WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Grupo Costamex, S.A. de C.V. (COSTAMEX), Operación y Supervisión de Hoteles, S.A. de C.V. (OPYSSA) v. Vertical Axis Inc.
Case No. D2013-1829
1. The Parties
1.1 The Complainants are Grupo Costamex, S.A. de C.V. (“Costamex”) of Mexico City, Mexico and Operación y Supervisión de Hoteles, S.A. de C.V. (“Opyssa”) of Cancun, Mexico, represented internally.
1.2 The Respondent is Vertical Axis Inc. of Barbados, represented by ESQwire.com PC, United States of America.
2. The Domain Name and Registrar
2.1 The disputed domain name <parkroyal.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 October 25, 2013. Later that day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 28, 2013 and November 10, 2013, the Registrar sent emails to the Center confirming that the Respondent is listed as the registrant and providing contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed an amended Complaint on November 11, 2013.
3.2 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”).
3.3 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced November 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 2, 2013. Upon request from the Respondent and having taken into account the comments of the Complainants, the due date for Response was extended to December 7, 2013. The Response was filed with the Center on December 6, 2013.
3.4 The Center initially appointed Matthew S. Harris, David H. Bernstein and The Hon Neil Brown Q.C. as panelists in this matter on January 8, 2014.
3.5 During the panelist selection process, the Complainants had sent emails to the Center objecting to the panelists suggested by the Respondent in this matter. On January 13, 2014 the Complainants filed a supplemental submission in which they sought to challenge The Hon Neil Brown Q.C’s appointment. The Respondent filed a supplemental submission responding to this later that same day.
3.6 On January 21, 2014 The Hon Neil Brown Q.C informed the Center and his fellow panelists that he was withdrawing from the Panel.
3.7 On January 23, 2014 the Center informed the parties by email that it was likely to appoint Diane Cabell in Mr. Brown’s place. Ms. Cabell was one of the panelists originally suggested by the Respondent during the panelist selection process. In response to that email, on January 27, 2014 the Complainants sent an email to the Center stating that they stood by their earlier objections to Ms. Cabell’s appointment, and making further submissions in this respect. That same day the Respondent’s lawyers filed a supplemental submission directed in part to the issue of panelist appointment and in part to the substance of the case.
3.8 On January 28, 2014 the Center appointed Diane Cabell as a panelist in the place of the Hon Neil Brown Q.C.
3.9 On February 3, 2014 the Complainants filed a supplemental filing objecting to that part of the Respondent’s submission that addressed the substance of the case but also making further substantive submissions. On February 3, 2014 the Respondent’s lawyers filed an email replying to the same.
3.10 On February 5, 2014 the Complainants filed a further supplemental submission responding to the Respondent’s latest submission but also referring to what it described as “newly discovered evidence against Respondent”. On February 6, 2014 the Respondent’s lawyers filed an email replying to the same.
3.11 On February 7, 2014 the Complainants filed a further supplemental submission responding to the Respondent’s latest submission. 1
3.12 The Panel in its current form 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 paragraph 7 of the Rules.
4. Factual Background
4.1 The Complainants are part of the same group of companies and conduct business in the tourism sector. One of the Complainants, Costamex, is the parent company in this group. The Complainants’ business began in Mexico in 1984.
4.2 The Complainants’ revenues in 2010 were USD 222 million and they have 30 sales offices around the world. Their customer base comes from a large number of countries but is primarily from the North American continent.
4.3 The Complainants’ business first used the “Park Royal” brand in relation to its hotels in 1989. “Park Royal” hotels have subsequently been opened in various places in Mexico and Puerto Rico. The Complainants’ group of companies has been part of the RCI affiliation program since 1999, which has resulted in its Park Royal hotels being promoted among the RCI’s 3.7 million members around the world.
4.4 The Complainants also promote their business from a website operating from the url “www.royal-holiday.com”.
4.5 One of the Complainants, Costamex, is the owner of various trade marks that comprise of or incorporate the term “Park Royal” in one form or another in Mexico, the United States and Puerto Rico. Those marks include:
(i) Mexican registered trade mark no. 669695 for the word mark PARKROYAL in class 42 with a filing date of May 6, 1998. This is the earliest registered trade mark relied upon.
(ii) United States registered trade mark no. 3146797 for the word mark PARK ROYAL in class 39.
