The Complainants are Nova Holdings Limited, Nova International Limited, and G.R. Events Limited, of Newcastle upon Tyne, the United Kingdom of Great Britain and Northern Ireland (the "United Kingdom"), represented by Bond Dickinson LLP, the United Kingdom (the "Complainants").
The Respondents are Manheim Equities, Inc. and Product Reports, Inc., of Melville, New York, United States of America (the "United States"), represented by Crowell & Moring, LLP, Belgium (the "Respondents"). 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with eNom (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 6, 2015. On February 6, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 6, 2015, the Registrar 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. The Center sent an email communication to the Complainants on February 11, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on February 16, 2015.
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 Respondents of the Complaint, and the proceedings commenced on February 19, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 11, 2015. Following an extension granted pursuant to paragraph 5(d) of the Rules, the extended due date for Response was March 22, 2015. The Response was filed with the Center on March 22, 2015.
On April 2, 2015, the Complainants submitted a supplemental filing in response to the Response. The Respondents then filed a supplemental filing in response to the Complainants' supplemental filing on April 3, 2015. On April 7 and 8, 2015 a second round of supplemental filings were submitted by the Respondents and then the Complainants, respectively.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on April 8, 2015. 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 Complainants are companies that organise sporting events, namely running, in the United Kingdom. The Complainants own of a series of United Kingdom and European Community word and figurative marks containing the words "great" and "run" (the "Trade Marks"), the earliest of which was registered in the United Kingdom on February 28, 2003.
The Respondents are Manheim Equities, Inc. and Product Reports, Inc., both United States companies. The Disputed Domain Name is currently inactive. 5. Parties' Contentions A. Complainants
The Complainant's contentions can be summarised as follows:
(a) The Complainants rely on their unregistered trade mark rights in the word mark GREAT RUN (the "Unregistered Mark"), which has been used consistently in relation to sporting events since approximately 1981. The Complainants also rely on the Trade Marks which feature the stylised words "great" and "run". The Complainants argue that the Trade Marks and the Unregistered Mark are identical or confusingly similar to the Disputed Domain Name, save for the generic Top Level Domain("gTLD") extension, which should not be taken into account, and that there is a likelihood of confusion on the part of the relevant public.
(b) The Complainants argue that the Respondents have no rights or legitimate interests in the Disputed Domain Name, and that the Respondents have not made any use of, or demonstrated any preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services.
(c) The Complainants contend that the Disputed Domain Name was registered or acquired by the Respondents primarily for the purpose of selling it to a third party for valuable consideration and in order to prevent the Complainants from reflecting their trade marks in a corresponding domain name.
(d) The Complainants contend that the Respondents should have been aware of the Complainants' rights in the Trade Marks and in the Unregistered Mark when they first registered the Disputed Domain Name. Further, the Complainants argue that the fact that the Respondents were put on notice as to the Complainants' rights in the Disputed Domain Name in 2014 shows that the decision to renew the Disputed Domain Name in 2015 is an indication of registration and use of the Disputed Domain Name in bad faith. B. Respondents
The Respondents' contentions can be summarised as follows:
(a) The Respondents do not deny that the Complainants have registered word marks containing the words "great" and "run", and figurative marks in which the combination "great run" is present. However, the Respondents contend that these rights do not prevent the Respondents from registering and using the Disputed Domain Name.
(b) "Great run" is a generic, commonly used, and descriptive term, and can, therefore, be registered and used as a domain name by the Respondents in the absence of circumstances indicating that their aim was to exploit the Trade Marks. Although the Respondents do not currently use the Disputed Domain Name, they intend to do so in the future. Further, the Respondents note that their primary intention for registering the Disputed Domain Name was not in order to sell it. The Complainants have provided no proof that the Respondents' aim in registering the Disputed Domain Name was to exploit the Trade Marks. In fact, this would be impossible as the Disputed Domain Name was registered before the Complainants' Trade Marks were registered.
