World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Phase Eight (Fashion & Designs) Limited v. OCC Domain Admin

Case No. D2012-2502

1. The Parties

The Complainant is Phase Eight (Fashion & Designs) Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by A. A. Thornton & Co., United Kingdom.

The Respondent is OCC Domain Admin of Henderson, Nevada, United States of America (“United States”), represented by Steven L. Rinehart, United States.

2. The Domain Name and Registrar

The disputed domain name <phaseeight.com> (the “Domain Name”) is registered with Name.com LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2012. On December 19, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 21, 2012, and December 26, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 4, 2013, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 7, 2013.

The Center verified that the Complaint together with the amended 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 January 8, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 28, 2013. On January 24, 2013, and January 25, 2013, the Respondent requested an extension of the Response due date. On January 25, 2013 the Complainant submitted its comments and opposition to such extension. On January 28, 2013, the Center granted an extension of the Response due date until February 1, 2013. The Response was filed with the Center on February 2, 2013.

The Center appointed Nicholas Smith as the sole panelist in this matter on February 7, 2013. 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.

On February 11, 2013, following consideration of the Complaint and Response in this matter the Panel issued an Administrative Panel Procedural Order. The Administrative Panel Procedural Order was as follows:

“The Panel has reviewed the case file closely and in particular paragraphs 5.b.2 and 5.b.3 of the Response. Prior to issuing its decision on this matter, the Panel seeks further information in relation to the registration of the disputed domain name and the alleged creation of the “Phase Eight” movie.

Pursuant to its powers under Paragraph 10(a) of the Rules the Panel makes the following Panel Order.

1) The Respondent has until February 18, 2013 to provide a supplemental Response to the Complaint. Such a Response should be limited to the following:

a. Additional evidence of the creation and development of a movie titled “Phase Eight”, including any evidence of an intention to create such a movie at the time the Domain Name was registered (10 April 2004).

b. Additional evidence of the creation of a script for the movie, including a copy of the script or an explanation of why the script is unavailable.

c. Any further evidence of the progress of the movie since 2005 or explanation why there has been no such progress.

d. Any further evidence that Bushra Alwakza is a professional screenwriter, including evidence of any published work that he has worked on.

Please note that the Panel does not seek any further legal submissions on this issue, simply evidence of the matters listed above.

1) The Complainant has until February 25, 2013 to provide a supplemental filing, raising any comments it has on the Respondent’s Supplemental Response.

The due date for the Decision is extended until March 4, 2013.”

On February 19, 2013, the Respondent filed a Supplemental Response consisting of a receipt for camera equipment dated April 11, 2005, and a short explanation for why there had been no progress of the movie since 2005. The Respondent failed to provide any additional evidence of the creation of a script for the movie or any further evidence that Bushra Alwakza is a professional screenwriter. The Supplemental Response was filed one day late. However the Panel views that the delay in the Supplemental Response as de minimis and has not prejudiced the Complainant. On February 21, 2013, the Complainant filed a Supplemental Complaint that commented on matters raised in the Supplemental Response (and the Response itself, which was not requested by Administrative Panel Procedural Order No.1). The Panel therefore proceeds to its decision on the basis of the Amended Complaint, Supplemental Complaint, Response and Supplemental Response.

4. Factual Background

The Complainant is a United Kingdom corporation with its principal office in London, United Kingdom. First established in 1979 (and under its present name in 1983), the Complainant is involved in the production and retail sales, both in its own branded stores and in boutiques located in third-party stores, of clothes, handbags, jewellery and hats.

The Complainant has held trademark registrations for PHASE EIGHT (the “PHASE EIGHT Mark”) internationally, including the United States, the location of the Respondent. The PHASE EIGHT Mark was first registered as a Community Trade Mark on June 7, 1999, and was applied for and registered in the United States on March 7, 2008, and January 20, 2009, respectively. The Complainant also maintains an official website at “www.phase-eight.co.uk”. The Complainant also has numerous stores located in the United Kingdom, Germany, Ireland and Switzerland.

The Domain Name <phaseeight.com> was registered on April 10, 2004. The Domain Name redirects to a website (the “Respondent’s Website”) that consists of a series of links to third party sites with titles such as “Dresses”, “Women Clothing Stores” and “Ladies Fashion”. Such websites are normally operated on a pay-per-click basis.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

(i) that the Domain Name is identical or confusingly similar to the Complainant’s PHASE EIGHT Mark;

(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

The Complainant is the owner of the PHASE EIGHT Mark. It owns trademark registrations for the PHASE EIGHT Mark in the United Kingdom and European Community.

