WIPO Arbitration and Mediatin Center
ADMINISTRATIVE PANEL DECISION
Dreamlines GmbH v. Darshinee Naidu / World News Inc
Case No. D2016-0111
1. The Parties
The Complainant is Dreamlines GmbH of Hamburg, Germany, represented internally.
The Respondent is Darshinee Naidu of New York, United States of America / World News Inc of Singapore, Singapore, represented internally.
2. The Domain Name and Registrar
The disputed domain name <dreamlines.com> is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2016. On January 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 19, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 26, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 15, 2016. The Response was filed with the Center on February 12, 2016.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on February 25, 2016. 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.
On March 9, 2016 the Complainant filed a request to withdraw the Complaint. The Center notified the Respondent and invited it to submit comments and indicate if the Respondent objected to the Complainant’s request to withdraw the Complaint. On March 11, 2016 the Respondent informed to the Center that it objected to the Complainant’s request.
4. Factual Background
The Complainant is a German limited liability company registered in 2009 which has operated a “Dreamlines” branded Internet platform to promote and market international travel agency services specializing in cruise voyages since 2011. The Complainant is active in France, the Netherlands, Russia, Australia and Brazil through affiliate companies with localized websites under domain names such as <dreamlines.fr> and <dreamlines.nl>. The Complainant is the owner of inter alia a European Community registered trademark for the word mark DREAMLINES in international classes 39 and 43, registered on January 24, 2012. The Complainant changed its corporate name to Dreamlines GmbH in 2014.
The disputed domain name was created on December 15, 1997. The registrant of the disputed domain name is Dharshinee Naidu. According to the Response, Ms. Naidu is the daughter of Minakumari Periasamy who in turn is the director of World News Inc., a Delaware, USA Corporation incorporated in 2003 which operates the “World News Network” website. The Response has been prepared on behalf of World News Inc.
A letter addressed to Ms. Naidu from the Retail Sales Manager of the Registrar dated February 3, 2016 states that the disputed domain name has been “under your ownership” since December 15, 1997 and has been held in the same account since inception with the Registrar in October 2007, prior to which it was held in an account managed by a subsidiary of the Registrar from June 27, 2000.
The disputed domain name currently points to a page on the website at the uniform resource locator “wn.com/dreamlines” featuring a video entitled “Dream Lines IV - Wingsuit proximity” and linking to other similar videos entitled “Dream Lines”. A uniform resource locator provided by the Respondent from the Internet Archive “Wayback Machine” dating from August 4, 2003 shows that as at that date the disputed domain name pointed to the “World News Network” website.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or at least confusingly similar to a trademark in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant contends that the disputed domain name was redirected to the news website at “wn.com” in November 2014, adding that any contractual basis for such forwarding between the Respondent and the operator of that site is not known to the Complainant. The Complainant notes that it wrote to the Respondent in 2015 seeking to purchase the disputed domain name but the Respondent did not reply to such communication.
The Complainant contends that the disputed domain name is at least confusingly similar to the Complainant’s trademark as the only difference consists in the generic Top-Level Domain (“gTLD”) “.com”. The Complainant submits that the Respondent has never been authorized or licensed to use the Complainant’s DREAMLINES trademark and is not commonly known by such name as an individual or a business. The Complainant asserts that the use of a sign in business that is confusingly similar to a third party registered trademark in association with a click-through site via which advertising revenue is generated, such as the Respondent’s website, does not demonstrate a bona fide offering of goods and services.
The Complainant submits that the Respondent registered and used the disputed domain name in bad faith because it must have been aware of the Complainant’s DREAMLINES trademark when the disputed domain name was pointed to the “wn.com” website in 2014. The Complainant adds that the disputed domain name has never been used for a relevant commercial or fair noncommercial purpose. The Complainant submits that the Respondent’s failure to reply to the Complainant’s correspondence is further evidence of bad faith.
The Complainant notes that the Respondent has been involved in another case under the Policy, citing Amicus Trade AB v. Dharshinee Naidu, WIPO Case No. D2014-0418.
World News Inc. presents itself as the Respondent in this case and notes that it operates the Internet platform “World News” at “worldnews.com” and “wn.com”. World News Inc. explains its relationship to the named registrant of the disputed domain name as outlined in the Factual Background section above.
World News Inc. accepts that the disputed domain name is confusingly similar to the Complainant’s trademark but notes that the Respondent registered the disputed domain name more than ten years in advance of the Complainant’s trademark coming into existence. World News Inc. notes that it is one and the same entity with the operator of the website at the uniform resource locator “wn.com” and also notes that the disputed domain name has been pointed to the website at “worldnews.com” since as far back as August 4, 2003.
