WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Praetorian Legal Limited v. Michael Ross
Case No. D2019-2468
1. The Parties
The Complainant is Praetorian Legal Limited, United Kingdom, internally represented.
The Respondent is Michael Ross, United Kingdom, self-represented.
2. The Domain Name and Registrar
The Disputed Domain Name <tess-timeshare.com> (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2019. On October 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 11, 2019, 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 October 18, 2019, 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 October 23, 2019.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 17, 2019. The Center received an email communication from the Respondent on November 5, 2019.
The Center appointed Nick J. Gardner as the sole panelist in this matter on November 25, 2019. 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 Complaint is extraordinarily short of any meaningful information. The Panel has exercised its discretion and visited the Complainant’s website which is linked to the domain name <praetorianlegal.com>. That describes the Complainant’s business as follows: “Timeshare Termination Specialists Legally Cancel your Timeshare! No Win No Fee…Are you stuck in a timeshare contract with mounting maintenance fees and ever-growing stress? Our timeshare termination specialists can help get you out of your timeshare contract today”. The same website says, “[w]e are legally trained professionals who operate within the ethics laid down within the legal profession” but then goes on to say, “[w]e do not operate as Solicitors and as such we can keep our costs low and affordable”.
The term “timeshare” is not specifically defined in the Complaint. The Panel takes the view that as matter of general knowledge it is a dictionary word with the meaning ascribed to it at “www.lexico.com” - “The arrangement whereby several joint owners have the right to use a property as a holiday home under a time-sharing scheme” and where “time-sharing” means, “[t]he use of a property as a holiday home at specified times by several joint owners”.
The Disputed Domain Name was registered on October 4, 2016. It is linked to a website (the “Respondent’s Website”) which contains content published anonymously which is largely directed at and highly critical of an individual (“DC”) and a business he is said to operate, called TESS (Timeshare Exit and Support Services Limited). The substance of the content is to question the honesty and integrity of DC and various businesses he has been involved with, and various other business associates of his. The Respondent’s Website does not contain any advertising and does not appear to generate any revenue in any way. There is a large amount of content on the Respondent’s Website. Evidence filed by the Complainant shows this includes a section referring to the Complainant. This section describes the Complainant as “an unregulated paralegal company” and makes some unflattering remarks about the Complainant and individuals it says are involved with it. Given the Panel’s analysis (see below) it is not necessary to go into further details as to what is said.
5. Parties’ Contentions
As indicated above the Complaint is extraordinarily short of detail. The Panel found it very difficult to understand the logic of the Complainant’s arguments. In essence as best the Panel can understand the Complainant sys it has unregistered trademark rights in the term “timeshare” and the Respondent has no legitimate rights in that term. It goes on to say that the Respondent acts in bad faith as his intention in using the Disputed Domain Name is to take advantage of the Complainant’s trademark. Thus by way of example it says:
“The Respondent illustrates the strength of the Complainant’s unregistered trademark [i.e. “timeshare”] itself by referring to the Complainant in the website found at the domain name. The references to the Complainant found at the website at the domain name are attached hereto as Annex 7. If the Respondent was not seeking to take advantage of the Complainant’s trademark then it would not require to make reference to the Complainant”.
“The Complainant contends that the Respondent has no rights in respect of the Domain Names [sic]; its contention being that the Respondent, who has no connection of any kind with the Complainant, registered the Domain Names [sic] with a view to diverting customers from the Complainant and/or to tarnish the Complainant’s unregistered trade mark”.
The Panel will in its discretion treat the email sent by the Respondent to the center as its Response. It is commendably short. It stated:
“We have viewed the content of the complaint and in our opinion it has no merit.
1. In the first instance, it is admitted by the complainant that they do not hold a trademark on the word timeshare' (they describe it as an ‘unregistered trademark – a claim that have [sic] no substance).
2. Their claim to have any form of rights in terms of the word timeshare' appears risible. It is a word describing a product marketed and sold by businesses on a global scale and was in use on such a scale many years before the complainant's business existed.