4.6 The Respondent is a well-known dealer and speculator in domain names. A company with the name Vertical Axis Inc. was incorporated in the British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland in January 2002, but this would appear to be the predecessor in business to the Respondent, which is incorporated in Barbados with company no. 24264. Although it is registered in Barbados and two of its directors give addresses in Barbados, its third director, Mr. Ham, has an address in Vancouver, Canada. It would appear that Mr. Ham has some association with Reinvent.com, a business responsible for the Hitfarm pay-per-click (“PPC”) advertising platform. A webpage appearing on the Reinvent.com website in April 2012 asserts that:
“By 2007, through the vision and drive of our CEO, [Mr.] Ham we were recognized as undisputed leaders in the domaining industry”
4.7 The Respondent has been involved in a large number of disputes under the UDRP. It has lost at least 25 cases under the UDRP. However, it has also been successful in an even larger number of cases.
4.8 The history of the registration and use of the Domain Name until late 2008 would appear to be as follows:
(i) The Domain Name was first registered on June 10, 1997.
(ii) As at May 10, 2000 the Domain Name was used to display a webpage that contained the text “Welcome to the CES Marketing Group Website – We specialize in the development and marketing of valuable Domain Names”.
(iii) As at March 22, 2003 the Domain Name was registered in the name of CES Marketing Group Inc., with contact details in Vancouver, Canada.
(iv) As at July 27, 2004 the Domain Name was being used in connection with a PPC webpage that displayed hotel-related PPC links only. That hotel-related use appears to have continued until at least February 2005.
(v) As at March 27, 2006 the Domain Name was registered in the name of DomainWorks Inc, with contact details in Vancouver, Canada. Although the telephone number and physical address provided was different from that used by CES Marketing Group, only the last two digits of the telephone number were different.
(vi) As at February 7, 2008, the Domain Name was registered in the name of the “WhoIs Identity Shield”. Clearly, this was the name of a “privacy” shield or service. Once again the contact details for the Domain Name provided an address in Vancouver, Canada.
4.9 On November 13, 2008 UDRP proceedings (Hotel Plaza Limited, Parkroyal Hospitality Management Pte Ltd. (PHM) v. DomainWorks Inc./PARKROYAL.COM c/o Whois IDentity Shield/Vertical Axis, Inc., WIPO Case No. D2008-1760) were commenced by Hotel Plaza Limited and Parkroyal Hospitality Management Pte Ltd. in relation to the Domain Name. Hotel Plaza Limited and Parkroyal Hospitality Management Pte Ltd are unrelated to the Complainants. Although at that time the Domain Name remained registered in the name of “WhoIs Identity Shield”, the then registrar of the Domain Name disclosed to the Center that the Respondent was the entity behind the privacy shield that actually controlled the Domain Name.
4.10 The Respondent took an active part in those initial proceedings, being represented by the same law firm that represents it in the current proceedings. The three person panel in the initial proceedings rejected the complaint. In so doing, it would appear that the panel relied upon what was being displayed on a PPC webpage operating from the Domain Name at about that time. In particular, the panel stated as follows:
“The majority of the current content on the site at the disputed domain name relates to camping and park activities, primarily confined to the United States.“
4.11 Thereafter the Domain Name was registered in the name of various “privacy” shields, although there appears to be no dispute that in reality at all times the Respondent controlled the Domain Name. Indeed, for a short period in 2011 the Respondent was openly recorded as the registrant of the Domain Name in the publically available WhoIs database.
4.12 There also appears to be no dispute that the Domain Name continued to be used to display a PPC page, although the exact form of the links displayed on that webpage from November 2008 and March 2012 is unclear. From March 2012 the webpage appearing from the Domain Name, contained a large number of different links under 12 different category headings. One of those headings was “Travel”, but the other links included, “Insurance”, “Education”, “Business” and “Entertainment”.
5. Parties’ Contentions
5.1 In their Complaint, the Complainants refer to, and rely upon, the various PARK ROYAL registered trade marks described in the Factual Background section of this decision.
5.2 They refer to the history of the registration of the Domain Name, from which the Complainants conclude and assert that the Domain Name was acquired by the Respondent in February 2008.
5.3 The Complainants contend that the Domain Name is identical to the PARK ROYAL mark.
5.4 The Complainants assert that none of the examples of rights or legitimate interests set out in paragraph 4(c) of the Policy apply so far as the Domain Name is concerned. They anticipate an argument of the Respondent that it has a legitimate interest in the Domain Name based upon the fact that Park Royal is the name of an area in London, and contend that (a) Park Royal is an “area so insignificant in size and importance that the geographical meaning of its name is obscure and remote to the vast majority of Internet users worldwide”; and (b) the Domain Name has never been used by the Respondent in connection with this geographical meaning.
