The Complainant is Poundland Limited of Willenhall, West Midlands, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), internally represented.
The Respondent is D of West New York, New Jersey, United States of America, internally represented. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2012. On the same date, the Complainant filed an amended Complaint with the Center. On May 1, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same date, 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 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 27, 2012. The Response was filed with the Center on May 27, 2012.
On May 28, 2012, the Complainant filed a Supplemental Filing with the Center. On June 1, 2012, the Respondent filed a Supplemental Filing and on the same date the Complainant filed a further Supplemental Filing.
The Center appointed John Swinson as the sole panelist in this matter on June 13, 2012. 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 is Poundland Limited, a company located in the United Kingdom. It is part of a group of companies owned by Poundland Group Holdings Limited. The Complainant owns registered community trade mark number 010127975 for DEALZ (filed July 15, 2011, registered March 30, 2012) (the “Trade Mark”).
The Respondent, D, is located in United States of America. The Disputed Domain Name was created on February 13, 2004 and it was transferred to GoD, LLC in the name of the Respondent on December 27, 2008. 5. Parties’ Contentions A. Complainant
The Complainant makes the following submissions. Identical or Confusingly Similar
The Disputed Domain Name breaches the Community Trade Mark Regulation (207/2009/EC) as:
- it is identical to the Trade Mark and is being applied to goods that are identical with goods covered by the Trade Mark; or
- it is identical with, or similar to, the Trade Mark and is being applied to goods or services that are identical with, or similar to, the goods or services covered by the Trade Mark and as a result, there is a likelihood that the public will be confused; or
- the Trade Mark has a reputation within Europe and the use by the Respondent of the Disputed Domain Name takes unfair advantage of, or is detrimental to, the distinctive character of the Trade Mark.
The website at the Disputed Domain Name has no association with Amazon, even though the Respondent is purporting to advertise goods or services on behalf of Amazon. Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name as:
- the Disputed Domain Name has not been used in connection with a bona fide offering of goods or services;
- the Respondent has not been commonly known by the Disputed Domain Name; and
- the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. Registered and Used in Bad Faith
The Disputed Domain Name has been registered in bad faith for the following reasons:
- its use indicates that it has been registered to prevent the owner of any trade mark containing the word “Dealz” (including the Trade Mark) from reflecting the mark in a corresponding domain name; and
- it has been registered to disrupt the business of any owner of any trade mark containing the word “Dealz” (including the Trade Mark).
The website at the Disputed Domain Name has not been used. B. Respondent
The Respondent makes the following submissions. Identical or Confusingly Similar
It is accepted that the Trade Mark and the Disputed Domain Name are essentially identical. Rights or Legitimate Interests
“Dealz” is slang for deals. The Respondent used the Disputed Domain Name on the “www.d” website to advertise “hot deals and coupons” prior to both the Complainant’s trade mark application and the Complaint.
Common dictionary words and descriptive words are subject to domain name registration on a “first come, first served” basis and this in itself establishes a domain name owner’s legitimate interests.
The Respondent has a contractual relationship with Amazon via Amazon’s “Associates Program”.
It is established that use of a domain name comprised of common dictionary words for the purpose of third party advertising may constitute use in connection with a bona fide offering of goods or services.
The goods sold by the Complainant and the Respondent are not identical/similar, and the Respondent and the Complainant are trading in different countries.
The Respondent is commonly known by the Disputed Domain Name.
The Complainant has provided no evidence that the Respondent is tarnishing its Trade Mark. Registered and Used in Bad Faith
There has been no bad faith registration and use. There has been no evidence provided that the Disputed Domain Name (which is comprised of common dictionary words) was registered or acquired solely for the purpose of profiting from the Complainant’s trade mark rights.
The Disputed Domain Name was registered seven years before the Complainant conceived launching a brand incorporating the Disputed Domain Name. The Respondent acquired the Disputed Domain Name after the previous registrant failed to renew its registration. This has been endorsed as a bona fide practice under the Policy (see Vernons Pools Limited v. Vertical Access, Inc,WIPO Case No. D2003-0041).
At the time of registering the Disputed Domain Name, the Respondent could not have anticipated that the Complainant would register the Trade Mark seven years later. The Complainant has provided no evidence that the Respondent should have known of the existence of the Complainant.
As the Complainant has registered the domain name , the Respondent’s registration of the Disputed Domain Name has not prevented the Complainant from reflecting its mark in a corresponding domain name.
Prior to notification of the Complaint, the Respondent was unaware of the Complainant’s Trade Mark. The Disputed Domain Name was not registered to disrupt the business of a competitor. In any event, the parties are not competitors, and as such, the Respondent is not creating any likelihood of confusion with the Complainant’s business.
Reverse Domain Name Hijacking (“RDNH”)
The Respondent seeks a finding of RDNH on the basis that:
- there is no evidence that the Respondent sought to target the Trade Mark; and
- the Complainant falsely concocted its claim that the Respondent had no connection with Amazon in order to support its Complaint. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The Complainant bears the onus of proving these elements. A. Procedural Matters
The Policy contemplates prompt and efficient resolution of domain name disputes. Accordingly, the Rules and the Supplemental Rules only contemplate the filing of a complaint and a response, with strict time and page limits. There is no explicit provision for additional filings, except for further statements or documents provided in response to a request from a panel. Paragraph 10 of the Rules provides that the Panel is to conduct proceedings “with due expedition” and gives the Panel the power to “determine the admissibility, relevance, materiality and weight of the evidence”. Generally, UDRP panels only accept supplemental filings in exceptional circumstances.
