WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Rba Edipresse, S.L. v. Brendhan Hight / MDNH Inc. Case No. D2009-1580 1. The Parties
The Complainant is Rba Edipresse, S.L. of Barcelona, Spain, represented by Landwell, PricewaterhouseCoopers, Spain.
The Respondent is Brendhan Hight / MDNH Inc. of Las Vegas, United States of America, represented by John Berryhill, Ph.d., Esq., United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2009 in Spanish, naming Brendhan Hight as Respondent (i.e. making no mention of MDNH Inc. as Respondent). On November 25, 2009, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On November 26, 2009, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that Brendhan Hight is the registrant, providing the contact details and stating that the language of the registration agreement is English. On November 30, 2009 the Center sent to the parties a communication concerning the language of the proceeding.
On December 3, 2009, in response to a query by the Center, the Registrar confirmed that the domain name is registered in the name of Brendhan Hight, whose company is MDNH Inc. The Panel has amended the caption to this proceeding to refer to MDNH Inc., as well as to Mr. Hight as Respondent, since this accords with the WhoIs data maintained by the Registrar, and submitted by the Complainant as Annex 1, on November 24, 2009.
On December 4, 2009, the Complainant filed an English language translation of the Complaint. The Center verified that the translated 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 December 8, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 28, 2009. The Response was filed with the Center at approximately 9:49 PM Eastern US Time on December 28, 2009.
The Center appointed Alan L. Limbury, José Carlos Erdozain and Tony Willoughby as panelists in this matter on February 16, 2010. 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 registered proprietor in Spain of trademark No. 1.644.232 CLARA in International class 16 (registered on April 11, 1995) under which the Complainant publishes a magazine for women first published in 1992 by its predecessor in business. The Complainant also owns numerous other Spanish CLARA-formative marks dating from 1988.
The disputed domain name was first registered on March 6, 2000 and acquired by the Respondent in a portfolio purchase in February 2005. It resolves to a “search engine” website headed “online dating” and containing links to numerous other sites, none of which relate to magazines. At the foot of the home page appears the statement “© 2009 MDNH, Inc. This domain may be for sale. Click here for more information”. 5. Parties' Contentions A. Complainant
The Complainant says the disputed domain name is identical to its distinctive and well known CLARA trademark and that the Respondent has no rights or legitimate interests in the disputed domain name, which was registered and is being used in bad faith.
As to legitimacy, the Complainant says the Respondent owns no trademarks containing the word “Clara” and is not known by that name; its website contains no contents of its own, provides no services and is merely a search engine of services with no justification and no recognition that they are known by the general public under the CLARA trademark; in the nine years since registration, the Respondent has shown no need or interest in using the website since it has put no content on the site with the intention of providing any of the services referred to on the site; the Complainant has not authorized the Respondent to use its trademarks in any way and the only intention of the Respondent in registering the domain name is to prevent its legitimate owner, the Complainant, from using it to obtain an economic benefit.
As to bad faith registration and use, the Complainant says it is unquestionable that registering a domain name in order to leave the corresponding web site inactive and almost empty and usurping a domain name which obviously corresponds to a complainant as owner of a priority-registered trademark is reprehensible behaviour; the disputed domain name has been registered for the purpose of preventing the Complainant from carrying on its normal business activity through the domain name and from reflecting its trademarks and the name by which it is known in the market as a domain name and with the intention of attracting the consumer to an eventual or future business by taking advantage of the reputation of the Complainant's well-known CLARA trademark to obtain an economic benefit. The latter has obviously been the main reason why the Respondent has registered a domain name over which it has no legitimate interests or rights.
Further, the statement made at the bottom of the respondent's web site, “this domain may be for sale”, shows that the Respondent has intentionally attempted to trade on the disputed domain name for the sole purpose of a quick and unjustified economic gain.
The Respondent is also blocking access, through ‘', to the historical contents of its website. This again is irrefutable evidence of the Respondent's bad faith and more than suspicious behaviour in avoiding normally unobjectionable consultation by users which normally would not be detrimental to the Respondent.
Further evidence that the Respondent has registered and used the disputed domain name in bad faith and that the real objective of registering it has been to obtain an economic gain from its sale, is the fact that he also owns 124,000 different domain names which, as here, he also offers for sale at much higher prices than usual prices.
