The Complainant is Trumpington Investments Limited, United Kingdom, represented by Nash Matthews LLP, United Kingdom.
The Respondent is Edward Shelton, United Kingdom, represented by Stobbs IP Limited, United Kingdom. 2. The Domain Names and Registrar
The disputed domain name , , , , , and are registered with 1&1 IONOS Inc. (the “Registrar”). In this Decision, these domain names are referred to collectively as the “Disputed Domain Names” and is referred to as the “Original Disputed Domain Name” and the remaining Disputed Domain Names are referred to as the “Other Disputed Domain Names”. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2019. On April 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On April 29, 2019, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 1, 2019.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 29, 2019. On May 24, 2019, the Respondent requested an automatic four-day Response extension pursuant to paragraph 5(b) of the Rules. The Response was filed with the Center on June 2, 2019.
On June 7, 2019, the Center received an email communication from the Complainant. On June 10, 2019, the Complainant submitted a supplemental filing. On June 18, 2019, the Center received a supplemental filing from the Respondent.
The Center appointed Nick J. Gardner as the sole panelist in this matter on June 18, 2019. 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
This Complaint involves a dispute with a long history and where the Panel has been provided with a substantial quantity of evidence. Some important facts are in dispute. The Panel considers the following to be the main points of relevance in terms of the factual background.
The Complainant is a company which has since at least 1998 owned a seventeenth century mansion property near Cambridge in England named Anstey Hall. It has since around 2000 (this date may be in dispute) operated that property as a business initially offering “bed and breakfast” accommodation and then subsequently operating as a wedding venue and providing corporate hospitality facilities.
The Respondent at one stage resided in a caravan/mobile home on or near the grounds of the Anstey Hall property (its precise location is in dispute – see below). In return for being allowed to live in this location, he provided various services to the Complainant. These included services assisting the Complainant with technology. In the course of providing these services, he registered the Original Disputed Domain Name on October 22, 2002. The Original Disputed Domain Name has been administered by the Respondent and has always been linked to a website operated by or on behalf of the Complainant, which promotes its business. The Complainant has used the Original Disputed Domain Name for email communication. The Respondent also uses the Original Disputed Domain Name for his own email address.
In 2015 or 2016, the Complainant and the Respondent fell out with each other. The Respondent, who by this date was living elsewhere, was asked to move his mobile home. The Complainant requested transfer of the Original Disputed Domain Name. This did not happen and at various dates during 2016 the Respondent registered the Other Disputed Domain Names. Since this time there has been correspondence passing between firms of solicitors representing the Complainant and the Respondent. The Original Disputed Domain name remains linked to the Complainant’s website. The Other Disputed Domain Names resolve to pay-per-click (“PPC”) linking pages, which the Panel infers are automatically generated by the Registrar. 5. Parties’ Contentions A. Complainant
The Complainant says that it has unregistered trademark rights in the name “Anstey Hall” by virtue of its business activities and the significant reputation it has developed as a wedding venue and for corporate hospitality events. It also says that it is a geographical term in which it has rights and that it also has rights by virtue of its ownership of the property of that name.
It says that the Original Disputed Domain Name is identical to its trademark and that the Other Disputed Domain Names are either identical or confusingly similar to its trademark.
The Complainant says that the Respondent has no rights or legitimate interests in the term “Anstey Hall”. It disputes the Respondent has ever lived on the property, saying his mobile home was located on an adjoining property called Anstey Hall Farm and says nothing else gives the Respondent any rights or interest. It says that the claims made in correspondence by the Respondent based on his residence in a mobile home at Anstey Hall are “risible” because:
(i) the mobile home was in the grounds of Anstey Hall Farm, not Anstey Hall. Insofar as any legitimate interest could arise (which is in any event denied), this would only extend to the domain name , not .
(ii) the selection of as a domain name, in preference to , shows the Respondent clearly had in mind the Complainant's business at Anstey Hall; either because the Respondent was acting on behalf of the Complainant or because the Respondent was acting in bad faith and seeking to take advantage of the Complainant.