(c) The Respondents registered the Disputed Domain Name on February 12, 2000. All of the Complainants' Trade Marks were registered at least three years after this date. The Complainants have not provided proof of the existence of rights in the Unregistered Mark before the registration of the Disputed Domain Name. Moreover, even if such prior rights were proven, there is no evidence that the Respondents should have been aware of the Unregistered Mark at the time of registering the Disputed Domain Name.
(d) The Respondents argue that the Complainants have no right to prevent the Respondents from using the term "great run". The descriptive nature of this term is demonstrated by the fact that the Complainants do not hold any trade mark registration for the word mark GREAT RUN alone.
(e) Between August 2014 and April 2015, the Complainants contacted the Respondents to try and purchase the Disputed Domain Name. The Respondents initially had no intention of selling the Disputed Domain Name, but given the Complainants' insistence, the Respondents agreed to discuss a sale. On November 28, 2014 the Complainants contacted the Respondents and threatened to commence UDRP proceedings if their offer of USD 3,000 was not accepted within 7 days. The Respondents contend that this use of UDRP proceedings to attempt to force the Respondents to sell the Disputed Domain Name is clearly an abuse of the UDRP proceedings.
(f) The Complaint was brought in bad faith and constitutes and this amounts to Reverse Domain Name Hijacking. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainants are required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainants have rights; and
(ii) the Respondents have 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 by the Respondents in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainants have rights in respect of the GREAT RUN trade mark on the basis of the word and figurative Trade Marks containing the words "great" and "run" (which are registered in the United Kingdom and European Community since 2003) and that they also have rights in the Unregistered Mark acquired by use in the UK (evidenced by the screenshots taken of the Complainants' website, as annexed to the Complainants' supplemental filing, and online searches carried out by the Panel pursuant to its right to carry out limited independent factual research into matters of public record in coming to a decision, as stated in paragraph 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (Second Edition) ("WIPO Overview 2.0") ).
It is a well-established guideline that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the gTLD extension, in this case ".com", should typically be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).
The Disputed Domain Name incorporates the GREAT RUN mark in its entirety and in terms of both visual aural characteristics, is an identical reproduction of the Unregistered Mark and of at least some of the Trade Marks.
The Panel accordingly finds that the Disputed Domain Name is identical or confusingly similar to both the Trade Marks and the Unregistered Mark in which the Complainants have rights, and that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview 2.0 states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the burden of production shifts to the respondent to show that it has rights or legitimate interests in the disputed domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel notes that there is no evidence to show that the Complainants have granted the Respondents a licence to use the Trade Marks or the Unregistered Mark. The Panel further notes that the Respondents have not provided any evidence to demonstrate that they have become commonly known by the Disputed Domain Name. Accordingly, the Panel is of the view that a prima facie case is established and it is for the Respondents to prove they have rights or legitimate interests in the Disputed Domain Name.
The Panel accepts that the Complainants have not licensed or otherwise authorised the Respondents to use the Trade Marks or the Unregistered Mark. The Panel also notes that there is no evidence, whether put forward by the Respondents or otherwise, that the Respondents have been commonly known by the Disputed Domain Name, and finds that the inactive status of the Disputed Domain Name precludes any argument that the Disputed Domain Name is being used on a noncommercial basis. As such, the Respondents (at least if they wish to bring themselves within one of the express circumstances demonstrating rights or legitimate interests described in paragraph 4(c) of the Policy) need to demonstrate that they acquired rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy, through use of the Disputed Domain Name in connection with a bona fide offering of goods or services.
Although the Respondents' use of the inactive Disputed Domain Name by offering it for sale is not of itself objectionable (Allocation Network GmbH v Steve Gregory,WIPO Case No. D2000-0016), according to Paragraph 4(c)(i) of the Policy, any bona fide offering of goods or services must have taken place before the respondent received notice of the dispute, in order to satisfy Paragraph 4(a)(ii). The Respondents only agreed to discuss the sale of the Disputed Domain Name after notice of the proceedings.