Should the Respondent contend, as he has in other administrative proceedings, that he has been acquiring or registering domain names with supposedly generic or descriptive words (“dictionary terms” as he calls them) and that he currently owns over 100,000 domain names for the purpose of “providing automatic publicity links to products and services related to the domain name in question”, the Complainant notes that the links which appear on the ‘www.' web site are not connected in any way to the Clara name given that, amongst other things, there are no products or services which can be related to the word “Clara”, hence the lack of contents on the web site.
The Complainant submits that it is particularly clear for the resolution of this dispute that the Respondent does not have any legitimate interest to the domain name under dispute, is not connected in any way to the Complainant's business activity and does not have any trademark rights to the name and that the Respondent only registered the domain name, which can be fully identified with the Complainant's magazine and which corresponds to a well-known registered trademark in Spain, for the sole and express purpose of obtaining an economic gain from its sale and/or to take advantage of the reputation of its legitimate owner, proof of which is the offer for sale stated on the web site. B. Respondent
The Respondent accepts that the Complainant, “hitherto unknown to the Respondent”, has demonstrated ownership of several trademark registrations in Spain comprising the word “clara” which, aside from also being a common name, is the female gender adjectival conjugation of claro, meaning “clear” in Spanish. The Respondent says these rights are limited to the Spanish publications with respect to which the mark is registered. This is so because the same mark is registered in Spain and in the United States by many others; the same mark is used in France for a similar but unrelated magazine; and because the Complainant has made no claim to any reputation beyond Spain.
The disputed domain name is owned by MDNH Inc. Mr. Hight is an information technology employee of MDNH Inc., a subsidiary of the well-known publicly-traded US corporation Marchex Inc.
The Respondent owns a large number of domain names, including names purchased in the acquisition of the Ultimate Search portfolio in February 2005.
The Complainant admits the term here at issue, apart from its connection with a magazine in Spain, is a “dictionary word” for “clear” in Spanish, and indeed the Respondent owns quite a few domain names comprising Spanish dictionary words including , which was most recently the subject of Sociedad Administradora de Fondos de Pensiones y Cesantias PORVENIR S.A. v. Brendhan Hight,WIPO Case No. D2009-1240, discussed below.
Spanish is the second most popular language in the United States, and has been spoken in regions of the United States longer than English or any other language. The Complainant does not own the word clara any more than it owns the word futbol or mujer (woman). The Respondent's use of the domain name does not relate to the magazine published by the Complainant, nor does the Complainant so allege.
“The concept of hosting a web site with paid links to relevant sites can be a legitimate interest… It is irrelevant that the site consists largely of paid advertising rather than original content”: Advanced Drivers Education Products and Training, Inc v. MDNH, Inc. (Marchex), NAF Claim No. FA0509000567039.
As to the use which the Respondent made of the disputed domain name prior to notice of this dispute, the best evidence is the Complainant's print-out of the corresponding web page in its own exhibits, showing the appearance of the page to which the Complainant objects and obtained prior to this dispute.
The specific advertising shown in any place on the planet on one of Respondent's web pages will be different, as a consequence of geo-targeting of advertising automatically placed on the page. The links are provided by an automated system which attempts to associate the definitional content of the domain name to current keyword advertising, such as the keyword advertising purchased through such systems as Yahoo! or Google, and provided as a data feed for the purpose of monetizing domain name traffic.
The Respondent has discovered that common names tend to do well with advertisements for online dating services. This has been the primary targeting for the domain name for quite some time, as well as such other domain names as and . The trend among Internet users idly typing common personal names into browser address bars is most often in wistful search of someone by that name. There may indeed be trademark owners who have registered such names as Vincent or Natalia as marks for specific goods and services, but there are quite a few more women wanting to meet a man named Vincent, and men wanting to meet a woman named Natalia, than there are trademark claimants in either term – or indeed in the name “Clara”.
What is not advertised at the Respondent's web site is a Spanish women's magazine, nor is there any content in the Spanish language at all.
The Respondent is entitled to use the common name Clara in association with anything the Respondent pleases, other than the Complainant's magazine, because such arbitrary use simply does not infringe or usurp the Complainant's trademark.
Accordingly, the Respondent submits that prior to notice of a dispute, the Respondent was using the domain name to provide automated advertising links to goods and services relating to online personal advertising and dating because experience has shown this is a revenue maximizing use of personal names. The Respondent's use had nothing whatsoever to do with a women's magazine and was not directed to consumers of a Spanish women's magazine, nor the French one for that matter, nor any other publication so titled.
