The Complainant is MYUNiDAYS Limited of Nottingham, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Actons Solicitors, United Kingdom.
The Respondent is Ashantiplc Ltd of Hong Kong, China / Customer _102764977 of Newark, Delaware, 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 (the “Domain Name”) is registered with Backslap Domains, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2013. On November 1, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 1, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 4, 2013, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 14, 2013.
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 November 20, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 10, 2013. The Response was filed with the Center on December 10, 2013
The Center appointed Nicholas Smith, Nick J. Gardner and Alan L. Limbury as panelists in this matter on January 9, 2014. 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.
On January 9, 2014, the Complainant filed a supplemental filing. The filing consisted of a corporate document produced by the Complainant that provided an overview of the Complainant’s business. The filing was forwarded to each member of the Panel who has viewed the document. The Panel has chosen in accordance with paragraphs 10 and 12 of the Rules not to admit this document on the grounds of relevance and also because it could have been filed with the original Complaint. In any event the Panel notes that, had the document been admitted, the substantive outcome of these proceedings would not have changed. 4. Factual Background
The Complainant is a United Kingdom company that offers a wide range of student discount products, both in the United Kingdom and internationally. It was established in March 2011 and maintains a website at “www.my”.
The Complainant owns three registered trade marks that contain the word “Unidays” including a United Kingdom trade mark registration for the word mark “UNiDAYS” (the “UNIDAYS Mark”), registration number 2635936, which was applied for on September 25, 2012 and registered on February 1, 2013. The UNIDAYS Mark is registered for goods and services in classes 9, 16, 35, 36, 38 and 43 including printed vouchers, issuing tokens, coupons and vouchers of value and compiling information about loyalty and promotional schemes into computer databases.
The Domain Name was created on January 21, 2005, with the Respondent having been the registrant since 2007. It currently resolves to a website (the “Respondent's Website”) that contains a number of links to various third party sites, including sites for finance-related topics including debt consolidation. The Respondent’s Website also contains the statement “This Domain is not for sale unless you know us”. The Respondent admits that the Respondent has used the Domain Name for paid advertising services. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s UNIDAYS Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the UNIDAYS Mark having registered the UNIDAYS Mark and has used the UNIDAYS Mark consistently since March 4, 2011.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. Since the registration of the Domain Name, the Domain Name has always been used to divert Internet traffic to a third party website. The Respondent has also consistently tried to sell the Domain Name, including by advertising on the Respondent’s Website. The Complainant has made a number of offers to purchase the Domain Name and they have been rejected by the Respondent with the Respondent making significantly higher counter-offers. By reason of those facts the Respondent holds no rights or legitimate interests in the Domain Name.
The Domain Name was registered and is being used in bad faith. Notwithstanding the incorporation of the Complainant subsequent to the registration of the Domain Name, the Respondent registered and used the Domain Name in bad faith because, since registration the Respondent has consistently offered the Domain Name for sale, and because since registration the Respondent has redirected the Domain Name to a website that has no connection with universities. This conduct amounts to registration and use of the Domain Name in bad faith. B. Respondent
The Complainant has not proven that the Domain Name was registered and used in bad faith because the Domain Name was registered in 2005, with the Respondent becoming registrant in 2007. Neither the Complainant, nor its trade mark, existed prior to 2011.
The Complainant has provided evidence of its trade mark registration for the UNIDAYS Mark but has provided no information about what sort of business the Complainant conducts or what goodwill it has in the UNIDAYS Mark.
The Respondent has rights and legitimate interests in the Domain Name by reason of the fact that the Respondent registered the Domain Name prior to the Complainant having any rights in the UNIDAYS Mark. The fact that the Respondent has used the Domain Name for paid advertising services does not result in the Respondent lacking rights and legitimate interests when the Respondent has been using the Domain Name for that purpose since before the Complainant had any rights in the UNIDAYS Mark. Absent some legal impediment, of which the Complainant has advanced none, the Respondent was entitled to register the Domain Name in 2007 and use the Domain Name since then. Accordingly the Complainant has failed to show the Respondent lacks rights or legitimate interests.
The evidence in this case is that the Respondent has held the Domain Name prior to the Complainant’s existence (2011). The Domain Name could not have been registered and used in bad faith.
