WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Time Out Group Limited v. MHJ Publishing, Matthew Jones
Case No. D2012-2406
1. The Parties
The Complainant is Time Out Group Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Redd Solicitors LLP, United Kingdom.
The Respondent is MHJ Publishing, Matthew Jones of Leicester, United Kingdom (“UK”).
2. The Domain Names and Registrar
The disputed domain names <timeoutabudhabi.com> and <timeoutdubai.com> (the “Domain Names”) are registered with Register.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2012. On December 7, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On December 17, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 18, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 7, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 9, 2013.
The Center appointed Ian Lowe, Tony Willoughby and William R. Cornish as panelists in this matter on January 30, 2013. 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.
4. Factual Background
The Complainant is the parent company of the Time Out group of companies. The Time Out group is an international multimedia publisher of cultural events and experiences in the form of magazine listings and articles, websites and guidebook formats. The Complainant publishes independently 36 city magazines in 24 countries, has comprehensive online coverage (with numerous Time Out websites relating to countries and cities around the globe) and publishes city guidebooks to more than 50 cities worldwide.
The Complainant has numerous registered trademarks that comprise or include the words “time” and “out”. In particular, it is the proprietor of eight UK trademark registrations for the word mark TIME OUT, including number 1101611 registered as of September 18, 1978, two Community trademark registrations for the mark TIME OUT (including number 000136325 registered as of April 1, 1996) and various trademarks in the United Arab Emirates. As a result of the Time Out group’s business activities carried on throughout the world since 1978, the Complainant has acquired a significant goodwill and reputation in the “Time Out” name.
The Complainant markets and promotes its services through numerous websites. In addition to <timeout.com>, the Complainant operates a number of websites using domain names in the form <timeout[countryname/place].com> including <timeoutchicago.com>, <timeoutparis.com> and <timeoutnewyork.com>.
The Domain Names were originally registered by the Complainant’s licensee, ITP Consumer Publishing Limited (“ITP”) in June 2001. ITP, together with other companies in its group of companies, operates the Time Out website at “www.timeoutdoha.com” as well as the two websites to which the Domain Names resolve at “www.timeoutabudhabi.com” and “www.timeoutdubai.com” (the “Abu Dhabi Website” and the “Dubai Website”), under a Website Agreement (itself subject to a licence agreement) with a Time Out group company.
The Domain Names were transferred to the Complainant by ITP in early 2005 and were intended to remain with the Complainant. ITP remained the Administrative Contact and arranged for the renewal of the Domain Names in April 2005, for a period of seven years expiring in June 2012. When ITP came to renew the Domain Names in 2012, it discovered that the Complainant was no longer named as the registrant of the Domain Names, but that they were registered in the name of the Respondent. Investigations indicated that the Respondent had been registered as the registrant of both Domain Names since around March 2006.
At the date of the Complaint, the Domain Names continued to point to the Abu Dhabi Website and the Dubai Website. Neither the Complainant nor ITP has any knowledge of how the Respondent came to be registered as the registrant of the Domain Names and has not given any permission for him to be so registered.
The Respondent appears to have made no attempt to use the Domain Names for any business or personal purpose and, to this extent, is a “passive” holder of the Domain Names.
The Complainant took a number of steps to attempt to contact the Respondent about this dispute using the contact details for the Respondent on the domain name register but without success. Furthermore, the Complainant hired a private investigator to attend the address that was given in the registration details, but the address was for a house occupied by students, none of whom had ever heard of Matthew Jones or MHJ Publishing, or knew of his having lived at that address previously. The private investigator tried to call the telephone numbers provided, one of which simply rang off without answer, and the other led to a company whose employees had never heard of the Respondent. The investigator has also sent emails to the email address provided, but received messages from the host that the emails could not be delivered. The Respondent’s contact details therefore appear to be either false or out of date.
5. Parties’ Contentions
The Complainant contends that the Domain Names are confusingly similar to its TIME OUT trademarks, that the Respondent has no rights or legitimate interests in respect of the Domain Names and that the Respondent registered and is using the Domain Names in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names the Complainant must prove that:
(i) the Domain Names are 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 Names; and
(iii) the Domain Names have been registered in bad faith and are being used in bad faith.