5.5 So far as actual use is concerned, the Complainants complain that the PPC links appearing on the webpage operating from the Domain Name include a number of links related to travel and that:
“By following these links, the Internet user can quickly gain access to hotels and services competing with those offered by the Complainant[s]”
5.6 The Complainants also assert that the Domain Name is parked with Hitfarm, a business associated with one of the Respondent’s directors, with the aim of monetising traffic reaching the PPC page because of the Domain Name’s incorporation of the Complainants’ trade mark. Such use, it is claimed, provides no right or legitimate interest.
5.7 So far as the bad faith registration is concerned, the Complainants contend, referring to paragraph 3.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the "WIPO Overview 2.0”), that the transfer of the Domain Name to the Respondent in February 2008 was a fresh registration for the purposes of the Policy.
5.8 The Complainants assert that, by that date, the trade mark had “been in continuous use in commerce in Mexico for over 18 years” and that the Complainants had registered trade marks in Mexico, the United States and Puerto Rico, and, therefore, that “the Respondent ought to have known” about the Complainants’ mark. Further, the Complainants claim that “a quick search on Google.COM would have revealed” that “Park Royal” was the brand name of the Complainants’ hotel chain, although no evidence of such search results as of the date of registration is offered in this respect.
5.9 Further, the Complainants contend that, in registering the Domain Name, the Respondent was in breach of the representation and warranty provided to the registrar of the Domain Name by means of paragraph 2 of the Policy. The Complainants maintain (citing a number of UDRP cases including, Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448) that professional domainers such as the Respondent bear a heavier burden to fulfil and discharge their Policy commitments in this respect.
5.10 So far as the bad faith use is concerned, the Complainants refer once again to the travel-related PPC links appearing on the webpage operating from the Domain Name and the fact that if the term “Discount Travel” is clicked upon, various hotel related sponsored links appear, including one which makes direct reference to one of the Complainants’ hotels in Cancun and which links to a business that offers an online booking system for both that hotel and other competing hotels in that area. Such use is said to be use in bad faith.
5.11 Reference is also made to the fact that the webpage operating from the Domain Name at one point displayed only hotel-related PPC links and that “the current configuration of the website has been in place since 2012 at least”.
5.12 Further, in support of the allegations of bad faith the Complainants rely upon the fact that the Respondent has been (a) found “guilty of cybersquatting on numerous occasions”; (b) has offered the Domain Name for sale for the “exorbitant figure” of USD 1,080,000; and (c) that the Respondent has a history of concealing its identity behind a privacy shield.
5.13 The Complainants also put forward various additional arguments in supplemental submissions covering both the issue of recusal of various panelists and the substance of the dispute. The issue of recusal is dealt with in detail later on in this decision. Further, for reasons that are also explained later on in this decision, it is not necessary to set out the Complainants’ further arguments as to the substance of the dispute.
5.14 The Respondent claims that it has a legitimate interest in the Domain Name because the term “Park Royal” is said to be a well-known geographical area in London. It claims to have acquired the Domain Name as part of a large portfolio of descriptive term domain names it purchased from CES Marketing in late 2007 without knowledge of the Complainants or the Complainants’ business.
5.15 The Respondent contends that in a case where there is registration “of geographic common word domain”, it is for the complainant to show that the registration was to profit from the complaint’s mark and that this is not been shown in this case.
5.16 The Respondent also complains about the fact that the Complainants waited 6 years in bringing this Complaint.
5.17 In support of these contentions the Respondent provides a declaration from its director of finance of Ms. Wilfred-Boyce. In that declaration Ms. Wilfred-Boyce confirms that the date of purchase of the Domain Name was December 12, 2007 and that this was part of a purchase of a large domain portfolio without knowledge of the Complainants. The statement goes on to make a number of general statements in relation to the Respondent’s business, but virtually none of them address or evidence the specific circumstances surrounding the registration of the Domain Name or the other domain names acquired at that time. For example, the declaration records that the Respondent owns a large number of geographic term domain names and also a large number of domain names that incorporate the terms “Park” or “Royal”. Many of these are listed. However, it is not suggested that the Domain Name was one of a number of domain names of this sort purchased from CES Marketing in December 2007. Further, there is no evidence that the Respondent actually focused on the existence of the Domain Name as part of the purchase or that the Respondent did any particular due diligence at that time with respect to the Domain Name specifically.
5.18 Ms. Wilfred-Boyce accepts that the Domain Name has been hosted with Hitfarm and has been used for pay-per-click advertising. However, she contends that the links themselves are auto-generated by Google and that these are “constantly changing based on solely Google’s algorithm, keyword advertising inventory and user search behaviour”.