The supplementary submissions that have been provided by the Complainant and the Respondent offer rebuttal arguments on several issues, but do not address the key elements of the Policy that need to be satisfied, or offer evidence that was previously unavailable. Accordingly, the Panel declines to accept the supplementary submissions as part of the record in this proceeding. B. The Three Elements of the Policy – In particular, Registration and Use in Bad Faith
The Panel finds the key issue in the present case is whether the Disputed Domain Name was registered and used in bad faith under paragraph 4(a)(iii) of the Policy. Therefore, the Panel prefers to move directly to addressing that third element of the Policy.
In Mile, Inc. v. Michael Burg,WIPO Case No. D2010-2011 (“Mile”) the Panel stated that “the consensus view since the Policy was implemented in 1999 has been that the conjunctive ‘and’ indicates that there must be bad faith both at the time of registration and subsequently”.
This view has been challenged in some recent decisions, which treated “registration” and “use” as a unified concept (see e.g. City View Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE,WIPO Case No. D2009-0643 (“Mummygold”) and Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions,WIPO Case No. D2009-0786 (“Octogen”)).
The panel in Mile addressed the Mummygold and Octogen approach as follows:
“If a consensus developed that a line of prior decisions had reached the wrong result, and if panels generally adopted a new approach on an issue, this Panel also would be open to considering whether a new approach was appropriate, both substantively under the Policy and in order to promote consistency. However, the Mummygold/Octogen reasoning has not prompted any such consensus; to the contrary, a number of decisions have expressly considered and rejected it. See, e.g., Validas, supra; Eastman Sporto, supra; Torus Insurance Holdings Limited v. Torus Computer Resources,WIPO Case No. D2009-1455; Camon S.p.A. v. Intelli-Pet, LLC,WIPO Case No. D2009-1716; Tata Communications International Pte Ltd (f/k/a VSNL International Pte Ltd) v. Portmedia Inc. / TRUEROOTS.COM c/o Nameview Inc. Whois,WIPO Case No. D2010-0217 (majority opinion); Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470; A. Nattermann & Cie. GmbH and Sanofi-aventis v. Watson Pharmaceuticals, Inc.,WIPO Case No. D2010-0800 (majority opinion). The fact that so many panelists have declined to follow the Mummygold/Octogen approach argues against an emerging consensus to overturn a long-established doctrine and provides yet another reason for this Panel to decline to adopt the Mummygold/Octogen reasoning.”
The Panel endorses the above passage. See also Xbridge Limited v. Marchex Sales, Inc,WIPO Case No. D2010-2069 for additional discussion on these issues. Construction of “registration” as a continuous process would negate the distinction between “registration” and “use” within the Policy. The objective of the Policy was to combat the undue and abusive registration of domain names in “cybersquatting” cases. By definition, registration occurred in bad faith. If it was intended that “registration” and “use” be considered in the alternative, this would have been reflected in the wording of the Policy. For example, dispute resolution policies for other domains (e.g. “.au”, “.uk”, “.eu”) provide that the third element can be satisfied through either bad faith registration or use. The Panel notes that the Complainant did not refer to any of the above prior or similar decisions, or explicitly make the argument that bad faith use alone would satisfy the third element of the Policy.
In the present case, it appears that the Respondent registered the Disputed Domain Name on February 13, 2004. The Complainant did not apply for the Trade Mark until July 15, 2011 and it was registered on March 30, 2012. The Complainant has not claimed any common law trade mark rights.
In these circumstances, the Panel finds that the registration of the Disputed Domain Name (on February 13, 2004) could not have been in bad faith as the Respondent could not have contemplated the Complainant’s then non-existent trade mark rights.
The Panel makes the following additional observations:
- The Complainant submitted that the Disputed Domain Name had been registered “to disrupt the business of any owner of any trade mark containing the word “Dealz””. Even if this was the case, the expressed scope of the Policy is narrower. Although the examples set out in the Policy are not exclusive, the Complainant would generally need to prove the Disputed Domain Name had been registered to disrupt the business of the Complainant specifically.
- While not a dictionary word, “dealz” is a term commonly used in the promotion of goods and services. It is possible that many traders would legitimately use “dealz” in a way that did not infringe the Complainant’s rights. The Panel notes that a domain name registration is on a “first come, first served” basis and more than one trader may have a legitimate interest in using any particular domain name. The purpose of the Policy is not to determine who is the “best” owner of a domain name.
- Even if “registration” and “use” were considered in the alternative, the Panel is of the view that there is insufficient evidence to establish bad faith use in this case. The “warehousing” of a domain name does not in itself constitute bad faith use.
At this point in time, based on the submissions of the parties and the evidence presented, this Panel is not prepared to decide that the Complainant has satisfied the third element of the Policy in so far as the registration of the Disputed Domain Name is concerned. The issue of possible use in bad faith, once the Complainant developed a reputation in its Trade Mark, involves a closer question – but not one that is necessary for the Panel to resolve here given the conjunctive requirement of the Policy.
In light of the above, the Complainant has failed to show that the Disputed Domain Name was registered in bad faith.
As this aspect of the third element of the Policy is not satisfied, the Panel is not required to address the first two elements of the Policy. C. Reverse Domain Name Hijacking
The Respondent requested that the Panel make a declaration of RDNH pursuant to paragraph 15(e) of the Rules. The Rules define RDNH as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”. The onus of proving this is generally on the Respondent.
This is not an appropriate case for such a declaration. Although the Complainant provides little evidentiary support for its allegations, it appears that the Complainant genuinely believes that the Respondent is attempting to profit from a bad faith registration of the Disputed Domain Name. 7. Decision
For all the foregoing reasons, the Complaint is denied.
John Swinson
Sole Panelist
Dated: June 15, 2012
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