WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mobile’s Republic v. Kwangpyo Kim
Case No. D2014-0089
1. The Parties
Complainant is Mobile’s Republic of Bordeaux Cedex, France, internally represented.
Respondent is Kwangpyo Kim of Gwang-ju, Republic of Korea (“Korea”), represented by ESQwire.com PC, United States of America (“USA”).
2. The Domain Name and Registrar
The disputed domain name <newsrepublic.com> is registered with Fabulous.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2014. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 22, 2014, the Registrar transmitted by email to the Center its verification response confirming Respondent as the registrant and provided contact details. On February 7, 2014, Complainant filed an amended Complaint in response to the Center’s notification that the Complaint was administratively deficient.
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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 10, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was March 2, 2014. The Response was filed with the Center on March 2, 2014.
The Center appointed Nasser A. Khasawneh, Assen Alexiev and The Hon Neil Brown Q.C. as panelists in this matter on April 4, 2014. 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 paragraph 7 of the Rules. The Panel finds that it was properly constituted.
4. Factual Background
Complainant owns several registrations to the trademark NEWS REPUBLIC including, for example, United States Trademark Registration Number 4004673, registered on August 2, 2011 in classes 9, 38 and 41, and International Registration Number 106355, registered on November 2, 2010 in the same classes. Complainant apparently has no registration or trademark rights in Korea.
The disputed domain name routes to a website displaying several links to third-party websites, most of which are news services.1
5. Parties’ Contentions
A. Complainant
The Complaint’s allegations in support of Complainant’s request for transfer are unusually brief. They are reproduced verbatim as follows:2
Identical or Confusingly Similar
“We are a company that has developed news applications for smartphones, tables and other mobile devices. One of our major application is ‘News Republic’, which trademark has already been registered in several countries.
‘News Republic’ has been registered in UK, USA, Benelux, Germany, Spain, Italy, France and is ongoing in Canada. Please refer to the annex 1, 3 & 4.
For more information about our company and our application News Republic, please visit our website: http://www.mobilesrepublic.com/newsrepublic-fr/
The domain name is identical to the trademark ‘News Republic’ in which Mobile’s Republic has rights. We would like to create a website “www.newsrepublic.com” so as to enhance the communication for our application ‘News Republic’ and develop the usage of our application.”
Rights or Legitimate Interests
“The Respondent has not acquired any trademark or service mark rights relating to the domain name ‘News Republic’.”
Registered and Used in Bad Faith
“It seems that the domain name was registered for the purpose of selling it. There is apparently no website, no product . . .
And the respondent asked for at least 45,000 USD to sell us the domain name. Please refer to annex 2.”
B. Respondent
Respondent avers that it purchased the disputed domain name at auction, and that it owns hundreds of domain names. It avers that it uses a domain name parking service that employs software that automatically generates links on Respondent’s parked website pages, based on the generic meanings of the words in the domain names.
Respondent summarizes its legal argument as follows:
“There is simply no basis for transferring the disputed domain name, <newsrepublic.com> (the ‘Disputed Domain’) to Complainant. Respondent has a legitimate interest in the Disputed Domain and there is absolutely no evidence of bad faith registration or use. In fact, Respondent purchased the Disputed Domain from its prior owner in October 2012, and it has continually used the Domain Name in good faith in connection with its common, descriptive meaning with links related to ‘news.’
At the outset, it should be noted that Complainant’s claim is based on its alleged creation of a mobile application called ‘News Republic,’ which through its own admissions, had a trademark first use date of June 10, 2010, and appears to have a ‘release date’ of December 10, 2010 (Source: iTunes App Store itunes.apple.com/lookup?id=392616461). Therefore, at best, Complainant decided to create its Application and knowingly proceeded to name it ‘News Republic’ despite the fact that it did not own the Disputed Domain in 2010. Indeed, the Disputed Domain’s prior owner continually operated a ‘news’ site between at least 2003 and 2012, with news content on the Site before it sold the Disputed Domain to Respondent (Screen Shots Evidencing Prior Use of the Disputed Domain 2003-2012 are attached as Exhibit 2). Therefore, Complainant must have known in 2010 that the domain name <newsrepublic.com> was taken and in use as a news site before it decided to create and name its own Application by the same name. Moreover, there is no evidence that Respondent, based in Korea, had or has any knowledge of Respondent’s alleged Application. It is more likely than not that Respondent chose to purchase the Disputed Domain because of the prior owner’s use and ownership of the domain rather than Complainant’s purported intervening use. On this basis alone, the Complaint should be dismissed.