3. The domain in question contains no references whatsoever to the name of the complainant, which is apparently Praetorian Legal Ltd. - and the word ‘timeshare' is noticeably absent from their business name.
4. The complainant goes on to cite that they appear high in search results when the phrase timeshare termination’ is used in searches. Whilst they again do not have any plausible intellectual property rights to the phrase ‘timeshare termination’ we would also respond by saying a) ;timeshare termination’ does not appear in the Disputed Domain Name and b) results for such searches are in any case variable”.
The email then went on to make a number of unflattering comments about the Complainant and individuals involved with it. The Panel does not need to repeat those here.
6. Discussion and Findings
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with 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;
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar to a trademark
The Complainant says it has rights in the term “timeshare” as a trademark. That is simply wrong. This claim seems to be made without any understanding or appreciation of even the basics of trademark law or practice. “Timeshare” is a dictionary word and the Complainant uses it in its normal dictionary sense - see extract quoted from Complainant’s website above. It forms no part of the Complainant’s name and it does not, in any sense, use it as a term which indicates a source of origin of goods or services. The Complainant does not claim any registered trademark rights in the term and there is absolutely no evidence before the Panel to suggest the Complainant has any unregistered trademark rights in the term. Occasionally, a term that is descriptive in nature can by virtue of use on a very significant scale become distinctive of a particular business. There is absolutely nothing to suggest that is the case here. The Complainant does not provide any evidence of use in a manner which would be capable of becoming distinctive of its business. The Complainant uses it in written text the Complainant publishes as a dictionary word to refer to services the Complainant provides relating to that dictionary word’s meaning.
In the absence of a trademark, the Complaint must fail.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, 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) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) 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.
Extraordinarily the Complainant has made no attempt to even discuss the nature of the Respondent’s Website and the issues arising out of its content as a criticism or “gripe” site. The Panel has no view as to whether or not anything on the Respondent’s Website is true or not. However it is clearly a criticism site.
As noted in in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 2.6:
“Does a criticism site support respondent rights or legitimate interests?
As noted above, UDRP jurisprudence recognizes that the use of a domain name for fair use such as noncommercial free speech, would in principle support a respondent’s claim to a legitimate interest under the Policy.
2.6.1 To support fair use under UDRP paragraph 4(c)(iii), the respondent’s criticism must be genuine and noncommercial; in a number of UDRP decisions where a respondent argues that its domain name is being used for free speech purposes the panel has found this to be primarily a pretext for cybersquatting, commercial activity, or tarnishment.”
In the present case, the Panel notes that the Disputed Domain Name is not identical or confusingly similar to any trademark of the Complainant, and the available evidence, such as it is, suggests that the Respondent’s Website is a genuine criticism site and does not involve any commercial use. As such, the Panel considers (iii) above likely applies and the Complaint therefore also fails on this ground.
C. Registered and Used in Bad Faith
Given the findings above the Panel does not need to determine this issue.
6. Reverse Domain Name Hijacking
Several circumstances of this case have led the Panel to consider whether the filing of the Complaint constitutes “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name” – see the Rules, paragraph 1, definition of Reverse Domain Name Hijacking (“RDNH”). 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 RDNH, 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 Rules, paragraph 15(e), call for this analysis even when the Respondent has not expressly requested a finding of abuse – see Timbermate Products Pty Ltd v. Domains by Proxy, LLC / Barry Gork, WIPO Case No. D2013-1603.
The Panel considers that the Complaint is woefully inadequate and was doomed to failure. However the Complainant is representing itself and the failures seem to arise from a wholesale failure to appreciate the Policy and its application rather than any intentional misconduct. The Complaint was so inadequate that there was never any real risk it could succeed. It also appears the Respondent readily appreciated the wholly inadequate nature of the Complaint and was not troubled by it. In these circumstances the Panel has concluded that a finding of RDNH is not necessary.
For the foregoing reasons, the Complaint is denied.
Nick J. Gardner
Date: November 29, 2019