The Complainant is Coolside Limited of Glasgow, Scotland, the United Kingdom of Great Britain and Northern Ireland (the United Kingdom), represented by Burness Paull LLP, United Kingdom.
The Respondent is Get On The Web Limited of Hertfordshire, the United Kingdom represented by John Berryhill, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on February 19, 2016. On February 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 19, 2016, 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 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 25, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 16, 2016. Further to the Respondent’s request, the Response due date has been extended to March 20, 2016. The Response was filed with the Center on March 20, 2016.
On March 9, 2016, the Complainant submitted a supplemental filing.
The Center appointed Ian Lowe, Jon Lang and Richard G. Lyon as panelists in this matter on April 15, 2016. 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.
The Complainant’s supplemental filing comprised further argument as to why the Domain Name could be said to have been registered and used in bad faith. The Rules do not provide any scope for a party to make a supplemental filing, save that the Rules paragraph 12 provides that the Panel may request, in its sole discretion, further statements or documents from either of the Parties. The Panel does not consider that there is any ground on which to admit the supplemental filing and, accordingly, declines to do so, noting that nothing in that filing would alter its decision. 4. Factual Background
The Complainant is a company incorporated in Scotland in 2010. The Complainant commenced trading under the name “trtl” on October 26, 2013 and sells what it claims is a “re-invention of the traditional travel pillow”, marketed as “the trtl pillow”. It has spent USD 17,217.60 and GBP 6,791.55 on advertising the “trtl” product under the TRTL brand since May 1, 2015, mainly focusing on the “.com”, “.” and “.de” Amazon websites.
The Complainant is the proprietor of United Kingdom registered trademark number 3023092 TRTL filed on September 22, 2013, registered in respect of pillows and scarves. It has also applied for registered trademarks in respect of “trtl” in the United States of America and other countries. It operates a website at “www.trtl.”.
The Respondent is a company incorporated in England and Wales on October 6, 1998. It is a web development company. From the late 1990s through to the early part of the 21st century it registered a number of domain names comprising acronyms or initialisms, including the Domain Name which was registered by the Respondent on March 4, 2000. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical to its TRTL trademark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Complainant argues that the Respondent has no rights or legitimate interests in respect of the Domain Name because there is no evidence that the Respondent or any other party has used the Domain Name since it was registered. It further points out that the Respondent has not sold any goods or offered any services using the Domain Name. Furthermore, there are no companies registered in the UK Companies House register with the name “trtl” and, to the Complainant’s knowledge, the Respondent’s business has never been known by the Domain Name and it has never traded under the mark TRTL.
So far as bad faith registration and use is concerned, the Complainant points out that the Respondent registered the Domain Name in March 2000 but has not used the Domain Name, or provided any goods or services under the Domain Name, and is not known by the Domain Name. It complains that the Respondent has sat on the Domain Name since March 2000 and now offers it for sale at an inflated cost. The Complainant relies on the finding in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 that the passive holding of a domain name by a respondent amounted to the respondent acting in bad faith.
The Complainant also alleges that TRTL is a distinctive mark which no other business is trading under. In the circumstances, given also that the Complainant owns the UK registered trademark TRTL and has other pending registrations in respect of that mark, it is likely that the Complainant is the only party who would be interested in purchasing the Domain Name. B. Respondent
The Respondent states that one of its aims in the early days of its operation, in light of the circumstances of the Internet in 1998, was to assist small businesses to obtain visibility on the Internet. Its activities extended to developing acronyms (a number of which are unpronounceable as words and should be more properly described as initialisms) as domain names with a view to building and deriving value from the utility of short domain names.
The Respondent points out that its registration of the Domain Name is many years senior to the adoption by the Complainant of the TRTL mark and submits that it is perfectly entitled to dispose of its legitimately acquired business asset as it sees fit. The Respondent’s use of the Domain Name has had nothing to do with the Complainant’s rights. The Respondent maintains that it has never used the Domain Name for anything to do with pillows and scarves and has not attempted to trade on the Complainant’s junior reputation. It has not attempted to pass itself off as the Complainant and has not used the Domain Name to divert consumers to competitive offerings of pillows or scarves.