Persons associated with the Complainant, prior to its incorporation, made an offer to purchase the Domain Name from the Respondent. The fact that this offer was rejected and a counter offer made does not show registration or use in bad faith. In 2012, prior to its application to register the UNIDAYS Mark, the Complainant made a second offer to purchase the Domain Name, which was also rejected. By reason of the Complainant’s awareness that the Respondent registered the Domain Name prior to the Complainant’s existence, not only should the Complaint fail, but this is a case where a finding of Reverse Domain Name Hijacking is appropriate. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:
(i) The 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
(iii) The Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the UNIDAYS Mark, having registrations for UNIDAYS as a trade mark in the United Kingdom. As the “.com” gTLD may be discarded in considering the identity or confusing similarity between a domain name and a mark, the Domain Name is identical to the UNIDAYS Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
The Panel notes that the system of domain name registration is, in general terms, a “first come, first served system” and, absent pre-existing rights which may be applicable to impugn a registration, the first person in time to register a domain name would normally be entitled to use the domain name for any legitimate purpose it wishes. There is no evidence at all before the Panel to suggest that at the time the Domain Name was first registered, in 2005, or when the Respondent acquired it in 2007, any rights existed which might impugn the registration. Specifically the Complainant did not exist. Accordingly there is no material before the Panel which would lead to a conclusion that the Respondent lacks a right or legitimate interest in the Domain Name. However the Panel has been provided with virtually no information about the Respondent or the nature of its business or why it chose to acquire the Domain Name. Given the Panel’s finding that the Respondent has not registered and used the Domain Name in bad faith (see below), the Panel concludes that in these circumstances it is not necessary to make a finding under this element of the Policy. C. Registered and Used in Bad Faith
The Policy, paragraph 4(b) provides that for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owners of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
The Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line 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. (Policy, paragraph 4(b))
The Domain Name was registered in 2005, with the Respondent taking possession of the Domain Name in 2007. The Complainant was incorporated on March 4, 2011 and the UNIDAYS Mark was registered on February 1, 2013. Even taking the Complainant’s evidence at its highest, there is no possibility that the Respondent, when it acquired the Domain Name in 2007, could have been aware of the Complainant or its rights in the UNIDAYS Mark: The Complainant simply did not exist. For this reason, the Domain Name was not registered in bad faith.
The Complainant has argued that bad faith registration and use can be found by the fact that the Respondent’s Website redirects to what appears to be a pay-per-click webpage, and that the Respondent is seeking to sell the Domain Name and received offers from the Complainant, rejected them and made significantly higher counter-offers. These arguments are unpersuasive to this Panel.
Paragraph 4(b)(i) of the Policy specifically refers to the Respondent acquiring the Domain Name primarily for the purpose of selling the Domain Name to the Complainant or a competitor of the Complainant for valuable consideration. The Complainant fails to explain how the Respondent could acquire the Domain Name for this purpose when the Complainant did not exist at the time of the acquisition and would not exist for another four years. The mere fact that the Respondent has chosen to sell the Domain Name for valuable consideration is not by itself evidence that the Respondent acquired the Domain Name for the purpose of selling the Domain Name to the Complainant or a competitor of the Complainant for valuable consideration.
Paragraph 4(b)(iv) of the Policy requires a finding that the Respondent is using or has used the Domain Name intentionally to attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark. In the present proceeding the evidence before the Panel suggests that the Respondent has used the Domain Name for monetisation purposes for 6 years. There is no evidence that the Respondent has done so by creating a likelihood of confusion with the UNIDAYS Mark. Not only does the Respondent’s Website make no reference to the Complainant or its area of business, it would have been literally impossible for the Respondent to do have had any such intent in the period of time after the Respondent acquired the Domain Name prior to the Complainant’s incorporation.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), states in response to the question “Can bad faith be found if the disputed domain name was registered before the trademark was registered or before unregistered trademark rights were acquired?” that:
“Consensus view: Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date [see further paragraph 1.4 above], when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), 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.”
While there have been cases where bad faith has been found when the registration took place prior to the acquisition of trade mark rights, such cases involve situations where, at the time of registration 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. This is not such a matter. The Complainant did not exist at the time the Respondent acquired the Domain Name. The Panel finds that the Respondent has not registered and used the Domain Name in bad faith. D. Reverse Domain Name Hijacking
Paragraph 15(e) of the Policy provides that if after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
In Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing,WIPO Case No. D2005-0309, the majority of the three-member panel noted that the onus of proving that a complainant has acted in bad faith is on the Respondent, and that mere lack of success of the complaint is not of itself sufficient to constitute reverse domain name hijacking. The majority in Jazeera went on to note that:
“Allegations of reverse domain name hijacking have been upheld in circumstances where a respondent's use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy (see Goldline International, Inc v. Gold Line,WIPO Case No. D2000-1151). See also Deutsche Welle v. DiamondWare Limited,WIPO Case No. D2000-1202, where an allegation of reverse domain name hijacking was upheld in circumstances where the complainant knew that the respondent used the at-issue domain name as part of a bona fide business, and where the registration date of the at-issue domain name preceded the dates of the complainant's relevant trademark registrations.”
The three-member panel in Yell Limited v. Ultimate Search,WIPO Case No. D2005-0091 noted that whether a complainant should have appreciated at the outset that its complaint could not succeed, will often be an important consideration.
In the view of the Panel this is a Complaint which should never have been launched. The Complainant knew that the Domain Name was registered nearly 6 years before the Complainant came into existence, let alone when it acquired any rights in the UNIDAYS Mark. It made two offers to purchase the Domain Name, and following the rejection of those offers and the registration of the UNIDAYS Mark, chose to bring this Complaint.
No attempt was made to demonstrate the existence of any earlier rights or to address the issue arising from the disparity in dates. The disparity was mentioned in passing in the context of a submission that the actions of the Respondent, in offering the Domain Name for sale and in failing to use the Domain Name (which was incorrect, the Domain Name pointed to a pay-per-click webpage), somehow resulted in the Respondent registering and using the Domain Name in bad faith. Given the nature of the Policy and previously decided cases on this issue, this was an argument that had no reasonable prospects of success. The Complainant, which is legally represented, should have appreciated that it was commencing a proceeding that had no reasonable prospect of success.
The Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. 7. Decision
For the foregoing reasons, the Complaint is denied.
Nicholas Smith
Presiding Panelist
Nick J. Gardner
Panelist
Alan L. Limbury
Panelist
Date: January 21, 2014
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