Moreover, as demonstrated below, Respondent registered <newsrepublic.com> for the same reason it has many registered other descriptive English word domains related to ‘news,’ because of its inherent value as a descriptive term. There is no basis from which to infer that Respondent registered the Disputed Domain to target Complainant’s alleged mark. It is also clear that Complainant initiated this this claim only after it was unsuccessful in its unsolicited attempt to purchase the Disputed Domain. Accordingly, it is respectfully submitted that the Panel should find that the Complainant has failed to meet its burden under the Policy and the claim should be denied.”
Among other things, to support the contention that Respondent did not target Complainant’s trademark, Respondent also submitted a sworn declaration stating that he was not aware of Complainant’s marks at the time of registration, and authenticating a substantial list of other domain names that include the word “news” acquired by Respondent.
6. Discussion and Findings
The Panel must render its decision on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, Paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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 in bad faith.
A. Identical or Confusingly Similar
Respondent does not dispute that Complainant has registered trademark rights in NEWS REPUBLIC.
The Panel also agrees with the parties that the disputed domain name is identical to Complainant’s mark.
UDRP panels generally disregard the generic Top Level Domain (“gTLD”) suffix in determining whether a disputed domain name is identical or similar to a complainant’s marks. See e.g., HUK-COBURG haftpflicht-Unterstützungs-Kasse kraftfahrender Beamter Deutschlands A.G. v. DOMIBOT (HUK-COBURG-COM-DOM), WIPO Case No. D2006-0439; VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315.
Comparing the trademark to the disputed domain name, omitting the gTLD suffix, the Panel finds that they are identical.
Accordingly, the requirements of Policy paragraph 4(a)(i) are fulfilled.
B. Rights or Legitimate Interests
The Panel does not agree, however, that Respondent has no rights or legitimate interests in the disputed domain name.
Under the Policy, Complainant must show a prima facie case that Respondent lacks rights or legitimate interests. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Once a complainant has made a prima facie showing, the burden to come forward with evidence establishing rights or legitimate interests shifts to the respondent. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(1) the use of the domain name in connection with a bona fide offering of goods and services;
(2) being commonly known by the domain name; or
(3) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
In respect of rights or legitimate interests, the Complaint alleges only that Respondent has not acquired trademark rights relating to the disputed domain name. The Complaint is devoid of any other allegations or evidence respecting rights or legitimate interests.
The Panel accepts the Complaint’s uncontroverted allegation that Respondent has no trademark rights. This does not, however, end the inquiry, since paragraph 4(c) of the Policy indicates that a respondent can establish rights or legitimate interests in several other ways. On the record before it, the Panel is of the view that having failed to consider any of those other ways, the Complainant fails even to make a prima facie case showing that Respondent lacks rights or legitimate interests, as required under the Policy.
Even assuming, however, that the Panel were to accept that the Complaint establishes a prima facie case, the Panel concludes that Respondent’s evidence is sufficient to rebut the prima facie case, as elaborated below.
The Panel accepts generally that a respondent may have a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive term, even when the domain name is confusingly similar or identical to a complainant’s registered mark. See, e.g., Johnson & Johnson v. Chad Wright, WebQuest.com, Inc., WIPO Case No. D2012-0010; National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc., WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich, WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031.
However, that domain name must have been registered because of its attraction as a dictionary word or combination of descriptive terms, and not because of any value corresponding to a trademark; the use of the domain name must also be consistent with its attraction as dictionary words or descriptive terms. Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062. See Witmer Public Safety Group, Inc. v. Kwang pyo Kim, WIPO Case No. D2011-0075 (finding use of Respondent’s <firestore.com> domain name was bona fide, citing, inter alia, Metro Sportswear Limited (trading as Canada Goose) v. Vertical Axis Inc. and Canadagoose.com c/o Whois Identity Shield, WIPO Case No. D2008-0754 (“The key is whether a respondent registered and is using a domain name to describe his product/business or to profit from the generic value of the word without intending to take advantage of a complainant’s rights in that word”)).
Respondent avers that it purchased the disputed domain name on October 3, 2012 from a party that used it for several years to route to a website displaying news articles and links to other news services. Annexes to the pleadings show that Respondent displays a website using the disputed domain name in a manner consistent with its prior use (however, instead of posting news articles directly, Respondent’s site only displays links to other news services).
Turning to the descriptive meanings of the terms “news” and “republic,” it is obvious that the use of the website to refer to current events or news stories is consistent with a principal dictionary meaning of the word “news” in common use. Also, the term “republic” has commonly come to mean more than its technical political definition; “republic” has also come to refer to a specific gathering or body of persons, or a meeting place, when associated with another word.3 The prior and current uses of the website are in line with the descriptive meaning of the disputed domain name as a combination of dictionary terms, the words “news” and “republic.”
