WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dune Holdings Limited v. Contact Privacy Inc. / dune.com, Calacom LLC
Case No. D2014-0582
1. The Parties
The Complainant is Dune Holdings Limited of London, United Kingdom of Great Britain and Northern Ireland ("UK"), represented by Forresters, UK.
The Respondent is Contact Privacy Inc. of Toronto, Canada / dune.com, Calacom LLC of Encino, California, United States of America ("US"), represented by John Berryhill, Ph.d. Esq., US.
2. The Domain Name and Registrar
The disputed domain name <dune.com> is registered with Tucows Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 10, 2014. On April 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 10, 2014, 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 April 11, 2014 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 April 15, 2014.
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 April 16, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response May 6, 2014. The Response was filed with the Center May 6, 2014. The Complainant submitted a supplemental filing on May 12, 2014.
The Center appointed Adam Taylor, M. Scott Donahey and Richard G. Lyon as panelists in this matter on May 26, 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.
The Respondent submitted a supplemental filing on May 28, 2014.
On May 30, 2014, the Panel issued Procedural Order No.1 admitting certain parts of both supplemental filings and inviting the Complainant to respond to the part of the Respondent's supplemental filing admitted by the Panel. The Complainant duly submitted its response to the Respondent's supplemental filing on June 4, 2014.
4. Factual Background
The Complainant, a fashion retailer principally focusing on footwear and fashion accessories, has traded under the names "Dune" and "Dune London" since 1992. The Complainant's home market is the UK, where it owns 46 Dune-branded stores, including one on Oxford Street in London. It operates concessions in a further 169 department stores.
The Complainant also operates a number of international outlets including in Estonia, India and the Philippines.
The Complainant's sales under the "Dune" brand total some GBP 270 million in the three year period ending March 2014.
The Complainant owns an international portfolio of trade marks for the word DUNE including UK trade mark no. 1431627 filed July 10, 1990 in class 25 and US trade mark no. 3747858 filed April 20, 2006 in classes 26 and 35.
The Complainant operates its main website at "www.dunelondon.com". It also owns "www.dune.co.uk", which it currently redirects to its main site.
The Respondent has used the disputed domain name at different times for websites with various sponsored links, the exact nature of which have been hotly contested between the parties. These matters, and other relevant facts, are set out in a chronology in section 6D of this decision.
5. Parties' Contentions
The following is a summary of the Complainant's submissions.
Identical or Confusingly Similar
The disputed domain name is identical to the Complainant's registered and unregistered trademarks.
Rights or Legitimate Interests
The Complainant has never authorised or licensed any third party to use its trade marks.
Assuming the underlying ownership of the disputed domain name has not changed, the email of January 19, 2011 (described in section 6D below), was an attempt to legitimize use of the disputed domain name by making it appear that there was a trading entity called "Dune.com". And describing a newsletter sent to a large number of persons as "internal" seems incongruous.
The actual use of the disputed domain name does not correspond to the kind of use claimed by "Don J" in the January 19, 2011 email. There are no legitimate advertising services on offer at all.
The assertions as to use fall some way short of being able to rebut the Complainant's prima facie assertion of lack of rights or legitimate interests.
The disputed domain name resolves to a landing page with click-through links which are almost invariably sites belonging to UK-based footwear retailers or wholesalers, directly competing with the Complainant. It is unclear how this equates to the Respondent targeting the "offroading, desert & beach recreational" markets, as claimed by "Don J" in the January 19, 2011 email. If the disputed domain name had been used in this way, it should easily be attested to by evidence from the Respondent's own records.
Registered and Used in Bad Faith
Screen captures taken in March / April 2014 show numerous links to other UK footwear retailers. By far the most likely explanation for use of the disputed domain name in relation to footwear is an intention to mislead Internet users seeking the Complainant's products by presenting them with links to sites offering directly competing products. This clearly represents commercial gain for the Respondent as envisaged by paragraph 4(b)(iv) of the Policy.
