WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
J D Wetherspoon PLC v. Domain Admin / Privacy Protection Services INC d/b/a PrivacyProtect.org / Domain Admin Private Registrations Aktien Gesellschaft
Case No. D2014-1558
1. The Parties
The Complainant is J D Wetherspoon PLC of Reeds Crescent, Watford, Hertfordshire, United Kingdom of Great Britain and Northern Ireland ("UK"), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Domain Admin, Privacy Protection Services INC d/b/a PrivacyProtect.org of Nobby Beach, Queensland, Australia / Domain Admin, Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent and the Grenadines.
2. The Domain Name and Registrar
The disputed domain name <myjdw.com> (the "Domain Name") is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 11, 2014. On September 12, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 13, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 15, 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 September 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 on September 22, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 12, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 13, 2014.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on October 22, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a public limited company incorporated in the UK in 1989. Since 1979, the Complainant and its predecessors have operated a chain of J D Wetherspoon pubs in the UK. The Complainant more recently entered the lodging business with a chain of Wetherspoon Hotels. Operating more than 900 pubs (not all of them bearing the "J D Wetherspoon" name) and 23 hotels in the UK, the Complainant has more than 30,000 employees and earned revenues of nearly GBP 1.3 billion in 2013. Management Today ranked the Complainant in 2013 as Britain's most admired pub company and second most admired company in the restaurant and pub sector. The Complainant operates a website, among others, at "www.myjdw.co.uk".
The Complainant's shares have been publicly traded on the London Stock Exchange since 1992, listed as "JDW". The Complainant appears in the FTSE 250 index, which names the 101st to 350th largest companies on the London Stock Exchange.
The Complainant states that it has used JDW as a mark since 1992. It was first registered as a word mark in 2002 with the UK Intellectual Property Office ("UKIPO") and then as a Community Trade Mark (CTM No. 003012457, registered July 27, 2004) with the Office for Harmonization in the Internal Market (OHIM). The Complainant also obtained registration from UKIPO in April 2014 for a figurative mark prominently featuring the words "my JDW"; this mark was also recently registered by OHIM (CTM No. 012272191, registered July 22, 2014).
The Domain Name was created on July 19, 2001. The Complaint furnishes data concerning the history of the Domain Name registration, indicating that the Domain Name has been registered in the name of a domain privacy service since the registration expired in July 2010. At the time this Complaint was filed, the registrant was listed on the Registrar's WhoIs database as the Respondent "Domain Admin, Privacy Protection Services INC d/b/a PrivacyProtect.org". After the Center contacted the Registrar about the Complaint in this proceeding, the registrant information was changed to show the registrant as the Respondent, "Domain Admin, Private Registrations Aktien Gesellschaft" . Neither entity has identified a beneficial owner, sublicensee, or real party in interest, and neither entity has asserted an interest in this proceeding. Hence, the Panel refers in this Decision to the unknown "owner" of the Domain Name, who might be deemed an unnamed Respondent.
The Domain Name resolves to what appears to be a parking website used for "pay-per-click" ("PPC") advertising, displaying categories of "Related Links" that in turn link to a variety of commercial websites. The Panel notes that historical screenshots of the website associated with the Domain Name, accessed through the Internet Archive's Wayback Machine at "www.archive.org", show that the Domain Name has been used in the same way, for a parking website with the same format and design, since at least October 2011.
5. Parties' Contentions
The Complainant argues that the Domain Name incorporates its registered JDW mark in its entirety and that the owner of the Domain Name has no evident rights or legitimate interests in using a domain name confusingly similar to the Complainant's mark. The Complainant observes that the owner of the Domain Name has hidden behind a succession of domain privacy services and has used the Domain Name only for PPC advertising.
The Complainant argues that the owner of the Domain Name "knew or should have known" of the Complainant's JDW mark, because of its fame in the UK and its use online. The Complainant points out that a search engine query identical to the second element of the Domain Name, "myjdw", displays first the Complainant's UK website at "www.myjdw.co.uk" and then many other links related to the Complainant.
According to the Complaint, the use of the Domain Name for PPC advertising reflects a bad faith attempt to misdirect Internet users for commercial gain. The Complainant finds further evidence of bad faith in the Domain Name owner's hiding behind privacy services and then failing to respond to communications through the Registrar concerning this proceeding.
The Complainant also contends that the owner of the Domain Name attempted to sell it for an excessive price. The Complainant attaches an earlier screenshot of the WhoIs record for the Domain Name. The screenshot is undated, but it must be relatively recent, as it shows that the WhoIs record was updated on June 18, 2014. The WhoIs search results screen displayed a banner advertisement at that time announcing that the Domain Name is "for sale" and stating, "The owner of the domain you are researching has it listed for sale at $3,106".