The disputed domain name was originally registered in 2000 by Ultimate Search Inc. In February 2005, the US public company Marchex acquired the assets of Ultimate Search Inc. in a purchase valued at $164.2 million. The domain name was thus purchased from the prior registrant among thousands of others.
Had a search of dictionaries and the Spanish trademark office records been conducted by Ultimate Search in 2000, or by MDNH Inc. in February 2005 upon acquisition of Ultimate Search, the Respondent would have known that Clara is a common name and a Spanish dictionary word and that the Complainant is one of multiple parties which claim rights in “clara” for particular goods and services not directly relating to the meaning of that word or anyone named “clara”. That is not a reason for avoiding a domain name: the common word “tide” is a famous mark for laundry detergent but remains free for use for any non-infringing purpose.
The motivation for registering the disputed domain name was thus simply the acquisition of common words and phrases, many of which have been adjudicated as having been registered and used in good faith under the Policy.
The considerations present here are nearly identical to those discussed in
Sociedad Administradora de Fondos de Pensiones y Cesantias PORVENIR S.A. v. Brendhan Hight,WIPO Case No. D2009-1240.
Rather than rely on any manifest evidence of active bad faith in either registration or use of the disputed domain name, the Complainant relies on an observation made in The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services[23658],WIPO Case No. D2007-1438, concerning the use of robots.txt to disallow automated “bots” from archiving HTML content and from following links on web pages. The concern of the panel in that case (decided in favour of the Respondent) was that a cybersquatter would activate robots.txt upon the filing of a domain name dispute in order to prevent verification of a complainant's allegations of the historical use of the web site to which the domain name at issue resolves. The panel in that case opined that, in the absence of “convincing justification” for such blocking of access, reasonable factual allegations by a complainant as to historical use may be accepted as true and the use of robots.txt in a particular case may be considered an indicium of bad faith. This has developed into something of a doctrine.
In this case the foundational basis for the application of the “robots.txt doctrine” is not present since the Complainant does not allege that the Respondent activated robots.txt upon the filing of the Complaint. In fact, as was established by iFranchise, which was decided in 2007, the Respondent has employed robots.txt for years.
The Panel in iFranchise wanted “convincing justification”, but never asked the Respondent to explain why robots.txt is used to disallow archiving. The Respondent welcomes the opportunity to explain why most advertisers, including such publications as the largest US newspaper - USA Today – disallow automated web archivers.
The Panel sets out the Respondent's submissions on this issue in full below, for the benefit of other panels in future cases.
FIRST – the Respondent operates over two hundred thousand domain names and garners over nine million Internet visitors per month. That is a staggering load of traffic. The Respondent pays for the bandwidth to deliver that traffic and derives revenue based only on human beings clicking through the Pay Per Click (“PPC”) links to the advertisers. The web archiving agent consumes bandwidth and would consume gigabytes of the Respondent's server capacity, pointlessly crawling the Respondent's system without any return of revenue to the Respondent. The Respondent is running a business based on the current placement of advertising in categories bid on by advertisers in keyword advertising systems. There is no historical value in such ad placements, and the Respondent is not obligated to pay a “bandwidth tax” for the purpose of pointlessly archiving stale advertising.
SECOND – The Respondent is paid for delivering “human” traffic to advertisers. One of the scandals of the PPC advertising business involves “click fraud”, a type of Internet crime that occurs in PPC online advertising when a person, automated script or computer program imitates a legitimate user of a web browser clicking on an ad, for the purpose of generating a charge per click without having actual interest in the target of the ad's link. Click fraud is the subject of some controversy and increasing litigation because the advertising networks are a key beneficiary of the fraud. Use of a computer to commit this type of Internet fraud is a felony in many jurisdictions, for example, as covered by Penal code 502 in California, United States. It is illegal in the United Kingdom under the Computer Misuse Act 1990.
Click fraud is detected inter alia through monitoring, at the keyword feed end (i.e. at Yahoo, Google, or other keyword payment provider), the IP addresses of users referred by the PPC ads. Allowing access to web crawlers such as the robot would immediately register as hundreds of thousands of identical IP addresses being sent through to the advertisers by a robot program, for which the advertiser is charged.
Essentially, in advancing the robots.txt doctrine of bad faith, UDRP panels expect the Respondent to commit what appears upstream to be a crime.