While "Dune" has a dictionary definition, it has no intrinsic qualities that would make it naturally attractive to a manufacturer or retailer of footwear products. There is no conceivable reason to use a domain name primarily consisting of "Dune" in relation to linking to footwear-related sites other than to benefit from the Complainant's trade mark.
There is no evidence supporting the claim as to use for many years for the "offroading, desert & beach recreational markets". While there are some such references in the "related links" section of the site, the sponsored links part of the site with the actual third-party advertising makes no such reference; the only references in the sponsored links section that is in any way consistent is to UK-based footwear retailers.
The Respondent says it operates an advertising business and it would be unusual for the advertiser to have no control over a sponsored link on a site from which such a business is run. In any case, the Respondent is directly responsible for the content even if it was not specifically created by the Respondent.
If the Respondent acquired the disputed domain name when it was created in 1997, the Complainant's interest in the mark "Dune" would have been immediately disclosed by even the most basic identical search of the UKIPO register. Given that the content of the website at the disputed domain name relates primarily to UK-based footwear retailers, such a search would have been appropriate and in any case it is reasonable to assume from such content that the Respondent was aware of the Complainant's interest in the disputed domain name when it was created and that the disputed domain name was registered by the Respondent with a view to taking advantage of the Complainant's goodwill and reputation.
Furthermore, under paragraph 2 of the UDRP, by asking for maintenance or renewal of a domain (as well as registration) domain registrants warrant that, to their knowledge, the domain name will not infringe or otherwise violate the rights of any third party. Given the UK footwear-retailer content of the website at the disputed domain name, it is reasonable to infer from paragraph 2 that the Respondent was obliged to determine whether the disputed domain name would have infringed the rights of any parties operating in this sector once the UDRP came into effect.
Cases such as Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786 ("Octogen") and Ville de Paris v. Jeff Walter, WIPO Case No. D2009-1278 hold that paragraph 2(d) of the UDRP not only imposes a duty on the registrant of a domain name to conduct an investigation of third party trade mark rights at the time of registration but also includes a representation and warranty that it will not now or in the future use the domain name in violation of any laws and regulations. The panelist in Octogen found that, even though a party may register or acquire a domain name in good faith, use of the domain name in future to call into question the party's compliance with his representations and warranties may provide a basis for a finding of registration and use in bad faith.
While this is a developing area and not presently a consensus view, the factors in this case lend themselves to such an interpretation. It appears that the nature of the Respondent's use of the disputed domain name has changed following the Complainant's approach in 2011 (described in section 6D below). Then the disputed domain name appeared not to be in active use. More recently, the disputed domain name shows sponsored links to UK-based footwear retailers. This, coupled with the fact that the registrant started using a privacy service, suggest that the Respondent stepped up its efforts to target the Complainant's business in clear breach of its warranties in paragraph 2 of the UDRP in renewing and maintaining the disputed domain name.
The following is a summary of the Respondent's submissions.
Identical or Confusingly Similar
The Respondent has no basis to contest the Complainant's allegations as to registered and unregistered trade mark rights outside the US.
Rights or Legitimate Interests
The Respondent has used the disputed domain name for ten years in connection with subject matter relating to coastal recreation.
Mr. Jeffrey Greenberg, a web developer, acting through various business entities, initially leased the disputed domain name in 2004 and thereafter acquired it and has held it ever since.
Given the statement of "intended purpose" in the lease agreement, there can be no doubt as to the purpose for which the Respondent acquired the disputed domain name.
During his use of the disputed domain name over the years, Mr Greenberg designed various sand dune recreation-related advertising banners for use on the web page at the disputed domain name. Archive screenshots of these images are not currently available due to a system problem at Screenshots.com.
In late 2013, the Respondent experimented with a new monetization platform. A screenshot as of November 2013 shows pre-loaded search links for "offroad tours", "beach tours" and related terms. The Respondent has not changed the configuration of the disputed domain name since then.
The screenshots produced by the Complainant show shoes only because the word "shoes" was entered into the search box on the page, thereby generating a list of search results responsive to shoes. Such advertisements do not currently appear on the site, did not appear in the historical capture of November 2013 and will be shown not to have appeared in any other archive screenshots. The screenshots produced by the Complainant also include dune-related suggested links.