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
A. Identical or Confusingly Similar
The Complainant holds a recently registered figurative trademark featuring the words "my JDW", essentially identical to the relevant portion of the Domain Name, as well as the registered JDW word mark, which is incorporated in its entirety in the Domain Name. The addition of the possessive pronoun "my" before "jdw" does not avoid the likelihood of confusion. That word is commonly used in domain names to suggest a personalization of the associated website and, in fact, is used by the Complainant itself for its own domain name in the ".uk" country code top-level domain ("ccTLD").
The first element of the Complaint is a threshold standing requirement, simply establishing that the Complainant has trademark rights that are arguably implicated, thus warranting consideration of the other elements of the Complaint. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2. The Panel finds that the Complainant has established this first element of the Complaint by demonstrating that it owns relevant marks to which the Domain Name is confusingly similar.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent's use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) that the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no Response in this proceeding asserting the Respondent's rights or legitimate interests in the Domain Name. The owner of the Domain Name is not identified, and the Domain Name is used only for third-party advertising. The distinctive portion of the Domain Name, "jdw", is not a dictionary word or common abbreviation in the English language; hence, there is no obvious generic value to the Domain Name that might justify its use for content relevant to its generic sense (see WIPO Overview 2.0, paragraph 2.6).
Because the respondent in a UDRP proceeding is in the best position to assert its rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production to show rights or legitimate interests in the disputed domain name shifts to the respondent. See WIPO Overview 2.0, paragraph 2.1. The Complainant in this proceeding has made a prima facie case, demonstrating that the Domain Name is confusingly similar to its well established mark and lacks any obvious generic sense. The Panel concludes, therefore, that the second element of the Complaint has been established.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), provides a non-exhaustive list of circumstances that "shall be evidence of the registration and use of a domain name in bad faith", including the following:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or …
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
The Complainant's evidence on the first of these examples is inconclusive. It appears that a banner ad offering to sell the Domain Name for a little more than USD 3,000 was displayed in 2014 in response to a WhoIs database search. It is not clear that this advertisement was an effort by the owner of the Domain Name to sell it to the Complainant or a competitor. There was no direct contact with the Complainant, and there is no evidence in the record that the owner attempted to sell the Domain Name through the website associated with the Domain Name or through a domain name auction site, for example. Thus, the source and authority for the banner advertisement is in doubt, as well as its intended target.
The Complainant's case is much stronger under paragraph 4(b)(iv) of the Policy. It cannot be determined on this record where the owner of the Domain Name resides, but the Complainant's JDW mark is used online as well as throughout the UK. As the Complainant demonstrates, a search engine query using the words "my JDW" most prominently displays Iinks from or about the Complainant. The JDW mark has no evident generic sense. Hence, it is difficult to imagine a reason for selecting the same string for a domain name that has been used for several years for a PPC advertising landing page, other than the proven value of the string in attracting visitors. These are likely to be Internet users familiar with the Complainant's mark – especially given that the Complainant itself uses the same string, "myJDW", for its website in the ".uk" ccTLD. Thus, the Domain Name appears to have been chosen for its trademark rather than generic value. The Respondent has not come forward with a plausible, alternative motivation for selecting the Domain Name and using it in this fashion. Accordingly, the Panel finds on the available record that the Domain Name was registered and used to misdirect Internet users for commercial gain, in the form of PPC advertising revenues and/or eventual resale.
The Panel also finds supporting evidence of bad faith in the Respondent's failure to respond to communications from the Center, as well as in the Respondent's evident attempt to avoid identification. While there are often legitimate reasons for using a domain privacy service, such as an effort to avoid "spam" emails, a registrant is ultimately responsible for registering and using a domain name in a manner that does not infringe on the rights of others, as is stated in the registration agreements of ICANN-approved registrars. Refusing to be identified to answer claims of trademark infringement or Policy violations is irresponsible and suspicious behavior, especially where the owner of the Domain Name seems to have shifted domain privacy services after the Policy complaint was filed.
While domain privacy services operated by registrars typically identify the actual purchaser of the disputed domain name in the event of a legal or Policy complaint, neither of the domain privacy services named as Respondents in this proceeding did so. Such practices arguably compromise the Policy and certainly impose unnecessary burdens on trademark owners and dispute resolution service providers such as WIPO, since the Policy requires an investigation of bad faith and possible legitimate interests in a disputed domain name. See the discussion of this problem in WSFS Financial Corporation v. Private Registrations Aktien Gesellschaft 2, WIPO Case No. D2012-0033, a case that appears to involve the same (or related) domain privacy service as one of the Respondents in the current proceeding.
The Panel finds on this record that the unidentified owner of the Domain Name, more probably than not, registered and used the Domain Name in bad faith, to exploit the Complainant's well-known trademark. Accordingly, the Panel concludes that the third element of the Complaint has been proven.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <myjdw.com> be transferred to the Complainant.
W. Scott Blackmer
Date: November 5, 2014