WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Julie Wampler v. Name Administration, Inc.
Case No. D2014-1586
1. The Parties
The Complainant is Julie Wampler of Washington, D.C., United States of America, represented by Smith & Associates, United States of America.
The Respondent is Name Administration, Inc. of Grand Cayman, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by John Berryhill, Ph.d., Esq., United States of America.
2. The Domain Name and Registrar
The Disputed Domain Name <tablefortwo.com> is registered with Uniregistrar Corp (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 15, 2014. On September 16, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 16, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 September 30, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response October 20, 2014. The Response was filed with the Center October 20, 2014.
The Center appointed Charné Le Roux, Andrew F. Christie and David H. Bernstein as panelists in this matter on November 14, 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.
4. Factual Background
The Complainant is the owner of the trade mark TABLE FOR TWO, which is used in connection with a blog site located at the domain name <tablefortwoblog.com>. The blog site focuses on recipes, cooking tips, travelling and the like. The aforesaid domain name was registered in November 2011. The Complainant filed the mark TABLE FOR TWO for registration with the United States Patent and Trade Mark Office (USPTO) on March 17, 2013 in class 41 and subsequently received registration for it. The registration claims first use in commerce in May 2011.
The Disputed Domain Name was registered on September 8, 2004 and is connected to a website which features sponsored links to food, catering, restaurants and similar categories.
The Respondent states that it is a registrant of common words and phrases for the purpose of associating them with paid advertising relevant to those words and phrases.
5. Parties' Contentions
The Complainant contends that she is the owner of the trade mark TABLE FOR TWO through registration of this mark at the USPTO in 2013 in respect of "online journals, namely blogs featuring recipes and cooking tips and related information". The assertion is also made by the Complainant that she has used her TABLE FOR TWO trade mark for the services for which the trade mark is registered and reference is made in the Complainant's evidence to its blog site at <tablefortwoblog.com>. The Complainant states that her blog receives approximately 1 million views per month. The Complainant contends that the Disputed Domain Name is identical to her TABLE FOR TWO trade mark.
The Complainant also contends that the Respondent lacks rights or legitimate interest in the Disputed Domain Name for the following reasons:
a) The Respondent is not making use of the website attached to the Disputed Domain Name for any bona fide offering of goods and services and is not making legitimate, noncommercial use of the Disputed Domain Name. The Complainant supports this contention by indicating that the Disputed Domain Name is only used as a way to capitalize on the Complainant's popularity from customers searching for the Complainant's website at the Disputed Domain Name, particularly because the website is used to display a selection of links to food related sites and searches;
b) The Respondent has never been commonly known by the Disputed Domain Name.
The Complainant submits that the Respondent is guilty of bad faith conduct in connection with the Disputed Domain Name. She argues that, although the Disputed Domain Name was registered before her use of her trade mark, it is the conduct of the Respondent after the Complainant's use and registration of her mark that proves the bad faith required to be proven. The Complainant refers to a number of UDRP cases where a finding of bad faith registration was made in circumstances where a domain name was used to trade on the goodwill of the trade mark holder subsequent to registration of the trade mark, namely City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE, WIPO Case No. D2009-0643; Phillip Securities Pte Ltd v. Yue Hoong Leong, ADNDRC Decision DE – 0900226; and Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786 (often referred to as the Octogen line of cases), as well as the obligation on the part of the registrant not to use a domain name in violation of any laws or regulations whether at registration or subsequently.
The Complainant argues that the conduct of the Respondent during its years of ownership of the Disputed Domain Name changed following the Complainant's use and registration of the TABLE FOR TWO trade mark. The Complainant relies on the Internet Archive at "www.archive.org" in showing that, on July 21, 2013 (shortly after the Complainant filed her USPTO registration, but before it was published for opposition purposes), the website attached to the Disputed Domain Name only had a few generic images and a link to purchase the Disputed Domain Name, and that there were no references to food, kitchen or cooking related searches. The Complainant states that the current site has links to food, chefs and restaurants and also prominently displays the trade mark TABLE FOR TWO. The Complainant argues that this is in violation of paragraph 4(b)(iv) of the Policy.