In relation to bad faith registration and use, the Respondent points out that the Domain Name was registered more than 10 years before the Complainant came into existence, let alone the date on which the Complainant may have acquired rights in respect of TRTL. The Respondent also submits that there is no evidence either to support a finding in line with those minority findings by UDRP panelists that a targeted changing of use of a domain name in some way creates a retrospective bad faith registration. The Respondent does not accept that its offering the Domain Name for sale can be deemed to indicate that the Domain Name was registered, or is being used, in bad faith. The Respondent has not targeted the Complainant in any way and the Respondent’s general offer to sell the Domain Name is not premised on the Complainant’s mark or directed to any competitor of the Complainant. The Respondent believes, for good reason, that this short “acronymic” domain name has inherent commercial value wholly independent of the Complainant’s junior claim to rights in respect of TRTL. The Respondent is adamant that the Domain Name was for sale from 2009, before the Complainant came into existence, and has been and is still for sale. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(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
Although the Respondent disputes that the pending applications by the Complainant for registered trademarks in respect of TRTL could give rise to relevant rights for the purposes of the Policy, there is no dispute that that the Complainant is the registered proprietor of UK trademark TRTL. Ignoring the gTLD suffix “.com” for this purpose, the Domain Name is identical to the Complainant’s mark. Accordingly, the Panel finds that the Domain Name is identical to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
In light of the Panel’s finding in respect of bad faith registration and use below, there is no need for the Panel to address the issue of whether the Respondent has rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
The Domain Name was registered on March 4, 2000, some 10 years before the Complainant came into existence, and 13 years before the Complainant acquired rights in respect of the mark TRTL and subsequently commenced trading under that name. In those circumstances, it hardly needs stating that the Respondent cannot conceivably have been aware of the existence, or even potential existence, of the Complainant or of any rights it might subsequently acquire in the name TRTL at the time of registration. In this Panel’s view, therefore, the Domain Name cannot conceivably have been registered in bad faith.
A small minority of UDRP panelists has in the past attempted to construe subsequent bad faith use of a domain name as reflecting back to bad faith registration, notwithstanding no evidence of any bad faith actually operating at the date of registration. This Panel does not adhere to that theory. The UDRP policy is clear in requiring that a complainant must show both that the domain name was registered in bad faith and that it is being used in bad faith.
Even those panelists who have advocated such an interpretation of the Policy still require there to be some evidence that the domain name has been used in bad faith in a manner which indicates a change of behaviour or other specific targeting of the complainant and its rights. The Complainant has not brought any coherent evidence even of any such bad faith use in this case.
It follows that the Panel does not find that the Domain Name has been registered and is being used in bad faith. D. Abuse of the Administrative Proceeding
Several circumstances of this case require the Panel to consider whether the filing of the Complaint constitutes “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Rules, paragraph 1, definition of Reverse Domain Name Hijacking (“RDNH”). The Rules, paragraph 15(e), call for this analysis even when the Respondent has not expressly requested a finding of abuse. Timbermate Products Pty Ltd v. Domains by Proxy, LLC / Barry Gork,WIPO Case No. D2013-1603.
Among the reasons cited by UDRP Panels for a finding of RDNH or other abuse are the following, all of which are present in this case:
- The Complainant ignored settled Policy precedent in presenting its case as it does: pre-trademark registration of the disputed domain name (WIPO Overview 2.0, paragraph 3.1, first paragraph, Consensus View); bad faith requires targeting (Policy, paragraph 4(b)(i), the basis for the Complaint); bad faith in registration and use must be separately proven. Orient Express Travel Group Pty Ltd v. Mookstar Media Pty Ltd (ACN 083 167 293), WIPO Case No. DAU2015-0004; GIGS United S.L. v. SIE MANTIC,WIPO Case No. D2014-1689.
- The Complainant has not even tried to explain why ordinary precedent should not apply, which is directly contrary to its undertaking (Complaint paragraph 21, required by Rule 3(b)(xiii)) “that the assertions in this Complaint are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.” Liquid Nutrition Inc. v. / Vertical Axis Inc.,WIPO Case No. D2007-1598.
- The Complainant was told prior to filing that its case was baseless (Response, Annex F) and why, yet proceeded anyway. Coöperatie Univé U.A. v. Ashantiplc Ltd / c/o Domain Name Privacy LLC,WIPO Case No. D2011-0636. In the present case this was particularly inexcusable, as the Respondent pointed out a case involving similar allegations against this same Respondent in which the complaint was summarily denied.
- “Ordinarily if the face of the complaint itself demonstrates a settled reason why the complaint must be denied, a panel may make a finding of RDNH.” Tarheel Take-Out, LLC v. Versimedia, Inc.,WIPO Case No. D2012-1668, citing Liquid Nutrition Inc. v. / Vertical Axis Inc.,supra.
In light of the foregoing, this Panel concludes that “the complainant in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP” – bad faith in registration and use. WIPO Overview 2.0, paragraph 4.17. Accordingly 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.
Ian Lowe
Presiding Panelist
Jon Lang
Panelist
Richard G. Lyon
Panelist
Date: April 26, 2016
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