The Respondent had never heard of the Complainant prior to this dispute and solely intended the disputed domain name to be used for advertising subjects related to the word "dune".
The Complainant has failed to show that it has any monopoly rights in the term "dune" and the Respondent's historical usages have been perfectly legitimate.
Registered and Used in Bad Faith
The Complainant offers no evidence that it ever possessed a distinctive mark or enforceable right in the US, where the Respondent is located. The Complainant provides no reason why a party in the US, upon registering or renewing the disputed domain name, or reorganizing the business which owns the disputed domain name, would ever know of or have heard of an entity which appears to own a handful of shops in London and in various parts of the developing world.
Even if the Respondent was aware of the use of the mark for retail shops in the UK, the Respondent never intended any use of the disputed domain name for any purposes related thereto. Whenever it reorganized its business, the Respondent could affirm paragraph 2 of the UDRP having used the disputed domain name for dune-related advertising and intending to continue such use. In any case, paragraph 2 is on a "best knowledge" basis. The Respondent is unaware of any entity in the US or elsewhere with a trade mark right in the word "DUNE" for the purposes for which the Respondent had intended to use and has used the domain name for 10 years.
It is difficult to see where the "paragraph 2" or Octogen arguments lead, shaky as they are, the Respondent has consistently used the disputed domain name as an advertising platform for dune-related recreation.
If the Respondent were a sinister exploiter of rights, it would be more likely to target pirated online copies of the movie "Dune" which grossed some USD 30 million rather than an obscure retail business a world away with a handful of shops.
The representative of the Complainant who approached the Respondent in 2011 made no claim of rights. Accordingly the Respondent described the purpose for which the disputed domain name was being used. The conversation was unproductive as unsolicited enquiries to owners of generically domain names typically are.
C. Complainant's Supplemental Filing (insofar as admitted)
The gist of the Supplemental Filing is that the Complainant's representatives strongly deny the Respondent's suggestion that the website was manipulated to show footwear-related results. The representatives explain in detail the process whereby they took the screenshots to demonstrate that the results appeared immediately on entry to the site and not in consequence of any search made on the website.
D. Respondent's Supplemental Filing (insofar as admitted)
The Respondent produces some archive screenshots of the website at the disputed domain name from May and July 2012 which were unavailable when it filed its Response. The Respondent observes that these show the deployment of "dune" themed advertising banners some two years before this dispute.
The Respondent also produces a letter from the Director of Sales of DomainSponsor.com, with which the disputed domain name was parked since October 2013. The letter says that the Respondent configured its account as "2-click", meaning that the disputed domain name would display only a list of generic categories relating to the intended meaning of the domain name, in particular "offroad tours", "beach resorts", "discount coupons", "desert vacations", "cheap travel" and "recreational vehicles". The 2-click setup is designed to ensure that the page displays only the intended targeted categories; the sponsored links themselves only appear on the second results page after the visitor clicks on one of the categories.
However, at an unspecified date and without informing the Respondent, the Analytics Team at DomainSponsor enrolled the disputed domain name into a "test slice" whereby approximately 5% of the traffic was switched to a 1-click landing page, to enable comparison with the 2-click performance. Unlike 2-click, which displays only sponsored links relating to topics clicked on by the visitor, the 1-click landing page automatically generates sponsored links based on the algorithms of Google, DomainSponsor's upstream provider. This may therefore have generated content other than set by the Respondent. The test slice was cancelled on around May 11, 2014. During the test slice, it is possible that Google's algorithm had automatically generated advertising that was irrelevant to the client's intended use of the disputed domain name. This would only have occurred during the very small percentage of time when the page was rotated onto and displaying a 1-click lander. As a result of advertising cookies or computer cache, it is possible that the 1-click lander may continue appear on subsequent visits, notwithstanding the 2-click configuration. The Respondent had no way of knowing that a test slice was being conducted.