World News Inc. states that numerous decisions under the Policy have held that a complainant’s rights must predate a respondent’s domain name registration and submits that it selected and registered the disputed domain name on December 15, 1997 as part of a portfolio of domain names to build into portals of information and services, including the domain names <worldnews.com>, <cheese.com>, <phones.com>, <planes.com>, <cartoons.com> and <introduced.com>. World News Inc. notes that each of these domain names is “developed” and adds that it has built a media search engine, “WN”, which delivers information using a dynamic algorithm to select popular videos, articles and news. World News Inc. states that the disputed domain name uses this engine to display videos of wing suit pilots flying in France and Switzerland and notes that it has done so prior to the Respondent receiving notice of the dispute and since at least December 26, 2014.
World News Inc. denies that the Respondent is operating a click-through site and states that it provides a pioneering news aggregation website which has operated since 1998 and receives a verified amount of over 7 million unique visitors per month. World News Inc. adds that the majority of its pages are entirely free from advertising and points to reviews of its offering in the United Kingdom Guardian newspaper (the Panel notes in passing that the uniform resource locator supplied gave an error message) and in an archived version of the website “www.forbesbest.com” dating from June 2000.
World News Inc. states that it owns and manages around 70,000 domain names so would expect to be involved in “a commensurate number of disputes”. It concludes that the disputed domain name was registered in good faith, that the associated website does not contain advertising, that it is not used for anything relating to the Complainant’s line of business and that it was not registered to disrupt the business of the Complainant as it predates this and the Complainant’s trademark by a number of years.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
A. Preliminary Matter: Respondent Identity
The Response has been prepared by a corporation, namely World News Inc., while the holder of the disputed domain name is Dharshinee Naidu, apparently a private individual. The Response states that Ms. Naidu is the daughter of a director of World News Inc. although it provides no evidence to this effect.
Furthermore, it does not offer any explanation as to why World News Inc. might be entitled to be substituted as the Respondent in these proceedings.
The UDRP Rules define the respondent as the holder of a domain name registration against which a complaint is initiated, namely, in the present case, Ms. Naidu. That said, the UDRP Rules also give the Panel power to conduct proceedings in such manner as it considers appropriate, in accordance with the Rules and the Policy, and in the Panel’s opinion, this power is capable of extending to the making of a determination as to the correct respondent in the proceedings.
In this Panel’s view, something more by way of explanation than the mere filing of a response by a third party should typically be provided before such third party may be substituted as the Respondent in place of the holder of the domain name concerned. The mere existence of a family relationship between an individual and the director of a corporation typically would not, in the Panel’s experience, entitle that corporation to speak on behalf of such individual, far less to take its place, in administrative proceedings. Any such entitlement, if there is one, should therefore be clearly expressed rather than left to the Panel’s conjecture. Accordingly, in the present case, the Panel determines that the correct Respondent is Ms. Naidu.
As the Response is made by a third party, not on behalf of or in its capacity as authorized representative for Ms. Naidu, it might have been accorded less weight by the Panel than would otherwise typically have been given. The Panel notes however that certain evidence relevant to the issues between the Parties and produced with the Response has been generated from independent sources and the Panel is content to give full weight to these due to their particular provenance. Such evidence is, first, the uniform resource locator (and the corresponding live web page) for the screenshot at the Internet Archive “Wayback Machine” showing the appearance of the website associated with the disputed domain name in 2003; and secondly, the letter addressed to the Respondent from the Registrar dated February 3, 2016. As discussed below, these items, when taken together with the WhoIs record in respect of the disputed domain name, are in the Panel’s view sufficient to make out a case for the Respondent in this particular proceeding.
B. Identical or Confusingly Similar
The Parties are in agreement that the disputed domain name is confusingly similar to the Complainant’s DREAMLINES trademark. The Panel also agrees, given that the mark is alphanumerically identical to the second level of the disputed domain name.
The Respondent notes that the disputed domain name pre-dates the Complainant’s mark by a considerable margin; this is not however relevant to the assessment of rights in a trademark under paragraph 4(a)(i) of the Policy. It may however be relevant to the assessment of registration in bad faith under paragraph 4(a)(iii) of the Policy. See paragraphs 1.4 and 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
In these circumstances, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
C. Rights or Legitimate Interests
The requirements of paragraph 4(a) of the Policy are conjunctive. A consequence of this is that failure on the part of a complainant to demonstrate one element of the Policy, including that the disputed domain name has been registered and is being used in bad faith, will result in failure of the complaint in its entirety.
Accordingly, in light of the Panel’s finding under the next head, it is unnecessary for the Panel to address the issue of the Respondent’s rights or legitimate interests in the disputed domain name.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(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
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online 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”.
On this topic, the Complainant must prove the conjunctive requirement that the disputed domain name has been registered and is being used in bad faith. Failure to prove either would be detrimental to the Complainant’s case. With regard to registration in bad faith, the Complainant faces the considerable hurdle that its earliest registered trademark post-dates the creation date of the disputed domain name by some fourteen years and the incorporation date of the Complainant itself by more than a decade. The Complainant has not suggested that the disputed domain name has changed hands during the period of its registration, which might have altered the date in respect of which bad faith registration should be assessed. A change of use of the disputed domain name, as asserted by the Complainant, does not under the facts of this case have any similar effect upon the date of assessment of registration in bad faith.
