The Complainants are Workman Publishing Co., Inc. and Patricia Schultz of New York, New York, United States of America represented by Cowan, DeBaets, Abrahams & Sheppard, LLP, United States of America.
The Respondent is MareBerg Consulting of Worcester, Massachusetts, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2011. On February 3, 2011, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On February 3, 2011 Network Solutions, LLC 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 because of the Respondent’s use of a privacy service for its domain name registration. The Center sent an email communication to the Complainant on February 14, 2011 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 amendment to the Complaint on February 19, 2011. The Center verified that the Complaint, together with the amendment to 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 on February 25, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 17, 2011. The Response was transmitted to the Center on March 17, 2011.
On March 21, 2011, Respondent submitted an amended Response that corrected typographical errors, added hyperlinks to certain references, and made a substantive change to paragraph 20 of the Response.
On March 24, 2011, the Complainants submitted a Supplemental Filing.
The Center appointed David H. Bernstein as the sole panelist in this matter on March 31, 2011. 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 April 6, 2011, the Panel issued Procedural Order Number 1, which stated in relevant part:
“Pursuant to paragraph 12 of the Rules, the Panel requests that the Parties submit a supplemental submission to address the following issue:
The Parties should submit any factual information available to them concerning the date or dates on which the disputed domain name was renewed, since its original registration, along with any documentation within their control evidencing the renewal dates. The Parties may, but are not required to, also address the applicability of paragraph 2 of the Policy to the issues in this proceeding.
All submissions must be sent to the Center by 5 pm Greenwich Mean Time on April 12, 2011. Pursuant to Rule 10(c), the expected date for decision is extended to April 18, 2011.”
At approximately 2:41 pm GMT on April 12, 2011, the Respondent submitted a supplemental submission in response to the Panel’s request. At approximately 8:23 pm GMT on April 12, 2011, the Complainant submitted a supplemental submission in response to the Panel’s request. In addition to addressing the issues raised in Procedural Order Number 1, Complainant reattached to its submission the supplemental submission that it previously had filed on March 24, 2011.
On April 13, 2011, Respondent filed an email with the Center in which it (1) objected to Complainant’s late filing of its Response to the Panel’s procedural order, and (2) objected to the Complainant’s filing of its March 24, 2011 supplemental submission and its reattachment of that submission to the April 12, 2011 supplemental submission. Respondent argued that the late filing of the April 12, 2011 supplemental submission “takes unfair advantage” in that it meant that the Complainant did not file its response “until six hours after it received a copy of Respondent’s timely filing,” which ‘cause[s] undue prejudice to Respondent.” With respect to the March 24, 2011 supplemental submission, Respondent objected because:
“Complainant does not point to any exceptional circumstances necessitating further submissions, nor does the Filing itself disclose any new facts not available at the time the Complaint was submitted. Instead, Complainant appears to have submitted the Filing solely to provide argument rebutting the assertions in Respondent’s Response.”
Later on April 13, 2011, Complainant filed an email with the Center in which it (1) apologized for the late filing of its supplemental submission, which was caused when it mistakenly thought it had until 5 pm Eastern Standard Time to file its submission1, (2) argued that its supplemental submission was finalized prior to receipt of Respondent’s submission and did not include content in response to Respondent’s submission, and (3) noted that it reattached its March 24, 2011 supplemental submission “because its contents are directly relevant to the topic . . . [of] Respondent’s knowledge of Complainant’s claim to rights, which was prior to Respondent’s renewal of her/its domain name registration.”
On April 14, 2011, the Panel issued Procedural Order Number 2, which stated in relevant part:
With respect to Respondent’s March 21, 2011, amended Response, the Panel will disregard the substantive addition to paragraph 20 as being untimely. See Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304. The remaining typographical corrections and hyperlink additions are not substantive changes and will be accepted.