The Respondent says that this explains why the Complainant, and probably only the Complainant, may have seen something other than dune-related advertising during the brief test, following which the disputed domain name was reverted to its expected and intended behaviour by the Respondent.
E. Complainant's Response to Respondent's Supplemental Filing
The following is a summary of the Complainant's submissions.
DomainSponsor had a vested interested in the outcome of these proceedings as the Respondent uses its service to monetize a number of domain names.
It is unlikely that DomainSponsor would unilaterally alter a client's domain name configuration from one which is "often ideal" (2-click) to one which can be a "problem" (1-click) in that it might generate content unintended by the domain name owner.
On the basis of the DomainSponsor explanation, the odds of the conditions triggering the appearance of the disputed content all occurring together are astronomically low.
The failure of DomainSponsor to confirm the dates of the test slice is a fundamental flaw in the explanation. The test slice could not explain the disputed content if it was not running when the Complaint was filed. However, it could not have occurred before October 2013, when the disputed domain name was first brought to DomainSponsor. Yet one of the Complainant's screenshots showing disputed content is dated August 2013. Therefore the Complainant does not accept DomainSponsor's explanation that the test slice caused the disputed content.
A screenshot of the landing page dated June 3, 2014, after clearance of all cookies and cache, continues to show links to UK footwear-related sites.
Even if one accepts the Respondent's explanation (which the Complainant does not), the Respondent has now conceded that shoe advertisements appear on the landing page in certain circumstances. This would necessarily lead to confusion / diversion of customers and is unarguably bad faith. It is irrelevant if such advertisements only appear for some of the time.
It is long-established that the Respondent is ultimately responsible for the content of the site to which the disputed domain name directs. Any lack of knowledge of the test slice on the part of the Respondent is of no consequence.
The mere inclusion of advertising banners in May 2012 – April 2013 does not bestow an automatic legitimacy on the disputed domain name. The topics on the banners do not relate to the more generic links underneath. The disputed domain name was therefore not being used "exclusively" for dune-related advertising. Furthermore, the banners no longer appear.
The Respondent is running a "standard issue" pay-per-click revenue generation page. The evidence from both parties shows the vast majority of the links on the disputed domain name have not related to sand dunes or sand dune recreation.
The Respondent is a professional domain name registrant. If the Respondent is genuine in its denial that it was aware of the Complainant in 2004, it has been wilfully blind to the Complainant and its activities.
6. Discussion and Findings
A. Supplemental Filings
Each party has made an unsolicited Supplemental Filing.
Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of supplemental filings. Paragraph 10(d) states: "[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence". Paragraph 12 states: "In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties".
The principles which the Panel should apply in deciding whether or not to admit Supplemental Filings have been considered in many cases under the Policy. See, e.g., The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447. The principles include: that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimize prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.
The Panel decided to admit the parts of the Complainant's Supplemental Filing which addressed the alleged manipulation of evidence by the Complainant in order that the Complainant would have an opportunity to respond to these serious allegations in the Response, which the Complainant could not reasonably have anticipated when preparing the Complaint. The Panel rejected the remainder of the Complainant's Supplemental Filing on the grounds that it covered matters which were standard rebuttal and/or could reasonably have been addressed in the Complaint.
The Panel decided to admit the parts of the Respondent's Supplemental Filing (a) dealing with archive screenshots which, for technical reasons, were not available when the Respondent filed its Response and (b) which provided an explanation from the parking page provider regarding the appearance of the strongly-contested UK footwear-related links and which flowed from the Complainant's forthright rejection of evidence manipulation. The Panel rejected the remainder of the Respondent's supplemental filing as it responded to parts of the Complainant's supplemental filing which the Panel disallowed.
The Panel would add, however, that none of the disallowed material in either Supplemental Filing would have made any difference to the outcome of this case.
B. Identical or Confusingly Similar
The Complainant has rights in the mark DUNE by virtue of its registered trademarks as well as unregistered trade mark rights deriving from the extensive use of that name.
Disregarding the suffix, the disputed domain name is identical to the Complainant's trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
The Panel does not propose to address this aspect in view of its findings in relation to "bad faith" below.