The Domain Name consists of the PHASE EIGHT Mark in its entirety.

The Respondent has no rights or legitimate interests in the Domain Name. There is no evidence of the Respondent’s 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. There is no evidence that the Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain, misleadingly to divert consumers or to tarnish the trademark or service mark at issue. The Complainant has not authorised the Respondent or any other third party to register the Domain Name.

The Domain Name was registered and is being used in bad faith. By using the Domain Name as a pay-per click through site linking to the Complainant’s competitor’s products and brands, the Respondent intentionally attempts to attract for commercial gain, Internet users to the Respondent’s Website or other on-line locations, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, or location of a product or service on the Respondent’s Website or location. In consequence of the use made by the Complainant of the trade mark PHASE EIGHT prior to the Domain Name being registered in 2004, the Respondent could not fail but be aware of the Complainant’s rights in the PHASE EIGHT Mark and the registration of the Domain Name by the Respondent prevents the Complainant, and owner of the trade mark, from reflecting the trade mark in a corresponding domain name, and disrupts the business of the Complainant.

B. Respondent

The Complainant’s PHASE EIGHT Mark is descriptive at best, both of a geographic location and of anything in an “eighth” phase. The Complainant’s PHASE EIGHT Mark does not fall into any of the four types of trademark categories traditionally afforded protection in trademark infringement actions (suggestive, arbitrary, fanciful and coined).

The PHASE EIGHT Mark is merely descriptive of a “phase” and is unenforceable under the Policy in present circumstances. In Trade Me Limited v. Vertical Axis Inc., WIPO Case No. D2009-0093, the panel stated,

“where a respondent registers a domain name consisting of a ‘dictionary’ term because the respondent has a good faith belief that the domain name’s value derives from its generic or descriptive qualities rather than its specific trademark value, the use of the domain name consistent with such good faith belief may establish a legitimate interest.”

The Domain Name is additionally only a geographic identifier which cannot give rise to an enforceable trade mark. The Domain Name incorporates only the generic term “Phase Eight”, a well-known shopping district in London. It is well established that geographic identifiers are not entitled to protection under the Policy.

The Respondent is Oceanside Capital Corp (OCC), which was established in 1996. The Domain Name was registered for the purpose of developing and launching a motion picture entitled “Phase Eight”. Although OCC has not yet found funding for this motion picture, it has been holding the Domain Name with the intention of doing so when OCC completes several other projects.

The use of common words in a domain name related to the descriptive meaning of the website’s services constitutes use in connection with a bona fide offering of goods or services, pursuant to paragraph 4(a)(ii) of the UDRP. The Respondent did not register the Domain Name for the purpose of capitalizing on the Complainant’s good will, but rather for the purpose of developing a motion picture. The Respondent does not have “a pattern of engaging” in preventing “the owner of the trademark or service mark from reflecting the mark in a corresponding domain name” nor could the Respondent have intended to create a likelihood of confusion or disrupt Complainant’s business, according to paragraph 4(b) of the UDRP.

The Domain Name resolves only to a generic landing page. The Respondent does not derive pay-per-click revenue from the Domain Name, and any pay-per-click advertisements appearing on the landing page are placed there automatically by the Respondent’s registrar. The Respondent has never offered the Domain Name to the Complainant for sale, and has always planned to use the Domain Name for a bona fide purpose.

The entire Complaint consists of nothing more than a recitation of the elements of the UDRP and (nonexclusive) list of the Complainant’s trademark rights (in the United Kingdom). The Complainant must also prove bad faith registration and bad faith use of the Domain Name, as well as the Respondent’s lack of rights and legitimate interests in the Domain Name. The Complainant has failed to satisfy any of these standards. The Complainant in this case has done no more than make the unsubstantiated allegation that the Domain Name was registered in bad faith, without supporting evidence.

The Complainant did not file its application for trademark registration with the USPTO until March 7, 2008, four years after Respondent registered the Domain Name. The Complainant was not granted trademark rights by the USPTO until November 2009. The Complainant has not even alleged a common law trademark rights before 2008, much less submitted the extensive evidence needed to create a presumption of common law trademark rights where the mark is neither generic nor descriptive. This Panel should find, as others have, that Complainant failed to meet the burden of proof of bad faith registration and use under Policy

The Complainant’s mark was not well-known (and non-existent in the Respondent’s geographic region) when the Domain Name was registered, and there is no way that the Respondent could have known who the Complainant was, as the Complainant had not yet filed for trade mark protection in the United States. The Respondent was not offering the Domain Name for sale. The Domain Name is not one which would infringe the rights of the Complainant under “any use,” nor does it prevent the Complainant from reflecting its own PHASE EIGHT Mark (assuming that it even had a cognizable one) in a domain name.