(iii) the location of a mobile home in Anstey Hall Farm could not, in any event, give rise to a legitimate interest in the domain name (and far less ); consider the analogous example of a long-term resident at a caravan park or the like – the mere fact of their residing at the caravan park could not possibly entitle them to a legitimate interest in a domain name consisting of the name of the caravan park. Such an interest would reside solely with the owner of the caravan park.
The Complainant contends that the Original Disputed Domain Name was registered by the Respondent in bad faith. It says that it permitted the Respondent who was at the time an “impecunious student” to live in his mobile home in the grounds of Anstey Hall Farm without charge in return for various ad hoc services.
It says “[a]mong these were [sic] tasks were the establishment of a domain name featuring the name Anstey Hall. It was implicit and understood that the domain name was registered by the Respondent on behalf of the Complainant”. It says that “[i[t was the Complainant's understanding that the domain name was being registered by the Respondent on behalf of the Complainant, since the Complainant, not the Respondent, owned Anstey Hall, and was running a hotel business at Anstey Hall. The Respondent was fully aware of this, living adjacent to Anstey Hall and performing tasks on behalf of the Complainant. It was inconceivable that the Respondent could have any legitimate interest in the domain name. To the extent therefore that the Respondent intended the domain name to be owned other than on behalf of the Complainant, the domain name was clearly registered in bad faith.
The Complainant has repeatedly requested the Respondent to transfer ownership of the domain names to the Complainant, and offered to reimburse the Respondent for documented out of pocket expenses, but the Respondent has refused to do so. That the Respondent was motivated by bad faith is emphasised by the Respondent's subsequent acts”.
The Complainant identifies the Respondent’s registration of the Other Disputed Domain Names in 2016 as evidence of the Respondent’s bad faith (together with various other domain names which include the words “anstey hall” but which are not the subject of the present complaint). It says:
“It is noted that, by January 2016, the Respondent had vacated the mobile home/trailer at Anstey Hall Farm, so the Respondent no longer had any residential connection, no matter how tenuous, with Anstey Hall Farm, nor with Anstey Hall. It follows that there is no possible "residential" justification for registration of these domain names by the Respondent. The same observation arises in respect of domain names including the word "hotel" or "weddings" which domain names cannot be argued to be "residential" and which include services which the Respondent had no bona fide intent (or capability) of providing.
Such a pattern of behaviour is a strong prima face indication of abuse and bad faith.
The Respondent clearly knew full well that, the Complainant owned rights in the name Anstey Hall but proceeded anyway to register these domain names.
The Respondent has, apparently, so far held the domain names in a passive manner without actively creating disruptive website content. However, it is established that such "passive holding" or nonuse of a domain name can still be sufficient to support a finding or had faith (see WIPO Overview 3.0. Section 3.3 and decisions quoted therein,WIPO Case No. D2000-0003,WIPO Case No. D2000-0574,WIPO Case No. D2002-0131 andWIPO Case No. D2007-1903).
Factors that have been considered relevant in applying the passive bolding doctrine and which apply in the present circumstances, include: (1) the degree of distinctiveness of reputation of the complainant's mark, (ii) the failure of the respondent to provide any evidence of actual or contemplated good-faith use, and (iii) the implausibility of any good faith use to which the domain name may be put. It is submitted that these factors all weigh in favour of the Complainant.
The domain names represent a valuable part of the business, thanks to the hard work and efforts of the Complainant in running and promoting the business and generating goodwill. A large part of the reservations and bookings for the hotel are made via email, and the business cannot realistically be sold separately from its domain names. By refusing to transfer the domain name registrations to the Complainant, the Respondent is effectively holding the Complainant to ransom. Moreover, at any moment, the Respondent could easily cause severe disruption to the Complainant business by blocking or diverting email or sabotaging the website in any way, selling the domain names to a competitor, or merely by threatening to do so”. B. Respondent
The Response only deals with the Original Disputed Domain Name. It says “other related domain names listed in the Complainants’ documentation under section heading III: The Domain Names and Registrar are not in dispute, since the Respondent has invited the Complainant to take ownership of them. However, the Complainant has shown no interest in owning these other domains”.