The Complainant also produces, as further proof of bad faith, evidence concerning contact that the Complainant made with the Respondent about purchasing the Disputed Domain Name, in response to which the Complainant was informed that the Respondent would be prepared to sell the Disputed Domain Name for an amount of USD 89,000. The Complainant submits that this is more than the Respondent's out of pocket costs.
The Complainant requests that the Disputed Domain Name be transferred to her.
The Respondent does not deny that the Complainant has satisfied the first element of the Policy, but points out that the Complainant's trade mark is a common phrase for subjects relating to restaurants, catering, chefs, food services and the like. The Respondent also provides evidence of third party registrations at the USPTO for the marks TABLE FOR TWO and design for tableware and restaurant services, TABLE FOR TWO for a baby seat and SEDUCTIVE TABLES FOR TWO for interior design and decorating, all of which co-exist with the Complainant's registered trade mark. The Respondent argues that the Complainant's trade mark is neither famous nor so inherently distinctive that any use of it in a commercial context would be taken as a reference to the Complainant.
In connection with the Respondent's rights and legitimate interests, it submits that the parties agree that the Respondent's registration of the Disputed Domain Name is senior to the Complainant's rights and that this, in itself, is sufficient to establish a legitimate right on the Respondent's part. The Respondent also contends that it is a well known registrant of words and phrases for the purpose of associating them with paid advertising relevant to those words and phrases. It refers to other proceedings under the references Spielwarenmesse eG v. Name Administration Inc. (BVI), WIPO Case No. D2013-0744; DataServ, L.L.C. v. Name Administration Inc. (BVI), WIPO Case No. D2012-1538; Visa Europe Limited v. Name Administration Inc. (BVI), WIPO Case No. D2010-1531; and Walk the Walk Worldwide v. Name Administration Inc. (BVI), WIPO Case No. D2013-0731, where panels have accepted the Respondent's activities and, insofar as the last mentioned case is concerned, that the Respondent has made legitimate use of the domain name there under dispute. The Respondent argues that it has long used the Disputed Domain Name for the purpose of pay-per-click (PPC) advertising in association with restaurants and that this is the most common context in which the phrase is known. The Respondent contends that it has been doing this in the same manner that it uses its other domain names for PPC advertising and that there is no reason why it would have treated the Disputed Domain Name any different. The Respondent claims that it has been legitimately using the Disputed Domain Name for many years prior to the Complainant's use or registration of her trade mark.
The Respondent points out, in defense of the claim that it acted in bad faith, that, as the Disputed Domain Name was registered by the Respondent many years prior to the Complainant's trade mark claim, the Respondent's registration of the Disputed Domain Name cannot have been undertaken in bad faith. The Respondent refers to the Octogen line of cases and argues that the Complainant has misapplied the reasoning and failed to produce reliable evidence that the Respondent has changed its use of the Disputed Domain Name as a consequence of the Complainant's use and registration of its trade mark. It points out that the Internet Archive does not faithfully show the history or the manner in which a domain name is used and refers to the "User Guide to the Internet Archive", which specifically indicates that some dynamic pages are difficult to archive or do not archive accurately. The Respondent states that its web pages are dynamically generated by interaction with a server-side database and that these pages change depending on the cookies set by the user history of the device used to access the site. The Respondent argues that, as a consequence, the Internet Archive is not accurate for database driven dynamic content such as those delivered by processes resident on the Respondent's system. The Respondent contends that the Complainant relies on known flaws of the Internet Archive to make claims that run contrary to the well known and documented activities of the Respondent and reiterates that it would not have treated the Disputed Domain Name any different than all the others that it monetizes.
The Respondent also argues that the Respondent's current use, in any event, does not target the Complainant's recipe blog in the first place.