“With respect to the Complainant’s March 24, 2011 supplemental submission, the Panel will disregard those parts of the submission that merely reargue the facts and law already discussed in the Complaint, or that could have been anticipated by Complainant and could have been addressed in the Complaint (including paragraphs 3-7 and 11-14 of the March 24, 2011 supplemental submission). However, the Respondent did raise some unanticipated facts in its Response, and therefore the Panel will accept the March 24, 2011 supplemental submission to the extent that it addresses: (1) Respondent’s claim, raised for the first time in its Response, that it is in the business of registering short phrase domain names for its clients, (2) Respondent’s claim, raised for the first time in its Response, that the ‘testpage’ for ‘1000 Places in Fine Art’ (attached as annex 9 to the Response) reflects demonstrable preparations by Respondent to use the domain name; and (3) the assertions in the affidavit of Gregory Simpson. See generally Mile, Inc. v. Michael Burg,WIPO Case No. D2010-2011 (panels ‘typically accept supplemental filings only to consider new evidence or provide a fair opportunity to respond to new arguments’).
Because the Panel has agreed to accept, in part, the Complainant’s March 24, 2011, supplemental submission, the Panel believes it appropriate to give the Respondent a fair opportunity to respond to those parts of Complainant’s March 24, 2011 supplemental submission that the Panel has agreed to accept. See paragraph 10(b) of the Rules (the Panel shall treat the parties “with equality”); see also Pacific Fence & Wire Co. v. Pacific Fence and Jim Paradise, WIPO Case No. D2001-0237.
As for the Complainant’s late-filed April 12, 2011, supplemental submission, Respondent has not articulated the basis for its concern that it is unduly prejudiced by Complainant’s late filing. The Panel assumes that the gravamen of Respondent’s objection is that the late filing gave the Complainant the opportunity to modify its submission in response to Respondent’s submission, and effectively gain the right of reply. That is not an unfair objection. However, given Complainant’s representation that the error was inadvertent and that Complainant did not in fact modify its submission in response to the Respondent’s timely-filed submission, the Panel does not believe it appropriate to exclude Complainant’s submission. Instead, since the Respondent is already being given the opportunity to file a further submission, the Panel will allow Respondent the opportunity to respond to any elements of Complainant’s April 12, 2011, submission to which it would like to respond. That procedure will ensure that the Panel has a complete record on which to issue its decision while also ensuring that there is no possible prejudice to the Respondent by virtue of Complainant’s late filing, even if it was inadvertent.
The Respondent shall file its supplemental submission, limited to the matters permitted above, no later than April 21, 2011. Thereafter, no party shall file any additional documents with the Center without first seeking permission from the Panel. Any request for leave to file additional submissions must explain the justification for the request for leave to file yet another submission, must be filed no later than April 26, 2011, and must be limited to three pages, double spaced.
Pursuant to Rule 10(c), the expected date for decision is extended to May 4, 2011 (assuming no further requests for leave to file supplemental submissions).”
On April 21, 2011, Respondent submitted a further supplemental submission in response to the Panel’s request. The Panel accepts those parts of this submission that address the matters discussed in Complainant’s April 12, 2011 supplemental submission. The parties did not file any further request for leave to supplement the record. 4. Factual Background
Complainants are Patricia Schultz, author of the book 1,000 Places to See Before You Die, and Workman Publishing Co. (“Workman”), the publisher of that book. Ms. Schultz and Workman are also the author and publisher, respectively, of a series of subsequent related works, including the books 1,000 Places to See in the U.S.A. and Canada Before You Die, 1,000 Places to See Before You Die Traveler’s Journal, and various derivative products, including “calendars, board games, and puzzles.”
Complainants own a number of registrations for the trademarks 1,000 PLACES TO SEE BEFORE YOU DIE and 1,000...BEFORE YOU DIE, which are registered in connection with a variety of goods and services, including but not limited to books, computer services, and entertainment services. In relation to a series of non-fiction books in the field of travel, it holds United States Trademark Registration No. 3,137,137 for the standard-character mark 1,000 PLACES TO SEE BEFORE YOU DIE. The mark was registered on August 29, 2006, with commercial use claimed since September 2003.