A. Identical or Confusingly Similar
Leaving aside the .com suffix, that may be ignored when assessing identity and confusing similarity for the purposes of paragraph 4(a)(i) of the Policy, the Domain Names both comprise the entirety of the Complainant’s TIME OUT trademark together with a geographic identifier – “Abu Dhabi” and “Dubai”. These non-distinctive, additional terms do not detract from the distinctiveness of the TIME OUT mark included in the Domain Names. Indeed, in the Panel’s view, since the Complainant is well-known for operating websites whose domain names comprise the mark TIME OUT together with a relevant geographic term, this rather heightens the likelihood of confusion between the Domain Names and the Complainant’s TIME OUT trademark.
Accordingly, the Panel finds that the Domain Names are both confusingly similar to the mark TIME OUT in which the Complainant has rights.
B. Rights or Legitimate Interests
Since the Respondent was registered as the registrant of the Domain Names, he has apparently taken no steps whatsoever to make any use of the Domain Names. They continue to resolve to the websites operated by the Complainant’s agent. Neither the Complainant nor its agent have given any authority to the Respondent in respect of the Domain Names. The Respondent has proved untraceable and has not responded to the Complaint. In view of the notoriety of the Complainant’s TIME OUT mark and the nature of the Domain Names, the Complainant has made out a very strong prima facie case that the Respondent could have no rights or legitimate interests in the Domain Names. In the absence of a Response, there is no rebuttal of this strong prima facie case. The Panel cannot conceive of any such rights or legitimate interests.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Names.
C. Registered and Used in Bad Faith
This case presents something of a mystery. The Domain Names were both at one time owned by the Complainant. Both feature prominently the Complainant’s well-known trademark and are, as the Panel has found, confusingly similar to the Complainant’s trademark. Moreover, not only are the Domain Names apt to describe the kind of material that one would expect to see on websites connected to the Domain Names (i.e. information pertaining to Abu Dhabi and Dubai provided by the Complainant), they are connected to websites relating to those emirates, operated by a licensee of the Complainant.
As the Panel has found, the Respondent has no rights or legitimate interests in respect of the Domain Names. The Respondent is unknown to the Complainant and the Complainant has been unable to trace him, notwithstanding the employment of an investigator for that purpose. Somehow, the Complainant does not know how, the Respondent acquired the Domain Names in about 2006 without the permission of the Complainant and has done nothing with them, save to leave them connected to the Complainant’s websites. A licensee of the Complainant remains the Administrative Contact.
Who is the Respondent? The Complainant has made strenuous efforts to trace him. The address given on the Registrar’s database is a house occupied by students who have never heard of him or his company. His company name does not appear on any company or business name register. The Registrar’s database gives two telephone numbers for him. One appears to be “dead” and the other leads to a business, whose employees have never heard of him. It is not known whether these details were at one time accurate but have not been updated or whether they have always been inaccurate.
Why did the Respondent acquire the Domain Names? He clearly knew that they were the Domain Names of the Complainant and were being used by the Complainant as he left the Administrative Contact of the Complainant in place and left the Domain Names connected to the Complainant’s websites.
To succeed in this Complaint the Complainant has to satisfy the Panel that the Domain Names were both registered in bad faith and are being used in bad faith.
The Panel is satisfied that the circumstances surrounding the acquisition and use of the Domain Names, combined with the inaccuracy of the Respondent’s contact details, establish that the Respondent registered the Domain Names in bad faith. He knew they were the Domain Names of the Complainant and were being used by the Complainant. He knew that he had no rights or legitimate interests in respect of them.
But how can he be said to be using the Domain Names in bad faith? After all he is allowing them to be used in exactly the same manner as they were being used when they were owned by the Complainant. The key lies in the word “allowing”. The Domain Names are under the Respondent’s control and at any moment he can disconnect the Domain Names from the Complainant’s websites and/or transfer the Domain Names to a third party. The registrations of the Domain Names in the hands of the Respondent represent a serious threat hanging over the head of the Complainant.
The Respondent cannot have registered the Domain Names for no purpose. In all the circumstances of this case, the Panel believes it reasonable for the Panel to infer that the Respondent’s purpose was mala fide and that the threat hanging over the Complainant’s head constitutes an abusive, bad faith use for the purpose of this element of the Policy.
The Panel finds that the Domain Names were registered and are being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <timeoutabudhabi.com and <timeoutdubai.com> be transferred to the Complainant.
William R. Cornish
Date: February 11, 2013