The Respondent contends, in connection with the Complainant's allegation that the Respondent's attempt to sell the Disputed Domain Name for the amount stated constitutes conduct in bad faith, that paragraph 4(b)(iii) of the Policy requires a domain name to have been registered primarily for the purpose of selling to the Complainant and that this cannot be true since the Disputed Domain Name was acquired by the Respondent in 2004, years before the Complainant's rights arose. The Respondent also provides evidence of a very large number of enquiries that it had received in respect of the Disputed Domain Name since 2008 and that it reacted to a request for a price quote in connection with the Disputed Domain Name, which did not identify the Complainant, in no exceptional way. It argues that, since it has legitimately acquired and used the Disputed Domain Name, it would be entitled to sell it at any price it may desire.
The Respondent also submits, without asking for a finding of reverse domain name hijacking, that the Complainant has proceeded in abuse of the Policy. It bases this submission on the flaws in the Complainant's representation of both the facts and the legal principles that it apply to them.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Disputed Domain Name, the Complainant must prove on a balance of probabilities:
(i) that the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which she has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has furnished evidence that it owns a trade mark for TABLE FOR TWO, registered with the USPTO, and furthermore, that it uses the mark in commerce, either of which suffice to establish rights in the mark for Policy purposes. The strength of the trade mark, how many others have similar marks, or any priority between the rights of the parties to similar marks, though of potential relevance under paragraphs 4(a)(ii) and (iii) of the Policy, are not taken into account under this standing/threshold requirement.
The Disputed Domain Name does not differ in any way from the trade mark in which the Complainant has rights and is thus identical to it. The Complainant has satisfied this Policy requirement.
B. Rights or Legitimate Interests
The initial pre-2011 use of the Disputed Domain Name by the Respondent is in dispute. The Complainant states that the use did not reference any restaurant or food services and did not include the PPC links that the website features currently. The Respondent indicates that the basis on which the Complainant acquired the aforesaid evidence is flawed and that the Internet Archive does not archive dynamic pages accurately. It states that, as the owner of a large number of descriptive domain names that it monetizes through PPC links, it would have treated the Disputed Domain Name the same as all its other domain names and that it would, therefore, have featured PPC links related to restaurant services and the like. On an analysis of the evidence presented, the Panel accepts the Respondent's version of the pre-2011 use of the Disputed Domain Name.
There are a number of factors to be taken into account in deciding whether the Respondent has made out a case of rights or legitimate interests in a domain name that is in common use or descriptive. One is the extent of the rights that the Complainant has acquired in its trade mark, e.g., whether it is famous or well known. Another is the manner in which the Respondent is using the Disputed Domain Name, and a further is whether the Respondent has registered other domain names containing common or descriptive words. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 2.2 (WIPO Overview 2.0).
Paragraph 4(c) of the Policy provides a list of circumstances which may demonstrate the Respondent's rights or legitimate interests in a domain name, but the list is not exhaustive. In this instance, a majority of the Panel takes cognizance of the following factors in finding that the Respondent has indeed demonstrated rights or legitimate interests in the Disputed Domain Name:
a. The Respondent registered the Disputed Domain Name in 2004, well before the Complainant's first use of the trade mark TABLE FOR TWO in 2011.
b. The Disputed Domain Name appears to reflect a relatively common and descriptive phrase, as the other registered trade marks provided by the Respondent for the same trade mark show. The trade mark TABLE FOR TWO does not appear to be associated exclusively with any single party.
c. None of the links which appear on the website attached to the Disputed Domain Name are in direct competition with the activities of the Complainant, which is an important consideration in determining whether the Respondent's conduct could be considered fair. Rather, the links are in connection with food and restaurant services, all of which fall within the meaning that the descriptive phrase TABLE FOR TWO suggests.
d. It is well documented that the Respondent is in the business of monetizing descriptive domain names.
