WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

D.C. Thomson & Co Limited v. Jennifer Lawson

Case No. D2017-1707

1. The Parties

The Complainant is D.C. Thomson & Co Limited (“DCT”) of Dundee, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), internally represented.

The Respondent is Jennifer Lawson of Kemah, Texas, United States of America.

2. The Domain Name and Registrar

The Disputed Domain Name <oorwulliebuckettrail.com> is registered with GoDaddy.com, LLC (the “Registrar”). The Disputed Domain Name was registered on November 21, 2015.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2017. On September 5, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 6, 2017, 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 September 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 1, 2017. The Respondent sent an email communication on September 11, 2017. On October 2, 2017, the Center notified the Parties that it would proceed to Panel Appointment.

The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on October 9, 2017. 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, DCT, has been in operation since 1905. It is one of the leading media organizations in the United Kingdom with an established history of magazine publishing. Amongst its portfolio of publications and characters, DCT has continuously published the Oor Wullie comic strip in The Sunday Post newspaper since 1936. The comic strip features a character called Wullie. Oor Wullie means “Our Willie”.

The Complainant has built up extensive IP rights, including a portfolio of trade mark registrations for OOR WULLIE.

The trademarks relevant to this matter are:

The term “Oor Wullie Bucket Trail” was the name given to a mass public Art Trail around Dundee, Scotland. The Complainant has provided evidence that it partnered with the ARCHIE Foundation Charity to create the Art Trail in which 55 individually designed Oor Wullie sculptures were displayed across Dundee for a period of 10 weeks. The sculptures were subsequently auctioned off to raise over GBP 800,000 for the ARCHIE Foundation’s Tayside Children’s Hospital Appeal. The Complainant asserts that the Art Trail was a very high-profile event. As a result, the Complainant built up substantial reputation and goodwill in the phrase “Oor Wullie Bucket Trail”.

The Disputed Domain Name was originally held by the Complainant. The Complainant’s evidence is that due to an inadvertent administrative error, it failed to renew its registration of the Disputed Domain Name to lapse, at which point the Disputed Domain Name was acquired by the Respondent.

The Disputed Domain Name resolves to a “holding” webpage displaying what appear to be placeholder articles and pictures. For example, a screen shot of the website linked to the Disputed Domain Name and taken on September 11, 2017 (Annex 6 of the Complaint), shows an article posted to the website on August 20, 2017 and entitled “The Most Common PBN Mistakes SEO Experts Are Still Making”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Disputed Domain Name is identical to or confusingly similar to its trademarks because it wholly incorporates the Complainant’s mark OOR WULLIE and the words “Bucket Trail” which relate directly to the Art Trail named the “Oor Wullie Bucket Trail”, notwithstanding the addition of the generic Top-Level Domain (“gTLD”) “.com”.

The Complainant contends that the granting of registration of its OOR WULLIE trademark in Europe and the United Kingdom is prima facie evidence of the Complainant’s ownership of this trademark, and of the Complainant’s exclusive right to use the OOR WULLIE trademark in commerce or in connection with the goods and/or services specified in the registration certificates.

The Complainant also contends that the substantial reputation and goodwill it acquired in the phrase “Oor Wullie Bucket Trail” as a result of the Art Trail have resulted in it acquiring unregistered rights to this phrase.

The Complainant further contends that the Respondent should be considered to have no rights or legitimate interests in the Disputed Domain Name; the Respondent is not commonly known by the Disputed Domain Name, there is no evidence that the Complainant authorized or otherwise permitted the Respondent to register the Disputed Domain Name, and the Complainant’s rights predate the Respondent’s registration. The Respondent is not sponsored by, or in any way affiliated with, the Complainant. The Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner, including in domain names.

The Complainant also contends that such a uniquely distinctive and unusual domain name would put anyone looking to acquire it on notice to make inquiries as to a third party’s potential rights in the domain name, at which point the rights of the Complainant in the OOR WULLIE and OOR WULLIE BUCKET TRAIL trademarks would have immediately become apparent.

