragraphs 6.58 and 6.59 of Aubert International SAS and Aubert France SA v. Tucows.com Co., WIPO Case No. D2008-1986). Some panels (although this is more controversial) have adopted concepts of “wilful blindness” (see, for example, the cases cited at paragraphs 6.50 to 6.52 of the Aubert International SAS case supra). However, regardless of the reasoning adopted, the outcome is the same.
6.29 Nevertheless, the Respondent also contends that there is another unusual factor in this case, which means that it should not be held responsible for these links. It is, according to the Respondent, a question of timing. It claims to have registered the Domain Name either on June 21 or June 22, 20101. The Complaint was issued only on June 23, 2010 and the evidence of the web pages operating from the Domain Name which contained the problematic links relied upon in the Complaint were dated June 22, 2010. It asserts that although it changed the settings for the Domain Name “immediately” on registration, this would take several days (the Respondent suggests up to 3 days) for these changes to be “reflected in the various cached servers throughout the world”. Given this, according to the Respondent it would be unfair to draw any conclusions adverse to the Respondent’s motivations and intentions from web pages that were dated the day after the Domain Name was transferred.
6.30 The Complainant did not specifically seek to address the accuracy of these technical claims in its supplemental submissions. Instead it sought to rely on evidence that it claimed showed that more recently, links had appeared from the Domain Name that suggested that the Respondent was, despite its protestation to the contrary, still taking advantage of an association with the Domain Name and the Complainant’s mark.
6.31 If the Complainant had been able to make out these claims, it is likely that they would have been fatal to the Respondent case. However, in the opinion of the Panel the Complainant has failed to do so.
6.32 The Panel accepts the Respondent’s contention that the pages brought forward to support these contentions are not pages that are taken from the landing page operating for the Domain Name, but instead appear to be pages generated as a result of specific searches undertaken from that page. The link displayed may well link to competitors to the Complainant’s business. However, if these links were generated not because of any association with the Domain Name, but simply because of the nature of the search request that the Complainant has independently chosen, then that is of limited or no evidential value when it comes to assessing the Respondent motivations for registration.
6.33 The Complainant’s additional submission seems only to draw attention to links on the pages relied upon rather than the text of the “related searches” that also appear. These “related searches” include once again “Insurance Education” and “Quote Insurance”. However the Respondent addresses these also. In particular, the Respondent appears to contend that these links (and meta tags on the page) can also be influenced by the searches made by visitors to the landing page operated from the Domain Name, although this is a slower process.
6.34 The Respondent goes on to assert that it was not aware of these features of the algorithms used by its pay-per-click provider and that now it is actively working with DDC to prevent this happening and will if necessary move to a different provider if this cannot be resolved.
6.35 Ultimately, the Panel has reached the conclusion that the contentions of the Respondent are broadly consistent with the evidence offered by the Complainant and the Complaint has failed to satisfactorily show that the Domain Name was registered with an intention to take advantage of the Complainant’s marks.
6.36 That is not to say that the Panel accepts without question the Respondent’s contentions, nor that there are aspects of the Respondent’s case that are not curious if not positively problematic. There is a particular lack of clarity in the Respondent’s assertions in relation to the change of DNS settings. It states in its initial submission that these were changed “immediately” upon registration, and its supplemental submission seems to suggest that these changes took the form of actively blocking insurance related links. But exactly when this occurred is not clear. In circumstances, where the relevant dates and events all took place over a couple of days in June, the exact timing of this might well be significant. Further, if as is also claimed, the Respondent was unaware of the Complainant at the time that it registered the Domain Name, what would have led it to decide to block out insurance related keywords?
6.37 However, whether or not these issues are ultimately of significance is not clear and they cannot be resolved by the Panel in the absence of calls for further evidence and argument that would further prolong these proceedings in a manner which is inconsistent with the intent of the Policy.
6.38 The issue of the possible persistence of “related searches” is also one that troubles at least one member of the panel. It is one thing to excuse the temporary appearance of sponsored links for a few days. It is quite another if for well over a month after the commencement of proceedings, sponsored searches still appeared that might have been driven by a similarity to another’s trade mark. Perhaps the Respondent did not know about this, but since the knowledge of DDC might well be imputed to it, that would not necessarily save the Respondent.
6.39 However, what exactly is going on here is far from clear and the Complainant does not appear to have brought forward a case based on the persistence of search terms. It complains about the links. In the circumstances, it would be inappropriate to decide the case on that basis.
6.40 Therefore, ultimately, given the constraints of the Policy and the Complainant’s claims in these proceedings, the Panel finds that the Complainant has not made out to its satisfaction its claims of bad faith. Accordingly, the Complainant has failed to satisfy the requirements of paragraph 4(a)(iii) of the Policy.
6.41 The Panel would, however, add that should in future the Respondent use the Domain Name in a manner which can only be explained in some manner by reference to the Complainant’s marks (whether directly or through the means of an algorithm devised by its pay-per-click service provider) that would seriously undermine the credibility of a number of the assertions that have been made by the Respondent and which have been key to the Panel’s findings in this case. Whether or not evidence to this effect would be sufficient to justify the commencement of fresh proceedings would be a matter for a subsequent panel to determine.