The Respondent denies that the Complainant has any trademark rights. It says the name Anstey Hall is a common house name and the Complainant has without foresight chosen to use a name for its business that is the same name as the house that it owns, and which is also identical and confusingly similar to other house names and another hotel business in the United Kingdom. It identifies four other properties with the same name, one of which is a hotel near Coventry. It says the name Anstey is both a common place name and a common surname. It also says the Complainant’s business did not start until 2006 and it cannot have had any rights at the time the Original Disputed Domain Name was registered.
The Respondent says he lived in the grounds of Anstey Hall (the Complainant’s property) at the time he registered the Original Disputed Domain Name in 2002. This was not as a tenant with terms of contract, but as an occupier with unconditional permission from the owner and legitimate reason to be there. He says the Complainant has provided no evidence to counter this assertion. Therefore, the Respondent had both a legitimate reason and right to register the Original Disputed Domain Name in the first place.
The Respondent says he has continued to make noncommercial use of the domain email address “[name]@” from 2002 until the present time. He says he has also allowed the Complainant to make fair commercial and noncommercial use of the Original Disputed Domain Name. The Respondent has facilitated this use by the Complainant in good faith. He says he has also allowed others with a family or friendship connection to the Respondent or the Complainant to make fair noncommercial use of email addresses associated with the Original Disputed Domain Name.
The Respondent says the Original Disputed Domain Name was registered in 2002 for the Respondent’s personal email and web use. The Respondent had no knowledge of Complainant’s long-term commercial plans for Anstey Hall at the time of registration, and there was no reason that the Respondent should have known, given the distant relationship between the Respondent and Complainant at that time. The Respondent says that the Complainant has offered no evidence which opposes this assertion.
The Respondent says he has owned, used and paid for the Original Disputed Domain Name in good faith for the past 17 years. He says he has also allowed the Complainant to make fair use of the Original Disputed Domain Name without hindrance or disruption from 2006 through to the present time. He says that between 2006 and 2013 the Respondent was entirely responsible for creating and running a website for the Complainant’s business as well as providing IT equipment and support to the Complainant. This was done without reimbursement for time or expenditure from the Complainant during a time when the Complainant was in dire financial difficulty. The Respondent says that in 2013 he pointed the Original Disputed Domain Name to the Complainant’s own website when the Complainant achieved financial stability and requested this redirection. The Respondent has facilitated all reasonable requests from the Complainant and continues to support the Complainant’s reasonable business and personal needs and is prepared to continue to do so for the foreseeable future, if necessary without reward, until a long-term solution to domain ownership and shared use can be found. At no time has the Respondent acted in a way that has been detrimental to the Complainant’s business or personal needs.
The Respondent says he has at all times acted in the best interests of the Complainant and others that make use of the domain. The Respondent has ensured fair use of the domain for the benefit of those with an interest in it. The Respondent has done this in good faith, and continues to do so in good faith. The Respondent says he makes no money from this arrangement and does not benefit from any sponsorship, affiliation or endorsement, or indeed take any other commercial benefit in relation to the use or ownership of the Original Disputed Domain Name.
The Respondent says that in contrast, the Complaint has acted in bad faith. He says that since 2013 the Complainant has abused the implied terms of the arrangement, by incurring additional costs for the Respondent on extra email-related services with the domain service provider, but without prior consultation with the Respondent and without offer of fair reimbursement. The Respondent says that in 2015 the Complainant stated that its intention was to gain control of the Original Disputed Domain Name and remove all domain uses except for its own. Since this time the Complainant has repeatedly challenged the Respondent’s ownership of the domains, which has caused time and costs to be incurred by the Respondent in defending his legitimate ownership position. Further to this, the Complainant has attempted to coerce the Respondent and the Respondent’s service provider into handing over the administrative access passcode for the domain account, and has made bullying threats to the Respondent that amount to an attempt at Reverse Domain Name Hijacking.