THIRD – Because of concerns of click fraud and related scams, the confidential contracts between PPC feed providers and publishers forbid archiving, reverse engineering, and copyright violation inherent in allowing third party content storage of current ads. The system is based on delivering “live clicks” from current ads.
FOURTH – the advertising feed is purchased from search engine companies. The advertisements are the same as those that appear as “paid ads” in popular search engines. Because the revenue rates are charged differently for “search ads” and “domain ads”, the Respondent is required to keep its domain names out of the organic search results delivered by the search engine providers. To try to “rank” a PPC page into the search system from which the ads are derived is considered a form of “keyword arbitrage” forbidden by paid search providers. In other words, if the search engine company is selling search ads for “WIPO”, and the Respondent has , then the search engine company wants users to click on the search ads, and not click through to the PPC publisher, so as to avoid having to split its revenue from the identical ad placement.
FIFTH – Many of the Respondent's domain names are “geo-targeted” – i.e. the
specific content shown depends on the geographic location of the visitor's IP address. In point of fact, if the agent did store the copies seen by it of the Respondent's web pages, only the history “as seen in the US” would be available. The archive would thus conflict with what is actually seen elsewhere in the world, because the archive agent uses a US IP address. As evidence of what, for example, this Complainant may have seen at the page, the archive would not support it, if this domain name were tagged for geo-targeting.
All of the Respondent's content is provided from a single database server. When a “web page” of one of the Respondent's domain names is visited, one is not visiting an HTML file built for the purpose of serving that domain name. Instead, the code is generated based upon behavioral targeting of the domain name associated with relevant content categories, or categories proven to maximize revenue for that name, along with a set of parameters that are stored in the database with each domain name (language, geo-targeting, layout templates, etc.). Every name in the system is subject to an across-the-board block of spiders, archiving agents, and search engine crawlers. It is a single server setting for the entire system of over 150,000 domain names.
In short, the Respondent blocks crawlers, bots, spiders, and the archiving agent because the Respondent must do so. Fortunately, there is another service which provides historical snapshots of web sites on an independent basis, and without generating the problems noted above. Specifically, DomainT, which provides historical WhoIs data, provides a “historical snapshot” service by which images of web pages may be accessed. Because DomainT service simply stores an image of the home pages, it does not follow links, generating click fraud, and does not store the text or site code.
The records stored by DomainT, which is not affiliated with the Respondent, show that, for the extent of snapshots available, the disputed domain name has been targeted to online dating and personal advertising services for more than a year prior to this proceeding.
The historical snapshots demonstrate that robots.txt was not “employed after a UDRP complaint has been filed” in order to prevent access to historical use of the domain name. In point of fact, the Complainant's logic in applying the rational of iFranchise in that regard makes no sense, since the Complainant did not contact the Respondent before filing the dispute. In other words, the Complainant's demonstration that robots.txt blocking was already on, demonstrates that the Respondent was not engaged in some sort of “cover up” of infringing activity.
Moreover, the Complainant has not alleged that the Respondent has ever used the domain name for purposes having any relationship to the Complainant's publication of a women's magazine in Spain, in the Spanish language, and to a Spanish audience. Accordingly, bad faith is not shown. 6. Discussion and Findings
To qualify for cancellation or transfer of a domain name, a complainant must prove each element of paragraph 4(a) of the Policy, namely:
(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 domain name; and
(ii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
It is common ground that the Complainant has rights in the Spanish registered trademark CLARA in respect of magazines and other publications. The Panel finds that the disputed domain name is identical to the Complainant's CLARA mark, the generic top level domain (“gTLD”) “.com” being inconsequential: Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
The Complainant has established this element of its case. B. Rights or Legitimate Interests
Having regard to the Panel's conclusion under the next heading, it is unnecessary to make any findings on this issue. C. Registered and Used in Bad Faith
The Policy, paragraph 4(a)(iii) requires the Complainant to satisfy the Panel that the Respondent has registered and is using the disputed domain name in bad faith. These conditions are cumulative. See, for example World Wrestling Federation Entertainment, Inc. v. Michael Bosman,WIPO Case No. D1999-0001 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, in which the learned panelist said “the requirement in paragraph 4(a)(iii) that the domain name ‘has been registered and is being used in bad faith' will be satisfied only if the complainant proves that the registration was undertaken in bad faith and that the circumstances of the case are such that the Respondent is continuing to act in bad faith.”