D. Registered and Used in Bad Faith
Given the separate concurring opinion of one Panel member, discussed further below, references to "the Panel" in this section 6D should be taken as referring to "a majority of the Panel" unless the context requires otherwise.
Identity of the Respondent
The underlying controller of the disputed domain name is Mr. Jeffrey Greenberg, who is located in the US. He leased the disputed domain name from the owner in 2004 using a trading name "Click this Link" and thereafter he acquired the disputed domain name and registered it in that trading name. Mr. Greenberg subsequently reorganized his businesses and the disputed domain name was successively held through two different US corporations: SearchMachine LLC and Calacom LLC. In the Panel's view there is no reason to draw any distinction between these various entities and it refers to them all interchangeably as "the Respondent" in this decision, except where the context requires otherwise.
As the timing of events is important in this case, the Panel considered that it would be helpful if it set out in a chronology the facts which it considered relevant. References to screenshots below are to those either exhibited by the parties or viewed by the Panel at screenshots.com:
February 20, 2004: The Respondent leased the disputed domain name from its then-owner until August 20, 2004, for a lease fee of USD 6,000. There was also an option for the Respondent to purchase the disputed domain name during the lease period for USD 9,500. Section 9.9 of the lease agreement stated:
"Intended Purpose. To use the Domain Name in conjunction with a topical sponsored search platform operated by Lessee, and through such use intends to publish links, information, news and other materials including but not limited to advertising content of various third parties, for the offering of goods and services relating to sand recreation and travel."
On an unspecified date after entering into the lease agreement, the Respondent exercised the option to purchase the disputed domain name.
January 18, 2005: An archive.org screenshot of the Whois shows "DUNE.COM / CLICKTHISLINK" as registrant of the disputed domain name.
July 2005 to June 2008: A series of screenshots of the website at the disputed domain name show it comprising principally a list of very generic search categories such as travel, financial planning, business, health and beauty, computers, etc. – none directly related to either "sand recreation" or shoes.
January 18, 2011: The Complainant's representatives emailed the Respondent, noting that it was "not actively using" the disputed domain name at that time and enquiring whether it would be willing to sell it to the Complainant.
January 19, 2011: The Respondent responded as follows:
"Dune.com is not for sale. We have been using the domain for many years, in conjunction with our advertising business where we offer Topic Related Searching, targeting the "offroading, desert & beach reacreational" markets, to offer our visitors related products and services as provided via our select advertising partners in this sector. We also internally distribute ad related newsletter to a large number of our subscribers, affiliates and advertising partners. For more information on advertising on dune.com or for newsletter inquiries, please email us directly at email@example.com.
If you are a website administrator and are interesting in employing Topic Related Searching on our site, please contact us via phone for more information on third party integration and ad licensing.
Thank you for your interest, and your correspondence.
(NOTE – Subscribers to our dune newsletter, and inclusion requests, please contact your account liaison direct and be sure to always include your subscriber id)…"
The email was signed "Don J, Adminstrator Asst. DUNE.COM. Desert & Beach Recreation. Topic Related Searching…"
May 19, 2012: A large sand recreation-related advertising banner has been added to the header of the website at the disputed domain name. The remainder of the site still consisted of a list of generic search categories.
April 10, 2013: A different sand recreation-related banner appeared in the header but otherwise the site remained largely the same.
August 16, 2013: Screenshots produced by the Complainant show the website consisting of a differently designed landing page with sponsored links, principally to UK footwear-related retail websites. The following list of "Related Links" appeared vertically in smaller font on the left of the page and also along a horizontal bar at the bottom of the page "Offroad Tours", "Discount Coupons", Cheap Travel", "Beach Resorts", "Desert Vacations" and "Recreational Vehicles".
October 2013: DomainSponsor.com says that the disputed domain name was moved to their advertising and monetization platform.
November 1, 2013: A screenshot produced by the Respondent shows the same format of website as above except that the sponsored links were replaced a third listing of the above categories of "Related Links".