The Respondent says the matter has been in the hands of solicitors on both sides since 2017. For the past two years, the Respondent’s solicitors have been attempting to negotiate a settlement deal with the Complainant over this matter, in order to achieve a fair separation of their affairs. The Respondent’s intention is to ensure that reasonable incurred costs are reimbursed by the Complainant in exchange for ownership of all or most of the domains, and with agreed final settlement terms and continued use agreements formally put in place to protect all parties. But the Complainant has stated that it is not prepared to make any compromise and has walked away from the negotiations in favour of seeking to circumvent its obligations and debt liabilities through WIPO UDRP resolution.
The Respondent concludes its Response by asking that the negotiation process be allowed to continue, so that “the situation can be assessed in its entirety, with the aim of achieving a holistic solution that is fair to everyone involved and has a lasting positive outcome”. He says that “no remedial action is sought by the Respondent from WIPO. Instead, this is a complex case that the Respondent believes should be negotiated in fine detail between solicitors in order to achieve a fair and sustainable outcome”. 6. Discussion and Findings
Procedural Matters – Suspension of proceedings
It appears to the Panel that the Respondent is suggesting the present complaint should be suspended to allow the parties to seek a negotiated solution. If so the Panel declines to do so. There is no evidence the Complainant wishes to adopt this approach (indeed the evidence suggests the contrary is the case) and the Parties have in any event been corresponding via solicitors for two years without reaching agreement. The Panel considers in these circumstances it is required to determine the Complaint in accordance with the Policy and the Rules.
Procedural Matters – Admission of supplemental statements
The Panel declines to admit the supplemental filings each party has provided. In large measure, they involve detailed matters of evidence that the Panel is unlikely to be able to resolve within the framework of the Policy – for example consideration of (disputed) aerial photographs as to the precise location of the Respondent’s caravan. In addition, the material in these statements largely repeats arguments already contained in the Complaint or the Response and to the extent they introduce additional material, that seems to the Panel to be material which could have been included in the original Complaint or Response. In any event, nothing in these statements would alter the Panel’s analysis.
Procedural Matters - Consent to Transfer the Other Disputed Domain Names
As set out above the Response records that the Respondent consents to the transfer of the Other Disputed Domain Names.
The Panel therefore in relation to these domains adopts the approach set out in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.10 as follows:
“Where parties to a UDRP proceeding have not been able to settle their dispute prior to the issuance of a panel decision using the ‘standard settlement process’ described above, but where the respondent has nevertheless given its consent on the record to the transfer (or cancellation) remedy sought by the complainant, many panels will order the requested remedy solely on the basis of such consent. In such cases, the panel gives effect to an understood party agreement as to the disposition of their case (whether by virtue of deemed admission, or on a no-fault basis)”.
See for example Infonxx.Inc v. Lou Kerner, WildS,WIPO Case No. D2008-0434, where the Panel stated as follows:
“However, this Panel considers that a genuine unilateral consent to transfer by the Respondent provides a basis for an order for transfer without consideration of the paragraph 4(a) elements. As was noted by the Panel in The Cartoon Network LP, LLLP v. Mike Morgan,WIPO Case No. D2005-1132, when the Complainant seeks the transfer of the disputed domain name, and the Respondent consents to transfer, the Panel may proceed immediately to make an order for transfer pursuant to paragraph 10 of the Rules. Accordingly, and in light of the parties’ stipulations set forth above, the Panel will order the transfer of the disputed domain name to the Complainant. This is clearly the most expeditious course. Id.; Williams‑Sonoma, Inc. v. EZ Port,WIPO Case No. D2000-0207”.