The Panel also accepts the Respondent's evidence that the links on its website do not specifically indicate a targeting of the Complainant. See in this regard Telephone and Data Systems Inc. v Protected Domain Name Services - Customer ID: NCR813584 / Daniel Wang, WIPO Case No. D2011-0435.
A majority of the Panel view is that the Complainant has not carried its burden of proof under this Policy heading.
The dissenting view by Panelist Christie is that the use of a domain name to resolve to a landing page with automatically generated PPC links (even those that relate to the meaning of a descriptive phrase) does not, of itself, constitute a bona fide use so as to give rise to rights or legitimate interests in the domain name for the purpose of the Policy. In Panelist Christie's view, this must be so because otherwise the trivial act of using a domain name to resolve to a landing page with automatically generated links would immunize the domain name from action under the Policy, whatever might be the intention of the registrant or the effect of the registrant's actions. In Panelist Christie's view, something more is required to give rise to rights or legitimate interests in a domain name – something that constitutes a genuine offering of goods or services.
C. Registered and Used in Bad Faith
To prevail, the Complainant must prove all three requirements under Paragraph 4(a) of the Policy. Since Complainant does not meet the second requirement in connection with the Respondent's rights or legitimate interests, it is not necessary for this Panel to consider the issue of the registration and use of the Disputed Domain Name in bad faith any further. However, for the sake of completeness, the Panel considers it appropriate to state its unanimous view that, because the Disputed Domain Name was registered seven years prior to the creation of the Complainant's rights, there could not have been bad faith registration in this proceeding. The Panel does accept the notion that a change in use after a renewal, to take advantage of a subsequently created trademark, may very well support a finding of bad faith, Squirrels LLC v. Giorgio Uzonian, WIPO Case No. D2014-1434; Big 5 Corp. v. EyeAim.com / Roy Fang, NAF Claim Number: FA1308001513704; Eastman Sporto Group LLC v. Jim and Kenny, WIPO Case No. D2009-1688, but the facts do not support such a finding here. To the contrary, as stated above, there is no credible evidence to support the claim that the Respondent changed its use of the Disputed Domain Name to trade on the goodwill of the Complainant's rights; rather, the Panel has accepted the Respondent's evidence that it has continuously used the Disputed Domain Name for the same type of PPC advertising designed to take advantage of the descriptive meaning of the Disputed Domain Name, rather than to take advantage of the Complainant's trade mark.
D. Abuse of Process
Paragraph 15(e) of the Rules provide that, "If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding". The Respondent in this matter does not ask for a finding of reverse domain name hijacking to be made, instead it points out a panel's obligation to consider whether a complaint was brought in bad faith. Nevertheless, it is the Panel's obligation to consider whether a finding of reverse domain name hijacking is appropriate even in the absence of a request.
Although it is a close question, the Panel declines to make such a finding in this case. In Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing, WIPO Case No. D2005-0309, the three member panel took the view that the onus of proving that the complainant had acted in bad faith is on the respondent. This decision was quoted with approval in the subsequent three member panel decision of Ville de Paris v. Salient Properties LLC, WIPO Case No. D2009-1279. Both of these decisions outline a number of factors to be considered in connection with bad faith findings, over and above the onus that rests on a respondent, including whether a panel has been deliberately misled, whether a complainant should have known that it could not prove one of the essential elements required by the UDRP, whether a complainant knew that the respondent used the disputed domain name as part of a bona fide business and the superiority of the registration date of the disputed domain name measured against the complainant's rights. The mere lack of success of a complaint is not in itself sufficient to constitute a bad faith finding and while the Complainant has advanced a weak case, its argument was not so completely void of merit, and it was not so obvious that the Complainant was misunderstanding the meaning of the pages it found through the "www.archive.org" website, that the Complainant must have appreciated that that was the case and made a bad faith decision to go ahead with the Complaint anyway. The Panel is not persuaded that this Complaint was brought in such bad faith.
For the foregoing reasons, the Complaint is denied.
Charné Le Roux
Andrew F. Christie
David H. Bernstein
Date: November 27, 2014