Respondent is MareBerg Consulting, doing business as and for Marianne Bergenholtz. Respondent is a communications consultant who states that she “regularly composes and registers short-phrase domain names to acquire generic domain names as a value-added service” for her clients and for her own “entrepreneurial pursuits.” Respondent states that she has registered over 100 such domain names in the past fifteen years.
The Domain Name was registered on January 20, 2004. It is undisputed that, on or about November 16, 2006,2 Complainants contacted Respondent to discuss Complainants’ interest in acquiring the Domain Name. During this conversation, Complainants offered Respondent USD 1,000.00 for the Domain Name, an offer which Respondent considered and ultimately rejected on or about November 20, 2006. At that time, Respondent counter-offered to sell the Domain Name for USD 4,000.00 (according to Respondent) or USD 5,000.00 (according to Complainants), in either case a sum that Complainants considered and rejected. There may have been additional discussions between representatives of the parties, but both parties appear to agree that, in or around August 2010, Complainants’ lawyer contacted Respondent to revisit the possibility of transferring the Domain Name, and that during that conversation, Respondent stated that she would sell the Domain Name for USD 10,000.00.
Complainants claim, and Respondent does not dispute, that for at least the first full year after the Domain Name was registered, the Domain Name resolved to a website on which “sponsored links for travel and restaurant deals and other travel-related links” appeared. It is also undisputed that, at some time shortly after Complainants first contacted Respondent, Respondent changed the website to which the Domain Name resolved to say simply “Coming Soon.” As of the date of this decision, more than four years after the “Coming Soon” webpage message first was posted, the webpage still states that it remains under development. 5. Parties’ Contentions A. Complainants
Complainants assert that, although they did not own a trademark registration in the mark 1,000 PLACES BEFORE YOU DIE at the time the Domain Name was registered, they “had common law rights in the mark and its variations because [the mark] and its variations had acquired secondary meaning at that time.” Complainants further assert that the Domain Name is confusingly similar to the mark because it “wholly subsumes the first two words of the [mark].”
Complainants further argue that Respondent has no rights or legitimate interests in the mark because they neither authorized nor gave permission to Respondent to register the Domain Name or use the mark in any way. They also assert that Respondent has no legitimate interests in the mark because “Respondent has never operated a bona fide or legitimate business under the Domain Name,” nor is there “evidence of the Respondent’s use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services.” Complainants argue that Respondent’s “placeholder webpage stating that a website was ‘coming soon’” should not be viewed as a use of the Domain Name, or even if could be construed as a legitimate use, it is a bad faith use in these circumstances because the webpage was created only after Complainants contacted Respondents in an effort to obtain the Domain Name.
Finally, Complainants contend that Respondent registered and is using the Domain Name in bad faith. They assert that Respondent was aware of Complainants’ rights in the mark at the time she registered the Domain Name, “[g]iven the significant national and local press and critical acclaim the [book] received following its release, its significant sales, and the fact that the [book] was in or near the top ten of the New York Times Bestseller List in the first four months after it was released.” Complainants also argue that Respondent’s bad faith use is established by her “attempt to sell the domain name for an amount far greater than Respondent’s costs to register the domain name.” B. Respondent
Respondent argues that Complainants have failed to establish common law rights in the 1,000 PLACES BEFORE YOU DIE mark as of the time the Domain Name was registered. Respondent claims that the evidence Complainants have submitted on the current record is insufficient to support a finding that the mark acquired secondary meaning in the four months between the date of the book’s publication and the date of the Domain Name’s registration.
Respondent further asserts that Complainants have failed to establish that the mark is confusingly similar to the Domain Name because “the domain name does not contain Complainants[’] mark in its entirety nor has Complainant [sic] provided evidence to support its claim that the domain name is confusingly similar by providing evidence of marketing studies or surveys of its customers who are confused.”
Respondent contends that she has rights and legitimate interests in the Domain Name because she “has developed a pattern of registering generic, short phrase domain names to provide unique offerings to its clients to differentiate its services in a competitive, website development business climate,” and that the Domain Name in this case is “strongly descriptive.” Respondent describes various preparations she has undertaken to use the Domain Name, such as in connection with “a global training program for teaching biodiversity in online classrooms” and “a comprehensive application for an online art gallery for art collectors.”