The Respondents claim to have initially registered the Disputed Domain Name for use by their product report business. No evidence of preparations for such a business have been adduced. As such, and in accordance with Groupe Auchan V Eveniy v. Volyk,WIPO Case No. D2014-1968, it cannot be said that the Disputed Domain Name is being used in connection with a bona fide offering of goods or services.
It is widely accepted that where a complainant owns trade mark registrations for a generic or descriptive term that has been incorporated in the disputed domain name, this does not necessarily mean that the disputed domain name should be automatically transferred to the complainant (see National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424; Sweeps Vaccuum & Repair Center, Inc. v. Nett Corp.,WIPO Case No. D2001-0031 and Allocation Network GmbH v. Steve Gregory,WIPO Case No. D2000-0016). Paragraph 2.2 of the WIPO Overview 2.0 sets out factors to be taken into account when determining whether or not a respondent may have rights or legitimate interests in a generic domain name. These factors include the fame of the trade mark in question; whether the respondent has registered other domain names incorporating generic terms; and whether the domain name is used in connection with a purpose relating to its generic meaning.
In this case, the Disputed Domain Name consists of the generic words "great" and "run", which, in combination, remain generic and descriptive, i.e., the words might be used to describe a very enjoyable, a very hard, or a very long run. The Panel notes, however, that the Disputed Domain Name is currently inactive despite the Respondents having indicated that they intend to use the Disputed Domain Name in conjunction with their product report business. However, on the facts before the Panel, it cannot be concluded that the Disputed Domain Name is currently being used for such a descriptive purpose.
Consequently, the Panel finds that the Complainants have satisfied paragraph 4(a)(ii) of the Policy in respect of the Disputed Domain Name and the Respondents have failed to rebut the Complainants' prima facie case that that they lack rights or legitimate interests in respect of the Disputed Domain Name. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainants to establish that the Respondents registered and used the Disputed Domain Name in bad faith.
The Complainants must satisfy the Panel that the Respondents knew or were likely to have known of the Complainants' Trade Marks and/or Unregistered Mark at time of registration of the Disputed Domain Name. As the Trade Marks had not yet been registered at the time of registration of the Disputed Domain Name, the Respondents could not have been aware of them. The Complainants contend that the Unregistered Mark was very well-known at the time the Disputed Domain Name was registered, and had been in use since 1981. The Complainants rely on screenshots from their own website showing a timeline of Great Run events. However, the Panel notes that this evidence does not support the Complainants' contentions that the Unregistered Mark was well-known (merely that it was used), particularly in so far as its fame extended beyond the United Kingdom. None of the Complainants' Great Run events were held outside the United Kingdom before the registration of the Disputed Domain Name and only three Great Run events have been held outside the United Kingdom since that time (Ethiopia: 2001; Ireland: 2003; and Australia: 2008). No Great Run events have ever been held in the United States. Absent such evidence, the Panel is unable to find that the fame of the Unregistered Mark was such that the United States-based Respondents were more likely than not aware, or had knowledge, of the Complainants' mark at the time of registering the Disputed Domain Name.
Further, the words "great" and "run" are generic, whether separate or in combination. Therefore, any use of the term "great run" in the Disputed Domain Name does not in itself act as evidence that the Respondents must have been aware of the Unregistered Mark when the Disputed Domain Name was registered, and therefore that the registration was made in bad faith. The situation may have been different if the term in question was unique or made-up, having no ordinary meaning outside of the Unregistered Mark, or if the Complainants could show that the Unregistered Mark was well-known in the United States or that the Respondents were involved in the same industry as the Complainants – however, none of these scenarios apply here.