Applying these principles to this case, the Panel considers it appropriate to order that the Other Disputed Domain Names be transferred to the Complainant. The Panel does not therefore consider it necessary to consider the Other Disputed Domain Names in its analysis below, save to the extent that their registration may be relevant to issues as to the Original Disputed Domain Name.
Substantive Matters
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with 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 Disputed Domain Name;
(iii) the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant says it has unregistered rights in the ANSTEY HALL trademark. The Respondent disputes this.
The Panel agrees with the approach in WIPO Overview 3.0 concerning this issue at section 1.3:
“ What does a complainant need to show to successfully assert unregistered or common law trademark rights?
To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.
(Particularly with regard to brands acquiring relatively rapid recognition due to a significant Internet presence, panels have also been considering factors such as the type and scope of market activities and the nature of the complainant’s goods and/or services.)
Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning”.
Evidence provided by the Complainant shows a business with a turnover of over GBP 900,000 in 2017 and the website linked to the Original Disputed Domain Name shows what appears to be a substantial business involving the provision of wedding and corporate hospitality events at an attractive and impressive English manor house. The word “Anstey” is a surname and there are several villages of that name in England but the Panel considers the Complaint’s evidence establishes it has unregistered rights in the term “Anstey Hall” in relation to the provision of wedding and corporate hospitality facilities. It does not in the Panel’s opinion matter that there are other properties in England also called Anstey Hall including another hotel near Coventry of that name. It is a well-established principle in English law that goodwill arising on a local basis may in appropriate circumstances be sufficient to support a claim in the tort of passing off. It appears quite clear to the Panel that were a third party to attempt to trade in the Cambridge area as a wedding venue under the name Anstey Hall such an action would be possible. Accordingly, the Panel is satisfied that the Complainant’s use is sufficient to have established unregistered trademark rights in the term “Anstey Hall”.
In view of the Panel’s finding the Panel does not need to consider the Complainant’s alternative case that it also has geographic or property rights in the term “Anstey Hall”.
The Panel finds Original Disputed Domain Name is identical to the ANSTEY HALL trademark. The omission of the space between the two words is a trivial difference and in any event a space cannot be present in a domain name for technical reasons.
It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the determination of identity or confusingly similarity. See, for example, Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
Accordingly, the Panel finds that the Original Disputed Domain Name is identical to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the 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.
As the Panel understands it, the Respondent says paragraph 4(c)(iii) applies. He also says more generally he has a legitimate interest as he chose the Original Disputed Domain name when he was a resident in the grounds of Anstey Hall and he had no knowledge of any plans the Complainant had to develop any sort of a business using those premises nor was any business at that time being conducted there.
The Original Disputed Domain Name was registered on October 22, 2002. The filed evidence establishes that well before this date (with effect from 1998) discussions by the Complainant with architects, neighbours and planning authorities had taken place concerning the change of use of the property to a hotel. Exactly when the Complainant started trading is unclear although the Complainant says that the first paying guest stayed at Anstey Hall in January 1999 – but no contemporaneous evidence of this is provided.
The Panel considers the procedures under the Policy are generally not suitable for resolving this type of issue, where disputed questions of fact arise as to matters that took place up to 20 years ago and where discovery, oral evidence and cross examination would all assist in reaching a fair conclusion. In view of the Panel’s finding as to bad faith (see below) the Panel does not consider it necessary to reach a finding on this issue. C. Registered and Used in Bad Faith
It is well established that the requirements set out in paragraph 4(a)(iii) of the Policy are conjunctive. For present purposes, the Panel considers the first hurdle the Complainant has to overcome is in showing that the registration of the Original Disputed Domain Name was in bad faith. The Respondent denies this and says that he registered the name because that was the name of the place he was living (in a mobile home in the grounds of the estate) and he had no knowledge of the Complainant’s business plans to develop a hotel business at Anstey Hall. The Panel is unable to determine whether the Respondent’s account is true as the record before the Panel in this regard is not clear and involves events that took place up to 20 years ago. As noted above, the present procedure is not suitable for resolving these types of disputed issue – for example, there is an underlying dispute as to whether the Respondent resided in the grounds of Anstey Hall itself or the adjoining Anstey Hall Farm. Whether or not that is correct and whether it is relevant involves a consideration of detailed factual matters not well suited to this proceeding. On balance, the Panel has concluded that were the truth of the Respondent’s account of what happened the only matter in issue it would likely conclude that it would be inappropriate to resolve this issue under the Policy.