The Complainant had no bona fide basis for commencing this proceeding under the Policy, and is culpable of reverse domain name hijacking under paragraph 15(C) of the Policy. The Complainant is attempting to stomp on the rights of the Respondent to this action in hopes that Respondent will be unable to muster the resources necessary to defend itself.

The Complainant carefully prepared the Complaint initiating this proceeding to try and seize the Domain Name, then included numerous misrepresentations in hopes of wrongfully realizing its unlawful goals. The Complainant knew, or should have known, that these actions would constitute reverse domain hijacking from the precedents available at the click of a button across the Internet. The Respondent submits that reverse domain name hijacking is an appropriate finding in this case.

6. Discussion and Findings

A. Admissibility of the Response

The deadline to file a Response in the present proceeding was January 28, 2013 and later extended to February 1, 2013. The Response in this matter was filed by e-mail on February 2, 2013, at 7.22 am at the time zone of the Center. It may be the case that the Response was sent at 11:22 pm on February 1, 2013, in Utah, the location of the Respondent’s representative, that being 7.22 am on February 2, 2013, at the location of the Center.

In the event of a late Response, the Panel’s default course of action, pursuant to paragraph 14(a) of the Rules, is to proceed to decision based only on the Complaint. The Panel may, in its discretion, consider the response if “exceptional circumstances” exist. However, the Panel refers to AT&T Corp. v. Randy Thompson, WIPO Case No. D2001-0830, in which, although there were no exceptional circumstances, a late response was taken into account on the basis of the panel’s “general powers” pursuant to paragraph 10(b) of the Rules (“the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case”); and on the grounds that failure to take the response into account “would be a rather drastic step and should be undertaken with great care.”

The Panel holds the view that it is sufficient that Respondent has met the deadline in its time zone. However, even if it is assumed that the Response was filed one day late, the Panel considers that the lateness of Respondent’s response is de minimis and has not prejudiced the Complainant nor has it delayed the Decision in this Administrative Proceeding. The Panel therefore has admitted and considered the evidence and submissions in the Response. The Panel has reached the same conclusion in respect of the Supplemental Response, which was also filed one day late and not properly transmitted by the Respondent to the Complainant.

B. Identical or Confusingly Similar

To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.

The Complainant is the owner of the PHASE EIGHT Mark, having registrations for PHASE EIGHT as a trademark in the United Kingdom and the United States, the location of the Respondent. The Domain Name is identical to the PHASE EIGHT Mark.

The Panel rejects the Respondent’s contentions that the words “Phase Eight” refer to a geographical location in London. Both pieces of evidence submitted by the Respondent in support of this argument were references to the Complainant’s stores located in London.

The Panel also rejects the Respondent’s contention that the PHASE EIGHT Mark is generic. “Phase Eight” is not the descriptive term for the goods and services offered by the Complainant nor is it a generic name for or synonymous with a class of good or service. The mere fact that a trademark consists of a common word or phrase (such as “Apple”) does not render it in any way invalid for the purposes of this element of the Policy. Finally the Panel rejects the contention that the Complainant fails on this ground because the Complainant in its Complaint does not show rights in the United States. The Policy does not require a Complainant to prove trade or service mark rights in a mark at the location of the Respondent.

The Panel finds that the Complainant had rights in the PHASE EIGHT Mark prior to the registration of the Domain Name and that, in any event, registration of a Domain Name before a complainant acquires trade mark rights in a name does not prevent a finding that a domain name is identical or confusingly similar under the Policy. The Policy makes no specific reference to the date on which the holder of the trademark or service mark acquired rights (see Esquire Innovations, Inc. v. Iscrub.com c/o Whois Identity Shield and Vertical Axis, Inc, Domain Adminstrator, WIPO Case No. D2007-0856; The State of Tennessee, USA v. (DOMAIN NAME 4 SALE) DOMAIN-NAME-4-SALE […]@attglobal.net, WIPO Case No. D2008-0640; and Reckitt Benckiser Plc v. Eunsook Wi, WIPO Case No. D2009-0239.

The Panel finds that the Domain Name is identical to the Complainant’s PHASE EIGHT Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.

C. Rights or Legitimate Interests

To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If such a prima facie case is made out, then the burden of production of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name. Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:

“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you 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; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c)”.