The Complainant further contends that the Respondent is not using the Disputed Domain Name to provide a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the OOR WULLIE trademark.

The Complainant also contends that the Disputed Domain Name is being offered for sale in an amount which far exceeds the Respondent’s out-of-pocket expenses in registering the domain name, which serves as further evidence of the Respondent’s lack of rights and legitimate interests.

As to registration and use in bad faith, the Complainant contends that the Respondent registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting or otherwise transferring it to the Complainant or to one of its competitors, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Name.

The Complainant also contends that the Respondent’s offer to sell the Disputed Domain Name to the Complainant for $8,000 constitutes evidence of registration and use in bad faith.

The Complainant further contends that by using the Disputed Domain Name, the Respondent is intentionally using the Disputed Domain Name to confuse unsuspecting Internet users looking for the Complainant’s website, and to mislead Internet users as to the source of the Disputed Domain Name and website. In so doing, the Respondent has unfairly disrupted the Complainant’s business and has created misperceptions as to the source, sponsorship, affiliation, or endorsement of the Disputed Domain Name with intent to capitalize on the fame and goodwill of the Complainant’s trademarks in order to increase traffic to the Disputed Domain Name’s website for commercial gain.

B. Respondent

The Panel notes that on September 11, 2017, the Respondent wrote to the Center via email commenting on the state of correspondence between the Respondent and the Complainant. In particular, the Panel notes the Respondent’s comment that “email correspondence is not completed”; the Respondent refers to further email correspondence to the Complainant which states that the “needed detail is attached”. The Respondent attached an invoice from “PandaTech Marketing” for “Web development and SEO post for oorwulliebuckettrail.com” in the amount of USD 1,250.

The Panel notes that the Respondent was informed by Domain Disputes that a response to the Complaint was due October 1, 2017. The Respondent did not formally reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the Disputed Domain Name in order to succeed in this proceeding:

(i) That the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights; and

(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 Panel finds that the Complainant has rights in the trademark OOR WULLIE by virtue of its trademark registrations in the United Kingdom and Europe and, based on the evidence, has common law rights in the phrase “Oor Wullie Bucket Trail” for purposes of the Policy.

The Panel finds that Disputed Domain Name is confusingly similar to the Complainant’s OOR WULLIE trademark. This is because the Complainant’s trademark is entirely subsumed within the Disputed Domain Name. The Panel also finds that the Disputed Domain Name is identical to the Complainant’s common law trademark OOR WULLIE BUCKET TRAIL, which is also entirely subsumed within the Disputed Domain Name. It is well established that the gTLD “.com” may be disregarded for the purposes of comparison under the first element.

The Panel therefore finds that paragraph 4(a)(i) of the Policy is satisfied in favor of the Complainant.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the Disputed Domain Name, among other circumstances, by showing any of the following elements:

(i) That before notice of the dispute, the Respondent used or made demonstrable preparations to use the Disputed Domain Name or a name corresponding to a Disputed Domain Name in connection with a bona fide offering of goods or services; or

(ii) That the Respondent has been commonly known by the Disputed Domain Name, even if it had acquired no trademark or service mark rights; or

(iii) That the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert customers to or tarnish the trademark or service mark at issue.

The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name lies with the Complainant.

The Complainant has stated, and the Panel accepts, that it has not authorized the Respondent’s use of its trademark or common law rights and the Respondent is not sponsored by or in any way affiliated with the Complainant.

The Panel notes that the Respondent’s email of September 11, 2017 attached an invoice from “PandaTech Marketing” for “Web development and SEO post for oorwulliebuckettrail.com”. The Panel is not persuaded that such an invoice, without further explanation from the Respondent, sufficiently rebuts the Complainant’s prima facie case. Indeed, the Respondent did not contest the Complainant’s claims that the Respondent lacked rights or legitimate interests in the Disputed Domain Name.