Respondent claims that mere knowledge of Complainants’ rights in the mark is insufficient to establish bad faith registration and use, and that “some other indicia of bad faith” is required. Respondent states, inter alia, that she did not make an initial offer to Complainants to sell the Domain Name, and that she “has no history of or pattern to indicate that [she] participates in cybersquatting, bad faith registrations or bad faith use.” Finally, Respondent argues that Complainants’ seven-year delay in filing the Complaint raises an inference that the Domain Name was not registered in bad faith.
Finally, Respondent argues for a finding of Reverse Domain Name Hijacking because “Complainant[s] ‘did not seriously believe’ that Respondent had violated the Policy.” 6. Discussion and Findings
Pursuant to Paragraph 4(a) of the Policy, Complainants are required to prove each of the following three elements by a preponderance of the evidence in order to obtain transfer of the Domain Name: (i) the 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 Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith.
Under Paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” A. Laches
Respondent argues that the Panel should deny relief to Complainants on a theory of laches because Complainants have waited more than seven years to file the Complaint. Respondent cites The New York Times Company v. Name Administration, Inc. (BVI), NAF Claim No. 1349045, for the proposition that “the doctrine of laches should be expressly recognized as a valid defense in any domain dispute where the facts so warrant.” The New York Times panel reasoned that the recognition of equitable defenses was appropriate where the administrative proceeding offered an equitable remedy, such as transfer of a disputed domain name.
This approach was considered and expressly rejected in a more recent UDRP panel, on which this Panelist sat. In Mile, Inc. v. Michael Burg,WIPO Case No. D2010-2011, the panel explained that, although courts in the United States have barred the recovery of damages on the theory of laches, they generally have not done so in trademark actions where the relief sought is prospective injunctive relief. As stated by that panel, “the remedies under the Policy are similarly injunctive rather than compensatory in nature, and the focus is on avoiding confusion in the future as to the source of goods or services. Thus, UDRP panels have generally declined to apply the doctrine of laches.” Id. However, that panel also recognized that lengthy delays in filing complaints “can often have the effect of eroding or undermining the complainant’s arguments with respect to the respondent’s rights or legitimate interests in the disputed domain name, or the respondent’s alleged bad faith in registering and using the domain name.” It therefore chose to analyze such claims within the terms of paragraphs 4(a)(ii) and (iii) of the Policy. This Panel adopts the Mile, Inc. approach and will address Respondent’s claims in its analysis of the elements set forth by the Policy. B. Identical or Confusingly Similar
To prevail on the first element of the UDRP, Complainants must demonstrate that the Domain Name is identical or confusingly similar to a trademark in which they have rights. This is a two-pronged task. Complainants must first demonstrate rights in a mark as of the date of the Complaint (not as of the date the Domain Name was registered). See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.4. Complainants must then establish that the mark is identical or confusingly similar to the Domain Name.
Complainants have established rights in the mark 1,000 PLACES BEFORE YOU DIE as of the time of the Complaint. Complainants have provided printouts of various electronic trademark records stored on the website of the United States Patent and Trademark Office, including United States Registration Number 3,137,137 for the standard-character mark 1,000 PLACES BEFORE YOU DIE in connection with a series of non-fiction books in the field of travel.
Whether Complainants have established that the Domain Name is confusingly similar to the 1,000 PLACES BEFORE YOU DIE mark is a closer question. Respondent correctly notes that the phrase “Before You Die” is a distinctive element of the mark. Moreover, many of the additional titles cited by Complainants in support of their rights in the mark contain the “Before You Die” element without the full “1,000 Places” element (e.g., 1,000 Recordings to Hear Before You Die and 1,000 Books to Read Before You Die). However, the importance of the “Before You Die” element does not negate the distinctiveness of the “1,000 Places” element. For example, at the time of this decision, almost every link on the first ten pages of Y and B search results for “1,000 places” relates to the book 1,000 Places Before You Die or its companion television series. The term “1,000 Places,” despite being a part of the larger mark 1,000 PLACES BEFORE YOU DIE, is sufficiently connected with Complainants’ series of books such that it is itself distinctive. Because the Domain Name is identical to this distinctive portion of the mark, the Panel finds that the Domain Name is confusingly similar to the mark as a whole for purposes of the Policy.