The Respondent is not affiliated with the Complainant in any way. It has not been authorised by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the PHASE EIGHT Mark or a mark similar to the PHASE EIGHT Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name.

The Respondent claims that he has used the Domain Name for the purpose of developing and launching a motion picture entitled “Phase Eight”. However, the Respondent has provided no evidence of any use of the Domain Name, and very limited evidence of any 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.

Regardless of this element, given the Panel’s finding under the bad faith element it has not been necessary to reach a final conclusion under this ground.

D. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:

(i) circumstances indicating that the Respondent has registered or has 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 trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or

(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.

The requirements of paragraph 4(a)(iii) of the Policy are conjunctive, and a complainant bears the burden of proof on each (see Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003). If any required element is not established, the Complaint must fail (see Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270, denying transfer of the Domain Name because Complainant failed to prove bad faith registration).

The Domain Name has been registered for almost 9 years. "The longer the time a disputed domain name has been registered, the more difficult it is for a complainant to prove bad faith registration" (see AVN Media Network, Inc. v. Hossam Shaltout, WIPO Case No. D2007-1011). There was no explanation for Complainant’s delay in filing the Complaint. Although the Panel's decision in this case that Complainant has failed to establish bad faith registration does not rest simply on the passage of time between registration of the Domain Name and Complainant's assertion of its rights, it is a fact that the Panel cannot ignore.

There is no evidence that the Respondent has engaged in a pattern of conduct of registering domain names (including the Domain Name) to prevent trademark owners from registering a corresponding domain name. There is no evidence that the Respondent has ever registered a domain name other than the Domain Name. Nor is there any evidence that the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor: the Complainant and the Respondent are not competitors.

There are no circumstances that indicate that the the Respondent has registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant. There is no evidence that the Respondent ever attempted to sell the Domain Name until the commencement of the proceeding. On January 29, 2013, the Respondent’s attorney made an approach to the Complainant indicating that his client was amenable to a settlement, but no formal financial offer was ever made. Based on the evidence before it, including the length of time the Domain Name was held and the failure to otherwise offer the Domain Name for sale, the Panel cannot conclude from the Respondent’s conduct in exploring the possibility of a settlement that when the Respondent registered the Domain Name in 2004, it did so primarily for the purpose of selling the domain name registration to the Complainant or one of the Complainant’s competitors for an exorbitant price (see MediaSpan Group, Inc. v. Raghavan Rajagopalan, WIPO Case No. D2005-1282).

The Panel finds on the balance of probabilities that the Respondent did not register the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

The Domain Name was first registered in 2004. The Respondent has put on evidence that the reason the Domain Name was registered was for the purpose of developing and launching a motion picture entitled “Phase Eight”. Regrettably, the evidence in support of this claim was very limited, consisting of a statutory declaration from the film’s alleged screenwriter, some short e-mails from 2005 between the Respondent and the screenwriter and a receipt for the purchase of camera equipment in 2005. Despite a request for additional evidence from the Panel, the Respondent did not produce a script, evidence that the alleged screenwriter Bushra Alwakza is an actual screenwriter or any other tangible evidence of the purported reason for the registration of the Domain Name. However, there is at least some evidence before the Panel that in 2005, the Respondent and Bushra Alwakza were involved in a project that involved a script titled “Phase Eight”.

The Complainant’s explanation for the registration of the Domain Name is equally unsatisfactory. The Complainant is based in the United Kingdom and Europe. At the time of registration, it had no presence in the United States, nor did it have any registered trade marks in the United States. The Complainant has failed to put on any evidence of its reputation in the United States, the location of the Respondent, at the time of the registration of the Domain Name. The mere fact that the Complainant had an operating website in 2004 does not amount to any evidence of a reputation in the United States or that the Respondent was aware of the Complainant at that time.

The Complainant’s failure to put on any evidence of reputation at the time of registration would be less of an issue if the Domain Name was a coined word, such that there was no other logical reason for the Respondent to register the Domain Name. This is not the case with the Domain Name, which consists of two fairly common English words that mean the “eighth phase”. It is not implausible that a party unaware of the Complainant would seek to register a Domain Name consisting of the words “Phase” and “Eight” to represent the eighth phase of something.

