WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Booked Ltd v. Privacydotlink Customer 251836 / Dominic Hulewicz
Case No. D2014-1937
1. The Parties
The Complainant is Booked Ltd of London, United Kingdom of Great Britain and Northern Ireland ("UK") internally-represented.
The Respondent is Privacydotlink Customer 251836 / Dominic Hulewicz of Truro, UK, self-represented.
2. The Domain Name and Registrar
The disputed domain name <booked.com> (the "Disputed Domain Name") is registered with Uniregistrar Corp (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 31, 2014. On November 3, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same day, the Registrar 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 November 11, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to amend the Complaint. The Complainant filed an amended Complaint on November 11, 2014, identifying the Respondent as an individual, Mr. Dominic Hulewicz. The Respondent is accordingly where appropriate referred to as "he" in this decision.
The Center verified that 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 proceeding commenced November 13, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 3, 2014. The Response was filed with the Center on December 1, 2014.
The Center appointed Nick J. Gardner, Christopher S. Gibson and Tony Willoughby as panelists in this matter on December 18, 2014. 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.
On December 24, 2014 the Panel issued Procedural Order No. 1 seeking certain further information from the Complainant about its representation and its response to the Respondent's allegation of reverse domain name hijacking ("RDNH"). The Complainant filed a further submission in relation to this Order on December 26, 2014. The Respondent filed a further submission in response to the Complainant's submission on January 12, 2015. Where relevant, details from those submissions are incorporated below.
4. Factual Background
The relevant facts can be stated very succinctly and are not in dispute.
The Respondent registered the Disputed Domain Name on January 7, 1999. At all material times since then it has been used in respect of a "parking page" containing automatically generated links to third-party websites – pay-per-click or "PPC" links. The Respondent earns revenue as a result of this arrangement, although details of the amounts in question are not known to the Panel. That page also indicates that the Disputed Domain Name is available for sale and invites interested parties to make an offer for its purchase. Various offers have been made by third parties in the past to purchase the Disputed Domain Name but have not been accepted by the Respondent.
The Complainant was incorporated on July 15, 2014 as an English registered limited company. It has registered the domain names <booked.xyz> and <bookedxyz.com>. It owns a UK registered trademark in respect of the terms "booked.xyz" and "booked.com", registration number UK 00003064753 registered (as a series) on October 24, 2014. These terms are registered in respect of a range of services including, for example, "provision of intermediation services for the booking of time slots, places, spaces, equipment and/or services" in class 35.
Beyond these bare facts no information at all has been provided to the Panel about the Complainant's business (if any).
There is no evidence of any change in the way the Disputed Domain Name has been used since the Complainant came into existence.
5. Parties' Contentions
The Complainant's contentions in summary are as follows.
The Disputed Domain Name is identical or confusingly similar to its registered trademarks BOOKED.COM and BOOKED.XYZ.
The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. It does not have any registered trademarks corresponding to, or similar to, the term "booked". It has rejected various offers from third parties to purchase the Disputed Domain Name in the past which shows an intention to use the Disputed Domain Name to hold other potential users of the term "booked" to ransom. The Respondent's use of the Disputed Domain Name in relation to a PPC page is a "waste of resources". It is also violating the Complainant's trademarks by directing traffic away from the Complainant.
The Respondent says his registration of the Disputed Domain Name predates the existence of the Complainant by 15 years and cannot be in bad faith. He also says that use of the Disputed Domain Name for a PPC page is legitimate. He says offers for sale of the Disputed Domain Name are generated automatically by the provider of the PPC page, and that he has rejected any offers received. He says there is nothing wrong with this. He refers to a number of previous cases which he says are the same as this case, and he also refers to various sections of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") which he says support his position.
The Respondent says this Complaint is misconceived and should never have been brought and seeks a declaration from the Panel that the Complainant's conduct amounts to RDNH.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed 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 Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used by the Respondent in bad faith.
A. Identical or Confusingly Similar
The Complainant has established that it has a registered trademark in respect of the terms "booked.com" and "booked.xyz". The dominant part of each of these terms is the word "booked" and the Panel concludes in these circumstances that the Disputed Domain Name is identical or confusingly similar to the Complainant's trademark. The Respondent is of course correct in noting that this trademark series was applied for and registered long after he registered the Disputed Domain Name. Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under paragraph 4(a)(i) of the UDRP. The WIPO Overview 2.0, paragraph 1.4 states in response to the question "Does the complainant have UDRP-relevant trademark rights in a trademark that was registered, or in which the complainant acquired unregistered rights, after the domain name was registered?" as follows:
"Consensus view: Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under the UDRP. The UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired rights. However, in such circumstances it may be difficult to prove that the domain name was registered in bad faith under the third element of the UDRP."
The Panel agrees with this view. Accordingly the Complainant has satisfied this element.
B. Rights or Legitimate Interests
The Panel notes that the word "booked" is an ordinary English word. It is the past tense form of the verb "to book" meaning (most commonly) to make a reservation. It is typically used for example in relation to making a reservation at a restaurant or on a flight or for a holiday (as in "I have booked a table for us at the restaurant tonight").
As a general rule the registration of domain names is a "first come first served" system. In this particular case the Panel concludes that the Respondent was perfectly entitled to register this ordinary English word given no antecedent trademark rights are alleged to have existed at the time of registration.
Further the Panel is of the view that carrying on business in registering descriptive or generic domain names is not of itself objectionable – see, for example, X6D Limited v. Telepathy, Inc., WIPO Case No. D2010-1519 for a case discussing this issue and the applicable principles.
In addition the Panel is also of the view that offering domain names for sale is not of itself objectionable – see Allocation Network GmbH v. Steve Gregory, WIPO Case No. D2000-0016 for an example of a case where the relevant considerations were discussed in relation to this issue.
"Panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a 'bona fide offering of goods or services' ….or from 'legitimate noncommercial or fair use' of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder. As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value (a result that PPC page operators can achieve by suppressing PPC advertising related to the trademark value of the word or phrase). By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion."
The Panel concludes that the present case is a paradigm example of use of a dictionary word in relation to PPC links relating to the generic meaning of the word.
The Complainant's case in relation to this element appears to be that because the Respondent has no registered trademarks corresponding to the Disputed Domain Name he has no rights or legitimate interests. That argument is simply wrong. There is no requirement upon domain name registrants to themselves have registered trademark rights in order to establish a legitimate interest. The Complainant also says that the Respondent's actions infringe its trademark. That is not a matter for this Panel to determine, although it can anticipate numerous arguments the Respondent would deploy in disputing that allegation. The Panel also notes that the Complainant has applied for and obtained a registered trademark which corresponds to a domain name it must have known was owned by a third party. It would in the Panel's view be surprising if having done so the Complainant could then use that trademark to seek to impugn the registration and use of the Disputed Domain Name. In the circumstances the Panel attaches no significance to this unsupported assertion by the Complainant.
The Complainant also says that the Respondent's use of the Disputed Domain Name is a "waste of resources". The fact of the matter is that the Disputed Domain Name was legitimately registered by the Respondent and it is, in general, his resource to do with as he wishes.
Paragraph 4(c) of the Policy sets forth a non-exhaustive list of circumstances that a respondent can rely upon to demonstrate its rights or legitimate interests in a domain name. Here, based on the circumstances of this case, the Panel decides that where the Disputed Domain Name (i) predates the existence of the Complainant's trademark by 15 years, and (ii) is comprised of a dictionary word used for PPC links related to the generic meaning of that word, the Respondent has established a legitimate equitable seniority interest in the Disputed Domain Name.
C. Registered and Used in Bad Faith
The Panel has no hesitation in concluding that the Respondent's registration was not in bad faith. The Respondent was entitled to register the Disputed Domain Name containing an ordinary English word on a "first come first served" basis in circumstances where no question of any prior third party rights in that word existed.
"Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date…, when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right."
The Panel concludes that is precisely the situation in the present case.
The Panel also concludes that the Respondent's subsequent use, both in relation to a parking page with PPC links and in offering the Disputed Domain Name for sale, were not in bad faith. In this regard the Panel considers that the various arguments asserted by the Complainant are all wholly misconceived. The Complainant has come into existence many years after the Disputed Domain Name was registered. On the evidence before the Panel this is not the type of case where the Complainant then carries on business under a name the same as or similar to a pre-existing domain name in a manner which develops significant reputation of its own in the name and where, as a result, questions may arise as to whether a respondent's continuing use of the domain name in question (especially if the respondent changes in some manner that use) then amounts to bad faith use. In the present case no evidence at all is before the Panel about the Complainant's business. Somewhat extraordinarily the Complainant has not felt it necessary to place evidence before the Panel as to whether it has ever traded, whether it has a website, whether it has ever advertised or promoted whatever business it may have, whether it has even a single customer or whether it has ever earned any revenue.
The Panel does not accept the applicability of the cases and principles relied upon by the Complainant as supposedly supporting its position. For example, the Complainant is correct that in Wagamama Limited v. Transure Enterprise Ltd., WIPO Case No. D2008-1200, the panel concluded that offering the domain name in question (<waggamma.com>) for sale did not amount to a good faith use, but in doing so the Complainant in the present case ignores the fact that the panel there had concluded that the domain name was apparently a misspelling of a mark that was not commonplace in the English language. That is not so in the present case.
Accordingly the Panel declines to find the Respondent has either registered or used the Disputed Domain Name in bad faith.
D. 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 RDNH 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.
The obvious weakness of a complaint is a relevant factor in determining RDNH. For example, 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:
"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."
Similarly 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.
In the view of the Panel this is a Complaint which should never have been launched. The Complainant knew that the Disputed Domain Name was registered some 15 years before the Complainant came into existence. No attempt was made to demonstrate the existence of any earlier rights or to address the issue arising from the obvious fact that the Respondent had simply registered a dictionary word long before the Complainant even existed. The submissions made by the Complainant were simply assertions that the actions of the Respondent, in offering the Disputed Domain Name for sale and in using the Disputed Domain Name in respect of a PPC webpage, somehow resulted in the Respondent registering and using the Disputed Domain Name in bad faith. Further the Complainant has obtained a registered trademark which it must have known corresponded to the pre-existing Disputed Domain Name and then sought to argue that this trademark somehow retrospectively rendered the Respondent's registration and use of the Disputed Domain Name as being in bad faith. Given the nature of the Policy and previously decided cases on this issue, this was an argument that had no reasonable prospects of success in the circumstances of this case. Any sensible reading of the relevant issues as set out in WIPO Overview 2.0 should have led to that conclusion. The Panel accepts that the Complainant and its officers are not experts in the UDRP process but at least one of those officers is a qualified attorney and it is clear to the Panel that considerable thought and effort have been devoted by the Complainant to preparing its Complaint. That should have resulted in the Complainant appreciating that it was commencing a proceeding that had no reasonable prospect of success. The Respondent should not have been put to the time, trouble and cost of having to defend this Complaint.
The Panel agrees with the Respondent that the present case is very similar to Squirrels LLC v. Giorgio Uzonian, WIPO Case No. D2014-1434, a three-member panel decision, where the panel concluded that the case should never have been brought and constituted RDNH. The present Panel applies the same reasoning to the present case.
Accordingly the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
For the foregoing reasons, the Complaint is denied.
Nick J. Gardner
Christopher S. Gibson
Date: January 14, 2015