March 2014: Screenshots produced by the Complainant are materially the same as the August 2013 screenshots.
When did the Respondent acquire the disputed domain name?
The Respondent has not stated exactly when it exercised the option to purchase the disputed domain name. The lease agreement provided for exercise by August 20, 2004 but, in any case, an archive.org screenshot shows that the Respondent was listed as the registrant by January 18, 2005.
How likely is it that the Respondent acquired the disputed domain name with reference to the Complainant?
While there is no doubt that the Complainant has traded under the name "Dune" in the UK in a substantial way for many years, there is no evidence of any reputation or trading activity of the Complainant in the US, where the Respondent is located. Nor is there any other evidence before the Panel indicating a reason as to why the Respondent might be expected to have known of the Complainant in 2004/2005.
The Panel rejects the Complainant's assertion as to the Respondent's constructive notice of the Complainant's 1990 UK trade mark. Not only have most panels declined to introduce the concept of constructive notice into the UDRP, in those occasional instances where panels have done so: (a) there has been both a US respondent and a US trade mark (here the US trade mark post-dates acquisition of the disputed domain name); and (b) panels in such cases have been less inclined to find registration in bad faith based solely upon a claim of such notice where the trade mark corresponds to a common word or phrase and is used in relation to the common (dictionary) meaning – as here. See paragraph 3.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
The Respondent denies knowledge of the Complainant and claims that it acquired the disputed domain name for its generic qualities. This assertion is in theory supported by statement of "intended purpose" in the lease agreement signed by the Respondent on February 20, 2004. The Panel does not automatically assume that such a statement of purpose is genuine but nonetheless, in the circumstances of this case, the Panel considers it highly unlikely that it was part of an elaborate ruse by the Respondent to conceal a real intention to target the Complainant. Nor is there anything before the Panel to suggest that the Respondent's intentions for the disputed domain name at the time it exercised the option to purchase (by January 2005) were any different to those expressed when it first acquired its lease-interest in the disputed domain name, within 12 months previously.
Does the Respondent's usage of the disputed domain name before 2013 shed any light on the Respondent's mindset at the time of acquisition?
So far as the Panel can tell from the various archive screenshots, until at least 2008 the Respondent used the disputed domain name for a parking page with very anodyne general links – unrelated either to the generic meaning of the disputed domain name or to the Complainant's business.
The next relevant development was in 2011 when the Complainant's representatives first approached the Respondent in relation to the disputed domain name. The Complainant has not provided the Panel with any screenshots from around that period but the Complainant's email did observe that the disputed domain name was not in active use at that time. The Panel cannot tell whether, as claimed in the Respondent's reply, the Respondent had by then been using the disputed domain name specifically to target the "offroading, desert & beach recreational" market. However, what is clear is that the Complainant did not at that point see any sponsored links which it considered objectionable as otherwise it would not have labelled the disputed domain name merely as not being in active use.
The first screenshot showing use of the disputed domain name specifically for sand recreation links is not until May 2012. Whether that usage started then, or earlier, the Panel does question why it took at least three years – and possibly much more – for the Respondent to start using the disputed domain name for the purpose set out in the 2004 lease. The Panel also queries whether the sand recreation banner was added to the site as a defensive move following the Complainant's approach in 2011 or was in place previously. In any case, and even if the banners were added defensively, the Panel does not consider that there is anything in the above series of events which indicates that the Respondent had the Complainant in mind when it acquired the disputed domain name back in 2004/2005.
The DomainSponsor.com parking page
In October 2013, the Respondent moved the disputed domain name to a new parking page provider, DomainSponsor.com. As mentioned in the chronology, the November 2013 screenshot produced by the Respondent shows the website consisting of only a series of subject headings related to sand recreation to a greater or lesser degree.
The nub of the Complainant's case concerns August 2013 / March 2014 screenshots which it has produced whereby the main list of sand recreation-related subject headings was replaced with sponsored links, dominated by UK footwear retail websites.