5.19 Turning to the requirements of the Policy, the Respondent contends so far as the requirement of trade marks is concerned, that “it cannot be argued that Respondent targeted Complainant or that Complainant has exclusive rights to” what it describes as a “common English word combination that is subject to tremendous third party use”.
5.20 So far as rights or legitimate interests are concerned, the Respondent contends that it has such an interest because “it registered the [Domain Name] because it is the name of an area in London”.
5.21 On the issue of bad faith, it once again asserts that the Complainants have failed to prove that the Complainants’ mark was the reason the Domain Name was registered. Further, it maintains that there can be no constructive knowledge given that the Complainants are based in Mexico and that knowledge of a foreign trade mark is not to be imputed under the UDRP.
5.22 The Respondent denies it has engaged in a bad faith pattern of registering domain names. Although it does not deny that it has lost UDRP proceedings on numerous occasions, it points to 37 decisions in its favour, which are said to support the proposition that the Respondent’s practices have been held to be legitimate and proper. In any event, it contends that each case must be decided on its merits.
5.23 The Respondent denies that the offer to sell the Domain Name was in bad faith given that an offer to sell a domain name for a significant profit is not of itself improper.
5.24 So far as the more recent PPC links are concerned, it contends that the Complainants have “concocted” a search that leads to themselves and their competitors. In particular, the Complainants are said to have “created the search either by inserting the terms into the search box or by clicking on a link for ‘travel’”. It also contends that the creation of “generic links are not evidence of bad faith”.
5.25 The Respondent also claims that the fact that the Complainants waited 15 years from the date of original registration of the Domain Name and 6 years after the Respondent’s purchase of the Domain Name means that the doctrine of “laches” applies.
5.26 Finally, the Respondent seeks a finding of reverse domain name hijacking on the grounds that at the time the Complaint was filed the Complainants knew that they could not prove bad faith registration.
5.27 The Respondent has also put forward various additional arguments in supplemental submission covering both the issue of recusal of various panelists and the substance of the dispute. Once again it is not necessary to address these in this part of the Panel’s decision.
6. Discussion and Findings
6.1 It is incumbent on the Complainants to make out their case in all respects under paragraph 4(a) of the Policy. The Complainants must prove on the balance of probabilities (sometimes referred to as on a preponderance of the evidence) that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainants have rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.2 The Panel will address each of these requirements of the Policy in turn, but before doing so it is necessary to address the Complainants’ contentions regarding the recusal of Mr. Brown and Ms. Cabell. It is also necessary to consider whether those parts of the supplemental submissions filed by the Respondent on January 27, 2014, filed by both parties on February 3, 2014, filed by the Complainants on February 5, 2014, filed by the Respondent on February 6, 2014, and filed by the Complainants on February 7, 2014 that go to the substance of these proceedings, should be admitted and considered by the Panel in coming to its decision.
6.3 After addressing the substance of the case the Panel will also briefly address the Respondent’s claim that the Panel should make a finding of Reverse Domain Name Hijacking.
B. Recusal or disqualification
6.4 The following comments of the Panel on the question of recusal are those of a majority of the Panel. Ms. Cabell has declined to express any view on this issue given that it is her appointment that is currently challenged.
6.5 In seeking the recusal of Mr. Brown and Ms. Cabell, the Complainants have relied upon the decision in in Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505, as authority for the proposition that a panel has the power to recuse itself or one of its members. That case involved a single person panel and the panel (comprised of Mr. Bernstein) concluded that paragraphs 7 and 10 of the Rules provided the panel with the power, and possibly placed on it the obligation, to consider an application that the panelist recuse him or herself. The panelist also suggested that the test to apply was whether there was evidence that would lead to “justifiable doubt” as to the panelist’s impartiality. The test was further defined as follows:
“that a reasonable, objective person would be justified in doubting the panelist’s impartiality after consideration of the proffered evidence.”
In Britannia Building Society one of the parties was represented by a lawyer and the other party had made allegations about that lawyer’s conduct. The gist of the allegation of impartiality was that a panelist, who was also a lawyer, could not be impartial in such circumstances because the challenged party was a lawyer as well and all lawyers would inherently be biased in favour of another lawyer. Unsurprisingly, the panelist held that he should not recuse himself in those circumstances.
6.6 The panel in that case also commented as follows:
“If a party seeks to have some influence over the composition of the Panel, it may instead request a three-person panel, to which each of the parties can nominate a panelist and can express its views on the proposed presiding panelist. Rules 3(b)(iv), 5(b)(iv), 6(e). Utilizing this procedure, a party can ensure that at least one of the panelists will meet its criteria.”