As to registration, the Complainant must be able to satisfy the Panel that it is more likely than not that the Respondent was aware of the Complainant or of its CLARA trademark at time of the registration of the disputed domain name by acquisition in 2005 and intended to benefit unfairly from that trademark and/or to damage the business of the Complainant.
As found by the panel in Sociedad Administradora de Fondos de Pensiones y Cesantias PORVENIR S.A. v. Brendhan Hight,WIPO Case No. D2009-1240, the Respondent specializes in the registration of large numbers of domain names based on dictionary words and generic phrases rather than third parties' trademarks. It seems unlikely that the Respondent would have made an exception in the case of the disputed domain name and by registering it had tried to take advantage of the Complainant's trade mark.
The word “Clara” is both a common name and a dictionary word in Spanish. Despite the ubiquity of the Internet, there is no material before the Panel from which the conclusion can reasonably be drawn that the Complainant's CLARA mark was known or used in the United States, the Respondent's jurisdiction, or had otherwise come to the Respondent's attention, at the time of registration by acquisition of the disputed domain name. Specifically, the Complainant has failed to prove that the trademark CLARA has become distinctive or famous outside Spain. The Complainant has not registered that mark in the United States nor has it demonstrated that the word “Clara” has gained secondary meaning as a trademark denoting the Complainant's products or services. Accordingly, on the material before it, the Panel cannot accept the Complainant's submission that the term “Clara” has “full distinctive capacity and should be considered a whim or at most a fantasy trademark with respect to its distinctive products”. On the contrary, in addition to the Complainant's failure to prove use of its CLARA mark outside Spain and in the United States in particular, and its failure to prove secondary meaning denoting the Complainant's products or services, the Panel takes into account that the Respondent has registered numerous Spanish dictionary words as domain names. The totality of these circumstances affords no reason to suppose that the Respondent had the trademark meaning or the Complainant's magazine in mind on registration of the disputed domain name. Accordingly any finding of bad faith registration in these circumstances would be outside the permissible scope of the Policy.
The fact that the disputed domain name may be for sale does not mean that the Respondent's purpose in acquiring it in 2005 was “primarily” to sell it to the Complainant or one of its competitors. The fact that the Respondent also owns 124,000 different domain names which, as here, it also offers for sale at higher prices than usual prices does not alter this conclusion.
It follows that there is no evidence that the domain name was registered in bad faith unless it can be said that, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, 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 of a product or service on its website. Under the Policy, paragraph 4(b)(iv), such circumstances would be evidence of both bad faith use and bad faith registration for the purposes of paragraph 4(a)(iii).
The nature of the Respondent's business points to the conclusion that the disputed domain name is aimed at and is likely to attract predominantly Internet users interested in the name “Clara”, over which the Complainant does not have exclusive rights in Spain or elsewhere, other than with respect to the particular goods and services covered by its registered trademarks. Of course, the disputed domain name could also attract Internet users interested in the Complainant's CLARA magazine, since the name “Clara” is the same as the trademark. However, there is no evidence that this is or has ever been the Respondent's intent, since no connection with magazines or books can be found at the website to which the disputed domain resolves, not even when accessed from Spain.
Hence there is nothing before the Panel to enable the conclusion to be drawn that the use to which the domain name is being put is intended to trade off the Complainant's trademarks as distinct from the common name meaning of the word “Clara”. Indeed the Complainant concedes that the Respondent's website does not refer to magazines.
The Policy is limited in scope to intentional practices collectively termed cybersquatting. It does not address the issue whether the Respondent's conduct constitutes infringement of the Complainant's trademark. Some of the traditional principles in the field of trademarks do not apply in controversies of this kind.
As for the “robots.txt doctrine” that bad faith may be found if access to the archive of the historical contents of a website is blocked by a respondent after initiation of a domain name dispute, the Panel considers that, on the basis of the Respondent's assertion that the Complainant made no contact with the Respondent before filing the Complaint, the Complaint itself establishes (Document 10) that such access was blocked before this dispute arose. Hence, whatever view one might take as to whether such a doctrine is appropriate, having regard to the justifications for archive blocking advanced by the Respondent (and the Panel finds it unnecessary to express a view), that doctrine cannot apply in this case.
In the result, the Panel is not satisfied that the Respondent registered and is using the disputed domain name in bad faith.
The Complainant has failed to establish this element of its case. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Alan L. Limbury
Presiding Panelist
José Carlos Erdozain
Panelist
Tony Willoughby
Panelist
Dated: March 2, 2010
Full & Egal Universal Law Academy