The Respondent's position was initially to suggest that the Complainant's representatives manipulated the website by searching for "shoes" in the searchbox on the site and exhibiting the results of that search, rather than displaying the site as it looked on arrival. The Complainant's representatives very strongly rejected that assertion and the Panel unequivocally accepts that the screenshots were in no way manipulated.
Indeed the member of the Panel located in the UK has visited the website at the disputed domain name on May 27, 2014, and can confirm that it appeared to him exactly as exhibited by the Complainant, with sponsored links to mainly UK footwear-related retail websites in addition to the sand recreation-related subject headings. Whereas, to the two US members of the Panel, the website consisted purely of sand recreation subject headings with no actual sponsored links, similar to the version shown in the November 2013 screenshot. The fact that the site appeared differently to users located in the UK and US no doubt accounts in large part for the dispute between the parties as to authenticity of these sponsored links.
In any case, the Respondent resiled from its claim of evidence manipulation and has provided a letter from the Director of Sales at DomainSponsor.com which provides an explanation as to how the UK footwear-related sponsored links came to appear on the site. The gist of the letter is that, unbeknownst to the Respondent, DomainSponsor.com recently set up a "test slice" whereby some 5% of the visitors to the site would see a "1-click" page with automated sponsored links generated by Google instead of the "2-click" page format – as configured by the Respondent and never changed by it – showing purely subject headings based on topics connected with the generic meaning of the disputed domain name. In the 2-click format, no sponsored links would appear on the landing page. These would only be shown on the second page after the visitor had clicked on the subject heading.
The Complainant has cast some doubt on DomainSponsor's version of events.
Amongst other things, the Complainant points out that DomainSponsor does not say when the test slice began but that in any case this cannot have been before October 2013 when the disputed domain name was moved to DomainSponsor – yet the Complainant has produced an August 2013 screenshot of the site which includes the disputed links. Curiously, the August 2013 screenshot is almost certainly a DomainSponsor-style landing page as the format is very similar to the later versions of the site. (It may be that DomainSponsor simply made a mistake and that the disputed domain name was switched to its platform earlier in 2013.)
However, the plot thickens because DomainSponsor indicate that the test slice ended around May 11, 2014. Yet the Complainant has provided evidence that the disputed content still appeared on June 3, 2014, even after clearance of all cookies and cache on the relevant computer (which DomainSponsor had put forth as a reason as to why the 1-click lander might continue to appear when its server called for the 2-click version). Similarly, as mentioned above, the disputed content still appeared on the site when visited by the UK-based member of the Panel (for this first time) on May 27, 2014.
The Panel does not consider that it is in a position to resolve these contradictions or to come to any conclusion as to exactly why the disputed links appeared. However, it is not necessary to do so.
In view of the lack of evidence of US activity by the Complainant in 2004, the obvious generic meaning of the disputed domain name, the Respondent's expressed purpose for the disputed domain name in 2004 based on that generic meaning, and the subsequent lengthy use (2005 to 2013) for sponsored links partly related to sand recreation, but in any case unrelated to the Complainant, the Panel does not consider that the comparatively recent appearance of disputed footwear-related links, however they were triggered, can be treated as evidence that the Respondent had the Complainant or its trade marks in mind on acquisition of the disputed domain name in 2004/2005.
Registration in bad faith – conclusion
For the above reasons, the Panel does not consider that the Complainant has established that the disputed domain name was registered in bad faith.
The Complainant's further arguments
The Complainant has raised the approach taken in cases such as Octogen, supra whereby use in bad faith may retrospectively render registration in bad faith on the basis of the warranty in paragraph 2(d) of the UDRP which states: "By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that . . . (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights."
The concurring member of the Panel considers it appropriate to address this view in his concurring opinion below.
A majority of the Panel holds that the lack of registration in bad faith is fatal to the case, irrespective of any later alleged use in bad faith.
For the foregoing reasons, the Complaint is denied.