6.7 The Respondent relies on the more recent decision of two panelists (the third panelist declining to take part in the proceedings) in Two Way NV/SA v. Moniker Privacy Services, LLC / : Domain Administrator, WIPO Case No. D2012-2413. In that case the complainant had sought to “disqualify” one of the members of the panel. The panel held that notwithstanding paragraphs 7 and 10 of the Rules, it was:
“not appropriate to read into the Policy a basis for such a challenge which is certainly not there in express terms.”
6.8 In coming to that conclusion the panel noted that the proceedings were “quasi-administrative” and designed to produce a decision in a short time frame, and were subsequently open to challenge in the courts. Against that background, the fact that a panelist was required to certify his or her independence prior to appointment was said to be a sufficient and proportionate mechanism to deal with this issue.
6.9 The panel also stated:
“the selection process for a three-member panel is deliberately designed to ensure that each party may make a significant contribution to the selection of one panel member and to the decision by the provider on the third member of the panel. In these circumstances, it is not surprising that there is no express provision in the Policy or the Rules for one party to challenge the appointment of the other party’s panelist or the appointment of the presiding panelist. For the same reason it is difficult to imply such a right when the whole structure of the system is to give an unchallenged right to parties in three-member panel cases to nominate one panelist and influence, to some extent, the choice of the third panelist.”
6.10 Notwithstanding that the panel in the Two Way case supra was a highly distinguished one, the majority of the Panel in the present proceedings are unconvinced by its reasoning.
6.11 Although there is no express provision in the Policy or the Rules for one party to challenge the appointment of the other party’s panelist or the appointment of the presiding panellist, it does not follow that it is not open to either the relevant dispute resolution provider or, failing that, the panel to provide for one. The NAF panelist appointment procedures in three person panels are not dissimilar to those from WIPO and yet the NAF supplemental rules do provide precisely such a mechanism.
6.12 It is not clear what the panel meant when they went on to refer to the “whole structure of the system” giving a party “an unchallenged right ... to nominate one panellist”. However, if the contention is that the possibility of challenge to a panelist is inimical to the UDRP system as a whole, this would also be true of this aspect of the NAF supplemental rules as well.
6.13 It may be that the panel in Two Way was referring not to the UDRP system as a whole, but only the system as specifically implemented by the Center. But if this is so, the argument based on the “system” is far less compelling and amounts to little more than an assertion that because a dispute resolution provider has not provided such a mechanism, it would be inappropriate for the panel to step in and do so.
6.14 Further, and more importantly, paragraph 10(b) of the Rules requires that a panel “shall ensure that the Parties are treated with equality”. It is difficult to see how a panel could ensure fair and equal treatment in any sensible way if, notwithstanding each panelist’s self certification of independence and impartiality, it was apparent that a panelist was, for example, determined to decide the case in favour of one of the parties because of a pre-existing bias, regardless of the facts. Perhaps if one party were able to select a biased panelist in those circumstances, the other party could do the same. However, the whole three-person panel decision process would then risk descending into little more than a pointless charade in which ultimately all that mattered would be the opinion of the presiding panelist. In any event, the UDRP was not set up, as some arbitration systems are, in a way that allows a party to appoint a party-appointed panelist who may be biased or an advocate for the party; rather, the UDRP expressly requires all three panelists in a three-member panel to be independent and impartial.
6.15 In the circumstances, a majority of the Panel agrees with the statement in Two Way that thethree-person selection process (at least at WIPO) is designed to allow each party to make a “significant contribution to the selection of one panel member and to the decision by the provider on the third member of the panel”. However, it does not agree with the subsequent conclusion in Two Way that no power of recusal or disqualification exists.
6.16 If a power of recusal or disqualification exists, the question remains in what circumstances it should be exercised. Mr. Harris in this case is uncomfortable with the proposition that, after appointment, the test for disqualification should be that suggested in the Britannia Building Society case supra. He is concerned that if the test at that stage is one based upon “doubt” (even if it must be justifiable doubt), this potentially opens the doors to extensive “side litigation” between parties as to panelist appointments. Indeed, a large part of the present case has involved precisely such “side litigation”, with multiple supplemental submissions and counter submissions in relation to the appointment of two panelists. In this respect, the comments of the panel in Two Way about the quasi administrative nature of UDRP proceedings, the short time frame in which they should be conducted and the proportionately of any mechanism to deal with the issue of bias, are to his mind highly pertinent. Given this and the wide discretion provided to a panel as to the conduct of a case under paragraph 10(a) of the Rules, he would suggest that, in the case of a three person panel, a majority of the panel should not determine that one of their number should be recused against his or her will in the absence of compelling evidence of improper bias. In the absence of such compelling evidence, the decision of whether a panelist should be recused should rest solely with the challenged panelist.