Complainants have therefore proven by a preponderance of the evidence that the Domain Name is confusingly similar to a trademark in which they have rights. C. Rights or Legitimate Interests
Complainants must next establish that Respondent has no rights or legitimate interests in the Domain Name. Although the burden of proof rests with Complainants, panels have recognized the difficulty of proving a negative proposition. See, e.g., Mile, Inc. v. Michael Burg,WIPO Case No. D2010-2011 (citing Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270). Therefore, the consensus view is that “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. . . . If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.” WIPO Overview 2.0, paragraph 2.1.
A respondent may demonstrate rights or legitimate interests in a domain name by showing, inter alia, that (i) before any notice of the dispute, respondent used or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) respondent has been commonly known by the domain name, even if it has not acquired trademark or service rights; or (iii) 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. Policy, paragraph 4(c).
Here, Complainants argue that there is no evidence that the Respondent has used or made good faith attempts to use the Domain Name, apart from an undated “testpage” submitted by Respondent and Respondent’s unsubstantiated and improbable explanations as to her efforts to develop a website at the Domain Name.
Respondent claims that she registers domain names containing dictionary words for purposes of reselling them “to provide unique offerings to its clients to differentiate its services in a competitive, website development business climate.” Registration and sale of domain names consisting of dictionary words has been found to be a legitimate enterprise, but only if the names are registered for the purpose of their descriptiveness, and not for their value as trademarks. See, e.g., Asphalt Research Technology, Inc. v. National Press & Publishing, Inc.,WIPO Case No. D2000-1005.
On the present record, the Panel finds that the Respondent has not made a sufficient showing that she has registered the Domain Name for the purpose of its descriptiveness as opposed to its trademark value.
First, the timing of Respondent’s registration of the Domain Name is suspicious and suggests an illegitimate attempt to exploit the value of the title of Complainants’ first book. Complainants have provided a record of substantial press coverage and commercial success of 1,000 Places Before You Die, including achieving 6th place on the New York Times Bestseller list, in the four months between the book’s publication and Respondent’s registration of the Domain Name. This significant publicity itself suggests Respondent’s awareness of the work. Even more compelling is Respondent’s failure to deny knowledge of the book in her Response or supplemental submissions, which supports the inference that she was aware of the book when she registered this Domain Name. For example, in response to Complainants’ allegations of bad faith, rather than deny knowledge, Respondent instead asserts that knowledge alone is insufficient to establish bad faith, stating: “It would make little sense to impute to a respondent the intent to free ride on another’s trademark without some knowledge of the existence of that trademark. While necessary, however, it is a much more controversial proposition to assert that such knowledge alone is sufficient to satisfy [the] Policy.”
Nor does Respondent deny having an intent to capitalize on the renown of the book’s title. Absent any evidence to the contrary, Respondent’s registration of the Domain Name cannot be considered the registration of a descriptive word for purposes of domain name speculation, but rather an exploitation of the value of the 1,000 Places Before You Die book title. The Panel also notes that, despite her assertion that she has registered over 100 domain names for the purposes of resale, Respondent has only provided a record of fourteen such names, and most of those seem, to the Panel, fairly specific rather than being dictionary words or common phrases (e.g., , , , , , , and ). She has therefore not provided sufficient evidence to support the claim that she routinely engages in permissible domain name speculation.