In particular, the use of the Disputed Domain Name in connection with a “holding” webpage and the offer of the Disputed Domain Name for sale do not give rise to any rights or legitimate interests in the Disputed Domain Name within the meaning of the Policy.

The Panel finds that the Complainant has satisfied the burden of establishing a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

Accordingly, and in the absence of any formal response from the Respondent or any further elucidation from the Respondent regarding its September 11, 2017 email, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, are evidence of the registration and use of the Disputed Domain Name in bad faith:

(i) Circumstances indicating that the Respondent has registered or has acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to the Complainant who is the owner of the trademark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Disputed Domain Name; or

(ii) That the Respondent has registered the Disputed Domain Name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) That the Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) That by using the Disputed Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.

The Panel is satisfied that the Disputed Domain Name has been registered in bad faith for the following reasons taken cumulatively:

(i) The most cursory trademark or other online search for “Oor Wullie” prior to the Respondent registering the Disputed Domain Name would have instantly revealed the Complainant, its trademark and comic strip.

(ii) The evidence shows that the trademark OOR WULLIE is uniquely distinctive of and associated with the Complainant and that “Oor Wullie Bucket Trail” is a description of the Art Trail which was a uniquely distinctive venture associated with the Complainant.

(iii) It is clear from correspondence with the Respondent (provided by the Complainant) that the Respondent carried out no checks and made no enquiries prior to acquisition, as to whether the Disputed Domain Name violated another party’s rights. The Panel finds that such a uniquely distinctive and unusual trademark would in and of itself put a responsible party looking to acquire a domain name incorporating that trademark on notice to make enquiries as to potential prior ownership of it or rights to it.

As to whether the Disputed Domain Name has been used in bad faith, the Panel notes that the circumstances listed in paragraph 4(b) of the Policy are inclusive only.

In this regard, the Panel notes that the Complainant approached the Respondent on January 20, 2017, prior to filing the Complaint, to request release of the Disputed Domain Name so as to allow the Complainant to repurchase it. The Complainant informed the Respondent that the Disputed Domain Name had previously been registered in its name and for a “major charity event”. The Complainant also informed the Respondent that failure to renew registration of the Disputed Domain Name was due to an administrative error.

In her response, the Respondent offered to sell the Disputed Domain Name for $8,000. Although the Respondent claimed that she had spent “a lot” on purchasing the Disputed Domain Name, she provided no evidence of the actual amount spent. On balance, the Panel is satisfied that the $8,000 offer was more than the Respondent’s out-of-pocket expenses. The Respondent declined to state (in response to a specific enquiry from the Complainant and an offer to reimburse costs if they were proved) what her out-of-pocket costs were. A later proposal from the Respondent for the Complainant to name an offer indicates a willingness to consider something less than $8,000 for the Disputed Domain Name. The Panel notes that the Respondent’s email of September 11, 2017 included an invoice for “Web development and SEO post for oorwulliebuckettrail.com” in the amount of USD 1,250, but as earlier discussed in the decision, this was not further explained by the Respondent. The Panel is not persuaded this invoice alone, without any further explanation, demonstrates the Respondent’s out-of-pocket costs amounted to $8,000.

It is clear from the Complaint that the Respondent failed to make proper enquiries as to whether the Disputed Domain Name violated another’s rights at the time of acquisition, but was then expressly put on notice of those rights by the Complainant. In those circumstances, the Panel is satisfied that the offer to sell the Disputed Domain Name for $8,000 was in excess of her out-of-pocket costs and amounted to use in bad faith.

In view of this finding it is unnecessary for the Panel to go on and consider some of the other grounds of use in bad faith contained in the Complaint.

The Panel is also entitled to draw adverse inferences from the Respondent’s failure to formally respond to the Complaint.

Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied in favor of the Complainant.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, <oorwulliebuckettrail.com> be transferred to the Complainant.

Andrew Brown Q.C.
Sole Panelist
Date: October 23, 2017