6.17 Mr. Bernstein, while sensitive to the need to keep UDRP proceedings fast and efficient, is of the view that the “justifiable doubt” standard discussed in Britannia Building Society is the appropriate standard to apply, and that it may be applied by the panel (including, in the case of a three-member panel, by the majority of the Panel which is authorised to act for the panel in UDRP decisions). The “justifiable doubt” standard is one familiar to arbitration panels across the world, allowing panelists to draw upon existing literature to guide their decisions in the absence of a robust body of UDRP precedents. Although a recusal challenge will always involve some amount of side litigation, it is also important, in order to maintain the fairness and equality of the process, that legitimate concerns about a panelist be addressed when specific evidence of possible bias or impartiality is presented. As parties in a UDRP proceeding rarely have detailed personal knowledge of one another or of the panelists chosen by the opposing party before the proceeding, a standard that requires compelling evidence of improper bias sets a threshold that would bar nearly all challenges to panelists.
6.18 Ultimately it is not necessary to choose between the two approaches described above. The majority of the Panel is of the view that, whichever test applies, the Complainants have not made an adequate showing that Mr. Brown should be disqualified (though that question is academic in light of Mr. Brown’s withdrawal from the Panel) and similarly that the Complainants have not made an adequate showing for recusal of Ms. Cabell (who has, in the face of the recusal request, reaffirmed her belief that she is independent and impartial and should therefore not be disqualified).
6.19 Although various allegations have been made by the Complainants, ultimately the Complainants’ argument and evidence is no more than that each of those panelists has been appointed in a large number of cases involving the Respondent and have generally found in favour of the Respondent, often providing a dissenting opinion to the majority. In the view of the majority of the Panel, that is not evidence of improper bias. It is no doubt evidence that each of those panelists hold views as to the interpretation of the Policy that is likely to be favourable to the Respondent and its business model. It may even be evidence that they are views that sometimes place those panelists in a minority position. But there is nothing wrong with a party trying to choose as part of a three person panel a panelist who holds views on issues that are likely to be favourable to that party. In that way, a party can (in the words of the panel in the Two Way case) legitimately “make a significant contribution to the selection” of panelists. It is not evidence of bias in any improper sense that would justify recusal or disqualification. To the contrary, it is a deliberately designed choice in the design of the UDRP, and one which strengthens the fairness of the process and the public’s perception of the fairness of the Policy and Rules.
C. Supplemental Submissions
6.20 Although in large part the various supplemental submissions filed in these proceedings have related to the issue of recusal, some parts of these submissions address the merits of these proceedings.
“Panels have discretion whether to accept an unsolicited supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting its filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response. Most panels that have allowed unsolicited filings have also tended to require some showing of ‘exceptional’ circumstances.”
6.22 The Respondent does not seek to explain why the facts and matters relied upon in its supplemental submission on January 27, 2014 could not reasonably have been expected to have been included in its response. The same goes for the submissions filed by both parties on February 3, 2014, which in any event add little to the amended Complaint and Response. So far as the submissions incorporated into the Complainants’ submission of February 5, 2014 is concerned, they relate to another domain name registered by the Respondent the content of which the Complainants “have just discovered”. However, why this material could not have been discovered at an earlier date is not explained. Nor is there anything new in the parties’ February 6 and 7, 2014 submissions, which simply rebut and reply to arguments that have already been presented ad nauseam.
6.23 Given this, the Panel has reached the conclusion that there is insufficient reason to justify the admission of these parts of the supplemental submissions. They have been disregarded by the Panel for the purposes of this decision.
D. Identical or Confusingly Similar
6.24 One of the Complainants is clearly the owner of a number of trade marks that comprise the words “Park Royal” or “ParkRoyal”. The Domain Name comprises the term “parkroyal” in combination with the “.com” generic Top-Level Domain (“gTLD”). Accordingly, the marks and the Domain Name are identical save for the “.com” gTLD. In the circumstances, the Domain Name is identical or confusingly similar to a trade mark in which the Complainants have rights.
6.25 The Respondent’s arguments based upon “targeting” and whether the rights relied upon are “exclusive”, are of no relevance in this case to the comparison of mark and domain name required by paragraph 4(a)(i) of the Policy. The Complainants have satisfied paragraph 4(a)(i) of the Policy.