The Panel finds that the use of the website to gather in one place links to news sites is consistent with the ordinary meanings of the terms combined to form the disputed domain name. In the Panel’s view, these uses of the disputed domain name are bona fide offerings of goods or services under the Policy, confirming a right or legitimate interest on Respondent’s behalf.
Complainant makes no allegations respecting how well known its trademark is, although the Panel accepts that as of mid- to late 2010, the mark was registered in the USA and a handful of European markets. The Complaint provides no evidence from which it could be inferred that Respondent, in Korea, was even aware of the trademark.
As Respondent points out, the disputed domain name was already in use for a similar website even before Complainant registered its trademark and launched its product. Having also registered a number of other domain names that include the word “news,” the Panel finds that Respondent has established, by a preponderance of the evidence, that it chose the disputed domain name as a dictionary or descriptive term – not because of its trademark value.
The Panel concludes, therefore, that the Complaint fails to make a prima facie showing; even so, Respondent’s evidence is sufficient to rebut any showing that Respondent lacks rights or legitimate interests to the disputed domain name under the Policy, paragraph 4(c)(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”).4
C. Registered and Used in Bad Faith
Having concluded that Respondent has rights or legitimate interests in the disputed domain name, it is not, strictly speaking, necessary to address the requirements of Policy, paragraph 4(a)(iii) in detail.
First, however, the Panel notes that Complainant erroneously avers that “There is apparently no website.” The Panel is presently able to view the website on-line.
Second, the Panel finds that Respondent acquired the disputed domain name to use in a fashion similar to the use made by the prior registrant. That use, as elaborated above, is consistent with the disputed domain name’s dictionary or common meanings and is bona fide under the Policy. It is hard to understand how Respondent’s purchase to continue making bona fide use of the disputed domain name can amount to bad faith registration.5
There is no evidence that Respondent approached Complainant to propose a sale of the disputed domain name; in fact, Complainant solicited Respondent. In light of the conclusion that Respondent has rights or legitimate interests, the Panel finds that Respondent’s offer to sell the disputed domain name in response to Complainant’s unsolicited inquiry is of no significance under Policy paragraph 4(b)(i).
Also, the Complaint does not even address the issue of use in bad faith, an element required by the Policy.
In summary, the Panel finds that the Complaint also fails to establish bad faith under the Policy.
7. Decision
For the foregoing reasons, the Complaint is denied.6
Nasser A. Khasawneh
Presiding Panelist
Assen Alexiev
Panelist
The Hon Neil Brown Q.C.
Panelist
Date: April 23, 2014
1 The Panel has undertaken limited research by visiting the web pages to which the disputed domain name routes. See Paragraph No. 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”). The Panel has also viewed historical web page images at “www.archive.org”. The appearance of the website is consistent with the exhibits submitted by Respondent. Complainant submitted no examples of the website displays.
2 This Decision omits the language from the Center’s template, which was left, in blank, in the Complaint. As noted below, the Complaint does not address several questions required under the Policy, which are reflected in the template.
3 The second listed definition for “republic” in the Merriam-Webster online dictionary is “a body of persons freely engaged in a specified activity <the republic of letters>”. http://www.merriam-webster.com/dictionary/republic.
4 Respondent alleges that the links appearing on its website are not directly chosen, but instead generated by a software program that associates displayed links with the terms in a domain name. At least the majority of this Panel believes that a respondent using software algorithms to generate content nonetheless bears responsibility for the content of its websites. Cf. WIPO Overview 2.0, paragraph 3.8 (discussing panel treatment of automatically generated content for purposes of bad faith determination).
However, the Panel need not address the question of the degree to which this “automated” arrangement evidences a registrant’s intentions, since, as previously noted, the Panel finds that the Complaint fails to provide evidence or allegations that Complainant’s trademark was targeted by Respondent and fails to fulfill its burden to establish a prima facie case.
5 It also bears mention that the Complaint does not allege that Respondent knew – or would have known, in Korea – of the existence of Complainant’s trademark. The Complaint provides no evidence about how widespread public recognition of the mark might be.
6 As indicated in the above decision, the Panel unanimously finds the allegations and evidence of Complainant to be seriously inadequate to establish a successful case. The Panel wishes to remind Complainant that, under the Policy, the responsibility rests on Complainant to fully comprehend the Policy and to provide sufficient legal allegations to establish its rights, along with evidence to support such allegations.