However the Panel has concluded that it can determine this Complaint without needing to resolve whether the Respondent’s account is correct. This is because even if the Panel assumes, in the Complainant’s favour, that matters occurred as it alleges (and hence the Respondent’s account is rejected), the case advanced by the Complainant still does not, in the Panel’s opinion, establish bad faith registration. This is for the following reasons.
The Complainant, in its Complaint, puts its case this way: “It was implicit and understood that the domain, name was registered by the Respondent on behalf of the Complainant”.
It is not entirely clear to the Panel precisely why the Complainant says this factual situation amounts to bad faith registration. It seems to the Panel that two alternative scenarios are possible in this type of situation: (i) the Respondent registered the Original Disputed Domain Name as part of an arrangement (whether or not contractual) that gave rise to some kind of requirement or obligation that the registration was to be effected in the name of the Complainant but the Respondent failed to give effect to this requirement or obligation, and wrongly registered the Original Disputed Domain Name in his own name; or (ii) it was agreed or understood that the Respondent was to register the Original Disputed Doman Name in his own name but make it available for use by the Complainant. It seems to the Panel that scenario (i) may readily give rise to a case that the registration was effected in bad faith whilst scenario (ii) does not. In this regard, see Profilink Ltd. v. Ianko Pavlov Dingozov,WIPO Case No. D2013-1241 for a helpful discussion of relevant cases and principles as follows:
“As mentioned in the factual description, the Panel is of the opinion that when the Respondent registered the Domain Name, he clearly was doing so for the Complainant. In other cases arising out of similar facts, Panels have refused to find bad faith registration because the registration was made with the consent or at the request of the trademark owner. See e.g. ITMetrixx, Inc. v. Kuzma Productions,WIPO Case No. D2001-0668; The T, LLC v. Jeffrey S. Poploff,WIPO Case No. D2000-1470. In those cases, though, the respondent was expected to register the domain name under its own name.
However, in the present case, the Complaint suggests that the Respondent was expected to register the Domain Name on behalf of the Complainant. The Respondent’s assertions according to which he had registered the disputed domain name for its own purpose and use and only allowed the Complainant to use it until it finished building the directory service now found on the landing site is not substantiated by any element of evidence whatsoever. Had the trademark owner known, at the time of registration, that the Respondent was intending to use the disputed domain name itself, it would never have asked it to help it with the mere technical issues of registration.
Such situations have arisen in other UDRP cases, in which the bad faith registration was found to be realized by panels. See e.g., Champion Innovations, Ltd v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Robilant & Associati Srl v. Powerlab snc,WIPO Case No. D2006-0991.”
The question for the present Panel is what is the relevant factual position? The Panel has concluded that on the evidence before it, the situation is more likely than not to correspond to scenario (ii) above. It seems clear that the Complainant must have known the Respondent effected the registration in his own name and for some 14 years the Complainant appears to have been content with that position. It also seems that during that period the Respondent paid all costs associated with maintaining the Original Disputed Domain Name. Further, so far as the Panel can determine, at no point in the correspondence has the Complainant or its solicitors suggested that what the Respondent did in registering the Original Disputed Domain Name in his own name was wrong. So for example:
“Approximately 15 years ago our client authorised you, in your role as business administrator, to register (the "Domain Name") on behalf of our client's business. The Domain Name was registered, albeit in your name, for the purposes of creating a web site and various email accounts to market the hotel's facilities and grow our client's online business”’ (letter February 24, 2017 from Complainant’s solicitors).