E. Rights or Legitimate Interests
6.26 The Panel rejects the Respondent’s argument that “Park Royal” is a “well known” geographical area. There is an area in London known as Park Royal, but no evidence has been submitted that the name “Park Royal” is well known outside of London for its association with this area, particularly in Mexico (where the Complainants are based) or Canada and Barbados (where the Respondent is based).
6.27 In any event, the argument is a red herring because the Respondent is not using the Domain Name to provide information about, or links to, or advertising related to, the Park Royal section of London. If it were doing so, that would be a legitimate use of that Domain Name. Instead, the Domain Name has most recently been used for pay-per-click advertising that seems to be unconnected with any descriptive, geographic or generic meaning of the term “Park Royal.” As such, a majority of the Panel finds that the Complainants have sustained their burden of proving that the Respondent has no rights or legitimate interests in the Domain Name. In this respect the Panel refers to paragraph 2.6 of the WIPO Overview, which states as follows:
“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’ [see also paragraph 3.8 [of the WIPO Overview 2.0]] 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 trade mark value (a result that PPC page operators can achieve by suppressing PPC advertising related to the trade mark value of the word or phrase). By contrast, where such links are based on trade mark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion.”
F. Registered and Used in Bad Faith
6.28 There are aspects of the way in which the Respondent has put its case that the entire Panel finds unconvincing. They include, for example, the Respondent’s claims that it is not responsible under the Policy for pay-per-click links that have been placed on the website through Hitfarm.
6.29 The Panel is prepared to accept for the purposes of this decision the Respondent’s claims that the specific links shown on the website are automatically chosen by the Google Adwords algorithm. However, it does not follow that the Respondent is not responsible under the Policy for those links. This is so even if the Panel were to accept (which the Panel doubts, see id.) that the Respondent has no ability whatsoever to influence what sorts of links might be shown.
6.30 The Panelists are unanimously of the view that a registrant cannot escape a finding of bad faith use in relation to the use of a domain name if it deliberately engages in a business model where it cedes control over what appears on a webpage operating from that domain name, but continues to financially benefit from what appears (see for example, Aubert International SAS and Aubert France SA v. Tucows.com Co., WIPO Case No. D2008-1986).
6.31 Similarly, the Panel does not accept that the Respondent’s claims that the Complainants in this case have “concocted” a search that leads to themselves and their competitors, is remotely reasonable or fair. The evidence of the Complainants is that they clicked on a specific travel-related link that appeared on the pay-per-click page and that this led to a page that displayed sponsored links that were related to their business. If anything is “concocted”, it is the Respondent’s contention that this is somehow equivalent to a free text search.
6.32 The entire Panel is also unconvinced by the Respondent’s claims that the Domain Name was registered because of its geographic meaning. Although there are several claims to this effect in the body of the Response, there is little or no evidence that this is so. There is evidence in the form of a declaration that the Domain Name was purchased as part of a “large portfolio”. There is also evidence that the Respondent is the owner of a number of geographical domain names. But there is nothing to suggest that, at the time of the purchase, the Respondent turned its corporate mind to this specific Domain Name, let alone what it would have thought of that Domain Name had it done so.
6.33 In this respect, it is not alleged that the portfolio that included this Domain Name was bought as part of a single “geographic” package. Further, although “Park Royal” is indeed a district of London (and is also the name of a London tube station), as noted above, there is no evidence before the Panel that is well known outside of London (indeed, the two non-British panelists on the Panel had never previously heard of Park Royal as being a geographic locale in London). For the Panel to accept that the Respondent (being a company based in Barbados with Barbadian and Canadian directors) was aware of the possible geographical use of this Domain Name at the time of purchase, the Panel would require more than a bare assertion by the Respondent’s lawyer commenting on the Respondent’s alleged intent. No such evidence has been submitted.
6.34 For these and other reasons, the entire Panel proceeds on the assumption that the Domain Name was acquired as part of a bulk purchase where no consideration was given as to whether the Domain Name might correspond to a trade mark of any particular third party.
6.35 If this is so, this is another case that raises the difficult question of what facts and knowledge should be imputed to a domain name registrant at the time of registration, particularly if the evidence (or lack of evidence) offered by the registrant indicates that its business model is such that it does not take any precautionary or investigative steps upon the acquisition of a new domain name to ensure that the domain name does not infringe a trade mark (whether because the registration is automatic or because it is part of a large purchase).