Paragraph 3.1 of the WIPO Overview 2.0 sets out the consensus view of WIPO panels on the issue of post-dating trademarks as follows:
“Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date [...], when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right. [...]
However: In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This has been found to occur: shortly before or after a publicized merger between companies, but before any new trademark rights in the combined entity have arisen; or when the respondent (e.g., as a former employee or business partner, or other informed source) seeks to take advantage of any rights that may arise from the complainant’s enterprises; or where the potential mark in question is the subject of substantial media attention (e.g., in connection with a widely anticipated product or service launch) of which the respondent is aware, and before the complainant is able to obtain registration of an applied-for trademark, the respondent registers the domain name in order to take advantage of the complainant’s likely rights in that mark. (In all such cases, in order to have a chance to succeed in any filed UDRP complaint, the complainant must actually demonstrate relevant trademark rights, as these are a precondition for satisfying the standing requirement under the first element of the UDRP for rights in a mark.)”
The Panel respectfully adopts the consensus view, which may be summarized as follows: subject to certain exceptions, a finding of registration in bad faith will typically not be made if the creation date of the disputed domain name predates the registration of the complainant’s mark. While, as paragraph 3.1 of the WIPO Overview 2.0 goes on to consider, some panels have considered the effect of the representation/warranty in paragraph 2 of the Policy, the Complainant made no submissions in this respect, nor does the Panel consider that the breaching of such warranty could in any event under the facts lead to an inference that the original registration was in bad faith in the present case. There is no evidence before the Panel that any of the exceptions outlined in the above consensus view apply. This is not particularly surprising, given the lengthy period of more than a decade between the registration date of the disputed domain name and the Complainant coming into existence and the additional periods of a further year before the Complainant began trading as “Dreamlines” or two years before obtained its first DREAMLINES registered trademark.
In the Panel’s view, there is no way that as at the date of creation of the disputed domain name the Respondent could have contemplated the Complainant’s then non-existence and its then non-existent rights. That the Respondent might have changed the use of the disputed domain name to point to its present site in 2014 as the Complainant contends (which is in any case contradicted by the “Wayback Machine” evidence produced with the Response) could occur on the heels of a change in ownership of the disputed domain name; that is not however the case here. The disputed domain name in this case could not have been registered in bad faith in 1997 even if a recent change in use had given rise to use in bad faith so long as there is an unbroken chain of registration. In these circumstances, it is unnecessary for the Panel to go on to consider whether the disputed domain name is in fact being used in bad faith and the Panel makes no finding in that respect.
In these circumstances, the Panel finds that the disputed domain name has not been registered in bad faith in terms of paragraph 4(a)(iii) of the Policy and accordingly the Complaint fails.
E. Reverse Domain Name Hijacking
Paragraph 15(e) of the Rules provides 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 UDRP Rules define Reverse Domain Name Hijacking as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
Mere lack of success of the Complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking (see paragraph 4.17 of the WIPO Overview 2.0). In the Panel’s opinion the whole circumstances must be reviewed, on an objective basis, to determine whether the Complaint was brought in bad faith.
The Panel notes that the Complaint was launched following the Complainant’s unsuccessful attempt to purchase a domain name that cannot be considered to have been registered in bad faith given the significant extent to which its creation date pre-dates the Complainant’s registered trademark and even the existence of the Complainant itself. On those facts alone, this case might be considered to be a typical example of Reverse Domain Name Hijacking.
The Panel is satisfied that the Complainant must or at least ought to have appreciated at the outset that its complaint could not likely succeed. This will often be an important consideration on the question of Reverse Domain Name Hijacking (see the discussion on this topic in Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing, WIPO Case No. D2005-0309. Furthermore, previous panels have found a complainant’s bad faith and abuse of the administrative proceeding where the complainant or its representative knew at the time of filing the complaint that it could not prove the Respondent’s bad faith registration (see for example New Forests Asset Management Pty Limited v. Kerry Schorsch, Global Advertizing, LLC, WIPO Case No. D2015-1415). Panels have also noted that proceedings under the Policy should not be commenced in an unjustifiable attempt to pressure a domain name owner into releasing a legitimately held domain name that considerably pre-dates any trademark rights held by the complainant (see Sustainable Forestry Management Limited v. SFM.com and James M. van Johns ‘Infa dot Net’ Web Services, WIPO Case No. D2002-0535 and Proto Software, Inc. v. Vertical Axis, Inc/PROTO.COM, WIPO Case No. D2006-0905).
In all of these circumstances, the Panel finds that the Complaint was brought in bad faith in an attempt at Reverse Domain Name Hijacking and constitutes an abuse of the administrative proceeding.
For the foregoing reasons, the Complaint is denied.
Andrew D. S. Lothian
Date: March 8, 2016