Second, Respondent’s purported uses for the Domain Name ring hollow. As noted above, Respondent has described a failed attempt to use the Domain Name for a “global training program for teaching biodiversity in online classrooms,” as well as a plan to use the Domain Name as part of a “comprehensive application for an online art gallery for art collectors.” The Panel is hard-pressed to identify any relationship between the Domain Name (which references 1,000 places) and Respondent’s stated plans for its use. The absence of any logical connection further erodes Respondent’s claims of legitimate domain name speculation.
Third, Respondent has failed to use, or show demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. Respondent has maintained a “Coming Soon” page for more than four years, including through the date of this decision, which quite clearly constitutes a failure to use the Domain Name. Moreover, the single, undated “testpage” for an online art gallery, the screenshot purporting to show date of last access to that page in August 2010, and receipts of a subscription to an unrelated art auction website are insufficient evidence of any demonstrable preparations to use this Domain Name in connection with any bona fide goods or services.
In light of the foregoing, Respondent has not presented sufficient evidence of rights or legitimate interests in the Domain Name to rebut Complainants’ prima facie case to the contrary. The Panel therefore concludes that Complainant has established the second element of the Policy. D. Registered and Used in Bad Faith
The final inquiry is whether Complainants have proven that the Domain Name “has been registered and is being used in bad faith.”
The interpretation of this element has been the subject of recent debate among panels. The consensus view long has been that the conjunctive “and” requires a showing that bad faith exists both at the time of registration and subsequently. See e.g., Mile, Inc. v. Michael Burg,WIPO Case No. D2010-2011. Although a minority of recent decisions have challenged the consensus view and have treated “registration and use in bad faith” as a “unitary concept,” WIPO Overview 2.0, paragraph 3.1, that position has not achieved consensus and thus is not one that this Panel is prepared to follow. Instead, as this Panelist held in Mile, Inc., although there is “value, in appropriate cases, of inferences of original intent based on subsequent conduct,” the Panel is unwilling to adopt a position that would eradicate what is a clearly conjunctive requirement by collapsing “registration” and “use.” Thus, to succeed, Complainants must establish both bad faith registration and bad faith use.
Bad faith use is easy to find on this record. Respondent’s offer to sell the Domain Name for $10,000, and its earlier offers to sell the Domain Name for $4,000 or $5,000, represent a sum vastly in excess of her out-of-pocket costs. Such an offer to sell is a classic indication of bad faith use. See, e.g., Telefonaktiebolaget L.M Ericsson v. iNuntius Inc.,WIPO Case No. 2005-0732; The South African Football Association (SAFA) v. Fairfield Tours (Pty) Ltd.,WIPO Case No. D2009-0998. Because Respondent lacked rights or legitimate interest in the Domain Name, the offer to sell the Domain Name to the trademark owner for a price in excess of the registration fees constitutes bad faith use rather than a good faith effort to sell property properly owned by Respondent.
Furthermore, prior to the time at which Respondent posted a “Coming Soon” placeholder webpage, the Domain Name resolved to a parked website on which travel-related sponsored links appeared. These pay-per-click (“PPC”) links reflect bad faith because the advertisements took advantage of the good will in the 1000 PLACES TO SEE BEFORE YOU DIE trademark. Such advertising links are evidence of bad faith use even if, as Respondent asserted here, a respondent is neither exercising direct control over the content nor directly profiting from it. See WIPO Overview 2.0, paragraph 3.8:
“[A] domain name registrant will normally be deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content - for example, in the case of advertising links appearing on an ‘automatically’ generated basis. To the extent that the presence of certain advertising or links under such arrangement may constitute evidence of bad faith use of the relevant domain name, such presence would usually be attributed to the registrant unless it can show some good faith attempt toward preventing inclusion of advertising or links which profit from trading on third-party trademarks. It may not be necessary for the registrant itself to have profited directly under such arrangement in order to establish bad faith use under paragraph 4(b)(iv) of the UDRP. It would normally be sufficient to show that profit or ‘commercial gain’ was made by a third party, such as by the operator of an advertising revenue arrangement applicable to the registrant, or a domain name parking service used by the registrant.”