6.36 As is acknowledged in section 3.4 of the WIPO Overview 2.0 and in particular under the heading “Knew or Should Have Known”, this is an issue on which there are divergent views among panelists. That divergence of views is reflected among the Panelists forming the Panel in this case. Nevertheless, the Panel has unanimously formed the view that the Complainants, although showing that the Respondent is guilty of bad faith use by virtue of the pay-per-click page that is unrelated to any generic or descriptive meaning of the Domain Name, have failed to show bad faith registration in this case.
6.37 Although the Complainants make various assertions as to the fame of its PARK ROYAL hotels and brand, the Panel is not convinced this is a case where the evidence shows that the level of fame at the time of registration was such that, had the Respondent directed its mind to the issue, it must have known or it would have been obvious to the Respondent that the Domain Name corresponded to the Complainants’ trade mark. There are, for example, no PARK ROYAL hotels owned by the Complainants in the Respondent’s location, and, indeed, there are conflicting PARK ROYAL uses (including, apparently, a shopping centre in Vancouver).
6.38 Given this, the Complainants can only succeed on the basis that the Respondent should have engaged in some form of due diligence at the time it registered the Domain Name, and that due diligence would have resulted in the Respondent becoming aware of the Complainants’ rights. However, even if the Policy imposes an obligation of due diligence (and a majority of the Panel do not share that view), it is questionable what form that due diligence should reasonably take where, as here, the alleged trade mark has not been shown to be globally famous and there is no evidence that the mark is even “known” (let alone well known) in the countries were the Respondent operates.
6.39 For example, if the due diligence obligation included an obligation to conduct trade mark searches, it is not clear why a Barbadian company with Barbadian and Canadian directors should have undertaken searches in Mexico or the United States where the Complainants had registered marks.
6.40 The Complainants contend that their trade mark rights would be apparent had the Respondent done an Internet search on the name at the time of acquisition. However, there is no evidence before the Panel as to what a Google or similar search would have shown in late 2007 or early 2008. There is also the complication that different search results are displayed by search engines depending on the location of the person doing the search. Therefore, even if the Respondent should have conducted an Internet search, the relevant question would likely be what such a search in Canada or the Barbados would have shown at that time.
6.41 All of the panelists in this case would hold that the Respondent should be deemed to know what sorts of pay-per-click links were being displayed from the Domain Name at the time that it acquired the Domain Name. If it would have been apparent from those links that the Domain Name incorporated a term that was connected with the Complainants’ business, then that might have been enough for a finding of bad faith registration. However, again there is simply no evidence before the Panel as to exactly what was visible at that time. Indeed, such evidence as there is as to the form of pay-per-click links operating the Domain Name is that they have varied considerably since the time that the Domain Name was first registered.
6.42 In sum, on this record, the Complainants have failed to make a showing that the Respondent knew or should have known of the Complainants’ trade mark rights at the time it acquired the Domain Name, and therefore, they have failed to satisfy the requirements of paragraph 4(a)(iii) of the Policy. Thus, while the entire Panel finds that the Respondent’s use of the Domain Name was in bad faith, the Panel unanimously concludes that, on the material before it, the Complainants have failed to show that the Domain Name was registered in bad faith.
G. Reverse domain name hijacking
6.43 As has been described, the Panel in this case proceeded on the assumption that the Respondent did not to any significant degree turn its mind to the issue of third party rights at the time of registration of the Domain Name. Further, the Respondent admits to seeking financial gain by burying its head in the sand as to the content displayed on a website operated from the Domain Name and attempting to shift all responsibility to Google.
6.44 So far as the UDRP is concerned, this is an approach that carries with it significant risk. Although the Panel agrees with the Respondent’s contention that each UDRP case should be decided on its own facts and merits, if the Respondent’s modus operandi in previous UDRP cases was similar, it is perhaps unsurprising that the Respondent’s record of success in those proceedings has been so mixed.
6.45 Admittedly, the Respondent’s assertions as to reverse domain name hijacking focus primarily on the issue of registration in bad faith, and it is precisely on this issue that the Complainants’ Complaint has foundered. Nevertheless, it does not follow that the Complainants knew or should have known at the time that they filed the Complaint that they could not prove that element. In the circumstances, it would be inappropriate for the Panel to reach a finding of reverse domain name hijacking.
7.1 For the foregoing reasons, the Complaint is denied.
Matthew S. Harris
David H. Bernstein
Date: February 10, 2014
1 Subsequent to the rendering of the decision in this proceeding but prior to the notification of the decision to the parties, several additional submissions were received from the parties. These submissions were not considered by the Panel.