M. Scott Donahey
Panelist (Concurring in the Result)
Richard G. Lyon
Date: June 11, 2014
I concur in the result. When one registers a generic term as a trademark, one must expect that the test for bad faith is more strict than if one registers as a trademark a unique or stylized term. "Dune" is often used as an adjective to describe something well-suited to sandy conditions, such as in "dune buggy." Indeed, "dune" is used as an adjective in relation to boots, as in "Justin Dune Tractions Snake Boots," "Tex Dune Boots," and "Earth Dune Boots," and these constitute only three examples of boots currently available on the market. It is difficult to apply the "willful blindness" concept used in the traditional analysis of bad faith registration and use1 to a generic domain name used in conjunction with a parking site without some evidence that the registrant knew or should have known that a significant number of users would identify the generic term with the complainant's goods or services.
Applying the "unitary" view, that good faith registration and use is a concept that demands one look at all the facts and circumstances of the case to determine whether the respondent has acted in bad faith to profit from the good will established in complainant's mark, one has a difficult time finding bad faith in this case, especially where inserting the search term "dune shoes" into the search box on the Respondent's web site gives as the top-listed result an identified link to Complainant's web site.
It is worthy of note that the Respondent's counsel, who has a reputation as being a particularly knowledgeable and successful representative of respondents in domain name cases, seems to implicitly recognize this unitary concept in the Response filed. The Respondent places considerable emphasis in his Response on the fact that the Respondent included in the lease agreement a statement of intent to use the domain name for a purpose other than targeting Complainant's trademark.2 The Respondent also argued that the Complainant had somehow falsified the results that the Complainant obtained when visiting the Respondent's web site. In its Supplemental Filing, the Respondent shifts ground in the face of the Complainant's later submitted evidence to the contrary, and argues that a recent change to a new parking service provider altered the equation. Respondent attaches as Annex B to its Supplemental Filing a declaration from an employee of the new parking service provider, stating that since the Respondent switched to the new service, the Respondent elected a "2-CLICK" landing page. The employee describes a "2-CLICK" landing page as "avoid[ing] having any ad listing or sponsored results displayed that do not pertain specifically to [the Respondent's] intended use of the domain [name]." This, also, would be an unnecessary assertion if one were to adopt the approach of the majority in this case and find that the domain name was not registered in bad faith.
The most interesting aspect of the declaration attached as Annex B to the Respondent's Supplemental Filing is that it indicates that there is a simple landing page configuration ("2-CLICK") that a parking service can employ at the request of a domain name registrant that would eliminate all ad listings or sponsored results other than those identified with the use intended by the registrant. This is described in the Respondent's Supplemental Filing as follows:
"Utilizing a 2-CLICK configuration, the client can ensure that only its intended targeted categories are displayed, to which a visitor on the page can then click on the category of his/her choice from amongst those displayed, to then see a list of sponsored results (i.e. ad listings) relating only to that category chosen. It is then only from this second page or 'results page', can the visitor choose to click again, on an actual sponsored listing or 'advertising link' […]
This configuration is often ideal, where the client specifically wishes to avoid any issues of having unintended content on its pages, and to thus avoid having any ad listings or sponsored results displayed that do not pertain specifically to its intended use of the domain(s)."
If this is indeed true, it appears that its use by registrants should eliminate the problems experienced with advertising pages that would otherwise capitalize on third party trademarks. Indeed, it may be that the failure to use such a "2-CLICK" solution should be considered in any evaluation of bad faith. This panelist would look forward to further education on this point by experienced parties and domain name counsel.
M. Scott Donahey
1 The traditional view is that one must establish that the respondent registered the domain name in bad faith and that the respondent used the domain name in bad faith.
2 It is questionable at best how this could be of assistance to a respondent, since one could designate any purpose it chose to designate, and then use the domain name in a fashion entirely inconsistent with the designated purpose. Theoretically, one might assume that in the traditional view that if one is required to establish both bad faith registration and bad faith use as separate propositions, a respondent might argue that the registration of the domain name was made in good faith since the purpose indicated in a provision in an agreement or in some other document made at or before the time of registration indicated a purpose other than one of bad faith, but that claim, without more, should not, I believe, be taken as true without additional evidence that establishes that the assertion is indeed true.