The fact that the Respondent’s website is now a pay-per click site is strong evidence that it is currently using the Domain Name in bad faith. Present use may be used to infer that a domain name was registered in bad faith, although it is more difficult to make the inference when the present use is occurring close to 9 years after the registration date. However the mere fact that the Domain Name is currently used for a pay-per-click site is not sufficient, given the lack of Complainant’s reputation and the Respondent’s evidence of an alternate reason the Domain Name was registered, for the Panel to reach a finding that the Domain Name was registered in bad faith. Furthermore, the Respondent denies creating the pay-per-click website and claims that any such advertisements were placed there by the Registrar.

The onus is on the Complainant to prove that the Respondent registered and used the Domain Name in bad faith. In the present proceeding the Panel is not satisfied that the Complainant has discharged its onus. It has provided no evidence that the Respondent knew or should have known of the Complainant at the time of Registration. The Respondent has provided a plausible reason for registering the Domain Name and some (limited) evidence in support of its claims. The Respondent’s conduct in holding the Domain Name for 9 years without attempting to sell the Domain Name or contact the Complainant in any way provides further support for its assertion that it did not register the Domain Name with the Complainant in mind. In the absence of a finding that the Domain Name was registered in bad faith it is not necessary to reach a conclusion on whether the Domain Name is used in bad faith.

The Policy is designed to deal with “clear” cases of cybersquatting, see Clockwork IP LLC, One Hour Air Conditioning Franchising, LLC v. Elena Wallace, WIPO Case No. D2009-0485 (“UDRP proceedings are for clear cases of cybersquatting, not for resolving trademark infringement and/or trademark dilution disputes or other matters more appropriately dealt with through the courts”). The Panel has noted its concern that neither party has put on sufficient evidence showing whether the registration of the Domain Name was in bad faith. However the onus of proof on this element rests with the Complainant. In order to reach a conclusion that the Respondent had registered the Domain Name in bad faith, the Panel would have to make significant findings relating to the credit of the Respondent and Bushra Alwakza’s evidence in the absence of an opportunity to properly test such evidence. Such factual disputes are more appropriately dealt with through the courts.

E. Reverse Domain Name Hijacking

Paragraph 15(e) of the Policy provides that if after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

In Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing, WIPO Case No. D2005-0309, the majority of the three-member panel noted that the onus of proving that a complainant has acted in bad faith is on the Respondent, and that mere lack of success of the complaint is not of itself sufficient to constitute reverse domain name hijacking. The majority in Al Jazeera went on to note that:

“Allegations of reverse domain name hijacking have been upheld in circumstances where a respondent's use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy (see Goldline International, Inc v. Gold Line, WIPO Case No. D2000-1151). See also Deutsche Welle v. DiamondWare Limited, WIPO Case No. D2000-1202, where an allegation of reverse domain name hijacking was upheld in circumstances where the complainant knew that the respondent used the at-issue domain name as part of a bona fide business, and where the registration date of the at-issue domain name preceded the dates of the complainant's relevant trademark registrations.

In Sydney Opera House Trust v. Trilynx Pty. Limited, WIPO Case No. D2000-1224, the Panel found that to establish reverse domain name hijacking, the Respondent must show knowledge on the part of the Complainant of the Respondent’s right or legitimate interest in the disputed domain name and evidence of harassment or similar conduct by the complainant in the face of such knowledge.

The three-member panel in Yell Limited v. Ultimate Search, WIPO Case No. D2005-0091 noted that whether a complainant should have appreciated at the outset that its complaint could not succeed, will often be an important consideration.”

The Panel is not persuaded that the circumstances of this case justify a finding of reverse domain name hijacking. At the time the Complainant commenced the proceeding the Respondent’s Website redirected to a pay-per-click site. The Respondent has provided no evidence that the Respondent’s Website had ever been active or that there had ever been any information publically available about any Phase Eight movie. Furthermore the Domain Name had been registered using a privacy service, so there was no way the Complainant could investigate the Respondent and its business background. In those circumstances the Panel finds that the Complainant had a plausible basis for its Complaint.

The Panel also rejects the Respondent’s assertions that the Complainant contained “numerous misrepresentations in hopes of wrongfully realizing its unlawful goals”. Under the Policy, the Complainant is not obliged to provide evidence of its trade mark rights in the location of the Respondent and its failure to do so, while weakening its case, does not amount to a misrepresentation.

The Complainant's argument under paragraph 4(a)(ii) of the Policy has failed, but in the Panel's view the argument was not so obviously doomed to failure that the Complainant must have appreciated that that was the case, and made a bad faith decision to go ahead with the Complaint anyway.

7. Decision

For the foregoing reasons, the Complaint is denied.

Nicholas Smith
Sole Panelist
Date: February 25, 2013

 

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