Although Respondent states that by displaying the “‘coming soon’ webpage [Respondent] seeks to prevent unauthorized use of the Domain [Name] by third parties,” that fact, even if meaningful, would not cure the bad faith use during the period in which PPC advertisements were displayed, especially since Respondent waited over one year before changing the webpage to the current placeholder webpage. During this time, the Domain Name resolved to PPC links, and Respondent has not established a good faith attempt to prevent such content from appearing. For all these reasons, the Panel finds that Respondent used the Domain Name in bad faith.
A more difficult issue is presented by the question of whether Respondent registered the Domain Name in bad faith. Although Complainants now own a trademark registration in the mark 1,000 PLACES BEFORE YOU DIE, they did not own such rights at the time the Domain Name was registered, and it is not clear whether they owned common law rights at that time. As Respondent properly points out, it is difficult to establish bad faith where a domain name was registered prior to the point at which a complainant established rights in the mark. As the consensus view notes, “when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established, 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.” WIPO Overview 2.0, paragraph 3.1.
Complainants try to avoid this timing problem by arguing that they had developed common law trademark rights by the time of the Domain Name registration. They argue that a successful showing of secondary meaning can suffice to bestow trademark protection upon literary titles, even if it is just a single work, 2 McCarthy on Trademarks and Unfair Competition § 10:2 (4th ed.), and that they did achieve such secondary meaning through post-release publicity and media coverage. In support of that assertion, Complainants submit evidence of the success of the book, including newspaper articles from a wide variety of American newspapers and magazines, the book’s status as a New York Times bestseller (ranking as high as 6th on the list as of December 23, 2003), and sales figures of “approximately 235,000 units at a retail sales price of $19.95” in the four months between publication and registration of the Domain Name.
Although that evidence is impressive, it is not sufficient, on its own, to prove secondary meaning in the title of the book. If it did, virtually every New York Times bestseller would qualify for trademark protection. To be clear, the Panel is not finding that the mark lacked secondary meaning as of January 20, 2004; rather, the Panel is only finding that, on the limited record of this proceeding, Complainant has not proven such rights by a preponderance of the evidence.
Nevertheless, the Panel finds bad faith registration in this case. Despite the general rule that, “when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established, the registration of the domain name would not have been in bad faith,“ panels have found bad faith “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.” WIPO Overview 2.0, paragraph 3.1. For instance, bad faith has been found “where the potential mark in question is the subject of substantial media attention . . . 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.” Id.; see, e.g., General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Town Centre Online,WIPO Case No. D2003-0845. Here, even if Complainants had not yet established common law trademark rights as of the time when the Domain Name was registered, Complainants had achieved notoriety with their book 1000 Places to See Before You Die. Respondent’s registration of a confusingly similar Domain Name four months later appears to have been an effort to take advantage of the notoriety of that title and the likely developing trademark rights, even if Complainants had not yet developed common law trademark rights in the phrase.
Accordingly, the Panel concludes that the Complainants have satisfied their burden of establishing that Respondent registered and used the Domain Name in bad faith. Because of that conclusion, the panel need not determine whether the renewal of the Domain Name as recently as November 21, 2009 also constitutes bad faith. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainants.
In light of this decision, it is unnecessary for the Panel to address Respondent’s claim of Reverse Domain Name Hijacking.
David H. Bernstein
Sole Panelist
Dated: May 3, 2011
1 The Panel notes that the United States is currently in Daylight Savings Time, which, because Greenwich Mean Time is constant and does not adjust to Daylight Savings Time, creates a 4-hour difference between the Eastern Standard and Greenwich Mean Time zones.
2 The Panel notes that there are some inconsistencies in the timeline of events set forth by Complainants. Although they initially cited November 16, 2005 as the date of first contact with Respondent, their supplemental filing, particularly the Upton Affidavit and exhibit thereto, makes clear that they believe the date of first contact was November 16, 2006. That date also is consistent with Respondent’s version of events. The Panel therefore believes that the November 16, 2005 date originally stated by Complainants was a typographical error, and assumes that both parties agree that the date of first contact was in 2006, not 2005.
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