For all the foregoing reasons, the Complaint is denied.
Matthew S. Harris
Debra J. Stanek
Dated: September 30, 2010
WHEREAS the Panel has reviewed the case file and, without prejudice to any subsequent findings of fact or law or any decision on the interpretation of any aspect of the Uniform Dispute Resolution Policy (the “Policy” or “UDRP”) or the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), notes and has reached the preliminary views as follows:
(i) The domain name in issue in these proceedings is <adbankers.com> (the “Domain Name”).
(ii) The Complainant in support of its case relies upon a print out of WhoIs record for the Domain Name (Complaint, Annex 1) that identifies the registrant for the Domain Name as Domain Invest. That printout includes a statement that this record for the Domain Name was “modified on 20010-06-21 13:07:01 UTC”.
(iii) The Complainant in support of its case relies, inter alia, upon a declaration from a Mr. George McCoy dated June 22, 2010 that appends what appears to be (a) a print out from the webpage appearing from the Domain Name on June 22, 2010 (Complaint, Annex 5, Exhibits 4 and 5); and (b) a copy of source code for that webpage that appears to be dated June 22, 2010 (Complaint, Annex 5, Exhibit 7, page 16, line 890)
(iv) The Respondent contends that it is not responsible for the webpage identified at (iii) above. In this respect it claims that (a) it purchased the Domain Name on a date that is not expressly disclosed; (b) it “registered” the Domain Name on June 21, 2010; (c) on registration it immediately changed the DNS settings for the Domain Name so that the Domain Name resolved to web pages depicting advertisements for banking; and (d) it would “take up to 3 days to have such changes reflected in the various cached servers throughout the world” (Request pages 2 and 3).
(v) In a request for Further Statement filed with the World Intellectual Property Organization Arbitration and Mediation Center (the “Center”) on August 16, 2010, the Complainant contended that the Response contained allegations that it could not have been expected to address in the Complaint and requested the Panel to permit it to submit a concise rebuttal to the Response.
(vi) The Panel has formed the preliminary view that the Complainant is correct in that the Response contains allegations that the Complainant could not have been expected to address in the Complaint. However, it also notes the email from the Respondent’s lawyers dated August 17, 2010 in which the Respondent claims that there is no excuse for the Complainant having delayed 26 days after service of the Response before filing its Request.
(vii) The Panel notes that in St Andrews Links Ltd v. Refresh Design, WIPO Case No. D2009-0601 the panel suggested that when a party wished to file a supplemental submission, and in order that the proceedings were not unduly delayed, the way to deal with this was not to file a stand alone request, application or motion. Instead, it suggested as follows:
“.., in a case where a party wishes to file a supplemental submission not formally prescribed by the Policy or Rules, ... the appropriate way to proceed is to prepare a set of reasons as to why it should be allowed to do so. This should then be filled in or together with that supplemental submission. The reasons given should set out clearly and cogently why the additional submission falls within the scope of one of the limited sets of circumstances in which additional submission are submitted” (emphasis added)
The Panel, pursuant to paragraphs 10 and 12 of the Rules for Uniform Domain Name Dispute Resolution Policy, HEREBY MAKES THE FOLLOWING ORDER:
(1) The Complainant is invited to file by email with the Center by no later than 9:00 pm GMT on Friday, September 17, 2010 a supplemental submission addressing any of the matters identified in the recitals to this Order.
(2) The Respondent is invited to file by email with the Center by no later than 9:00 pm GMT on Friday, September 24, 2010 a supplemental submission addressing any of the matters identified in the recitals to this Order and/or any submission filed by the Complainant pursuant to paragraph (1) of this Order (including, if so advised, the admissibility of any supplemental submission by the Complainant).
(3) Any submission filed pursuant to paragraphs (1) or (2) above:
(i) must be forwarded to the Center by email in accordance with paragraph 3(b) of the WIPO Supplemental Rules;
(ii) must include a declaration signed by a named individual as follows:
“The [Complainant / Respondent] certifies that the information contained in this submission is to the best of the [Complainant / Respondent] knowledge complete and accurate, that this submission is not being presented for any improper purpose, such as to harass, and that the assertions in this submission are warranted under the Policy and the Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.”
(iii) must explain the relationship to the Complainant or Respondent of the named individual giving the declaration in accordance with sub-paragraph (ii) above and explain how it is that he or she has knowledge of the matters set out in the submission; and
(iv) must either be in a form that is text searchable (for example, a .doc Word document or a text searchable .PDF document) or be accompanied by a copy that is text searchable.
(4) The Panel hereby extends the time by which a decision shall be issued in these proceedings until Friday, October 1, 2010.
Matthew S. Harris
Presiding Panelist for and on behalf of the Panel
Dated: September 10, 2010
1 The initial Response claims the date to be June 22, 2010 but the WhoIs record for the domain name suggests that the record was updated on June 21, 2010. In the Respondent’s supplemental submission the date June 21 and June 22 are both used.