The Panel now turns to the email correspondence between the parties preceding the filing of this Complaint in which the Respondents suggested they would sell the Disputed Domain Name to the Complainants for substantial consideration. This correspondence needs to be viewed in context. The Respondents only took part in this correspondence after the Complainants had made several approaches seeking to acquire the Disputed Domain Name, without initially suggesting they had rights entitling them to acquire the Disputed Domain Name, or to prevent the Respondents from using it. The Complainants' initial approach was essentially an anonymous enquiry (the email from a Nova International account on August 21, 2014, for example, had no reference to the Great Run events, other than a link in the signature strip to (the Complainants' domain name)). Even when the sender was properly identified, the Complainants did not seek to suggest they had any relevant rights. In the email of September 4, 2014 the Complainants stated "Hi, I work for Nova International who organise the Great Run Series in the UK. We are just reviewing our domain names and see that you currently own the URL. We would like to discuss buying this from you to make sure we cover the full batch of domain variances (.org, ., etc). Please let me know your thoughts. Thanks".
Eventually the Respondents acceded to the Complainants' requests and agreed to discuss a price for selling the Disputed Domain Name. The fact that the price was high does not in itself amount to use in bad faith. The Panel can readily infer that value in the Disputed Domain Name arises from its highly generic nature and the fact it would be an attractive name for many businesses to use in relation to many different services (taking into account that "run" could be suggestive of, or associated with, a number of businesses relating to sports, leadership, or management consultancy, to name just a few), see Egton Medical Information Systems Limited v Eric Strikowski/ Helath Axis Group LLC, Shilen Patel,WIPO Case No. D2014-0384.
The Panel accordingly finds that the Complainants have failed to discharge the burden of proving that the Respondents registered and used the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has not been satisfied. D. Reverse Domain Name Hijacking
The Respondents request a finding of Reverse Domain Name Hijacking. Reverse Domain Name Hijacking is defined under the Rules as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name". Paragraph 15(e) of the Rules 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".
The onus is on the Respondents to prove that the Complainants filed their Complaint in bad faith for the purposes of Reverse Domain Name Hijacking, and mere lack of success of the Complaint is not in itself sufficient for a finding of Reverse Domain Name Hijacking.
In this case, the evidence presented by the parties demonstrates conclusively that the Disputed Domain Name could not have been registered in bad faith by the Respondents. On the contrary, there are several indications that the Complainants were acting in bad faith, as follows:
(i) The Panel notes that the Complainants used the Unregistered Mark in their own domain name, , which was registered in 2002. It is the Panel's opinion that the Disputed Domain Name is likely to have been the first domain name the Complainants would have wished to register and the fact that they chose is simply because someone else had gotten there first and obtained the ".com" domain name they wanted. It appears to the Panel that the Complainants' business is not typical of one which would seek a ".org" domain name. This extension is usually reserved for noncommercial organisations. It seems likely that the Complainants wanted to acquire a ".com" domain name, but settled for the next best thing, a domain name. This raises the question as to why they did not seek to recover the Disputed Domain Name at the time they registered . The Panel infers that most likely, the Complainants knew or had been advised that they did not have enough goodwill in the Unregistered Mark at the time, or that it was clear that, at most, such goodwill was restricted to the United Kingdom, and given the generic nature of the Disputed Domain Name, they would not be able to overcome a bona fide registration of a domain name consisting of generic or descriptive terms.
(ii) There is lack of evidence to show that the Complainant or its Unregistered Mark has had a strong reputation or has enjoyed worldwide fame since its alleged inception in 1981, or even since the date of the registration of the Disputed Domain Name.
(iii) In light of the correspondence between the Complainants and the Respondents, occurring both before and after the filing of this Complaint, it is clear that the present proceeding was commenced in an attempt to pressure the Respondents into releasing a legitimately held domain name consisting of descriptive terms that was acquired without the Respondents having any likelihood of knowing of the existence of the Unregistered Mark given the limited geographical area in which the Complainants operated at the time.
The Panel, therefore, finds that the Complaint was made in bad faith as an attempt at Reverse Domain Name Hijacking, constituting an abuse of this administrative proceeding.
7. Decision
For the foregoing reasons, the Complaint is denied and the Panel finds that the Complainants engaged in Reverse Domain Name Hijacking.
Gabriela Kennedy
Sole Panelist
Date: April 23, 2015
Full & Egal Universal Law Academy