And
“Approximately 15 years ago our client authorised you, in your role as business administrator, to register the Domain Names on behalf of its business” (letter March 29, 2017 from Complainant’s solicitors).
And
“We understand that the [Original Disputed Domain Name plus a corresponding “.” domain name] were registered at our clients’ request in order to enable our client to have an email address. As such, your client clearly registered the domain names on behalf of our client, and held them for our clients’ benefit. As our client and we have made clear, our client now requires that they take control of the domain names and that the [Original Disputed Domain Name plus a corresponding . domain name] be transferred to them.
In relation to the [Other Disputed Domain Names and various other domain names], these have clearly been registered by your client in bad faith. This is evident, amongst other things from the timing of registration of these domains names. Our clients require that these be transferred to our client” (letter July 5, 2017 from Complainant’s solicitors).
On balance it seems to the Panel that the registration in the Respondent’s own name was part of an arrangement that the Complainant was well aware of and to which the Complainant consented. If that is so, the Panel does not see how it can be said to be in bad faith within the meaning of the Policy. Strikingly, the Complainant’s solicitors’ letter of July 5, 2017 (above) adopts an approach which is consistent with this analysis. It clearly makes a distinction between the Original Disputed Domain Name and the Other Disputed Domain Names, and only suggests it is the latter that have been registered in bad faith.
Instead the solicitors suggest the relevant facts are such that the Complainant is entitled to call for a transfer of the Original Disputed Domain Name into its own name – presumably as the result of an underlying legal obligation arising from the relevant facts. Whether or not that is the case is a matter to be determined by a court of law, and is outside the scope of the Policy and this Panel’s jurisdiction.
The Complainant suggests the Respondent’s conduct in registering the Other Disputed Domain Names is relevant in assessing whether or not the registration of the Original Disputed Domain Name was in bad faith. The Panel finds it difficult to see what legitimate reasons the Respondent would have in registering the Other Disputed Domain Names but does not need to determine that issue. It is not however convinced that whatever the Respondent’s motives were in 2016 is relevant in assessing the Respondent’s actions in 2002. Further, there are also indicia that suggest the Respondent has acted in good faith – notably the fact that he does not ever appear to have charged for anything to do with any of the Disputed Domain Names, and that the Original Disputed Domain Name remains linked to the Complainant’s website despite some three years of dispute. On balance, therefore, the Panel declines to find that these later events can be used to support a case that the registration of the Original Disputed Domain Name was in bad faith.
The Panel is also not convinced that the Original Disputed Domain Name has been used in bad faith. As noted above the Respondent does not ever appear to have charged for anything to do with its use and it remains linked to the Complainant’s website despite some three years of dispute. The Complainant draws attention to correspondence from the Respondent in which he stresses the importance of administration rights over the Disputed Domain Names. The Complainant suggests this is an implicit threat by the Respondent. The Panel does not think it appropriate to reach that conclusion based on a single passage in a lengthy exchange of correspondence, especially when the Respondent has never hindered the Complainant’s actual use of the Disputed Domain Name.
Accordingly, in the present case the Panel is not satisfied the Complainant has established that the Original Disputed Domain Name has been registered and is being used in bad faith or that the third condition of paragraph 4(a) of the Policy has been fulfilled. 8. Reverse Domain Name Hijacking
Reverse Domain Name Hijacking (“RDNH”) 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”.
As set out in the WIPO Overview 3.0, section 4.16, reasons articulated by UDRP panels for finding RDNH include: (i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant’s lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith (such as registration of the disputed domain name well before the complainant acquired trademark rights; (ii) facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint, including relevant facts on the website at the disputed domain name or readily available public sources such as the WhoIs database; (iii) unreasonably ignoring established Policy precedent notably as captured in this WIPO Overview 3.0 – except in limited circumstances which prima facie justify advancing an alternative legal argument; (iv) the provision of false evidence, or otherwise attempting to mislead the panel; (v) the provision of intentionally incomplete material evidence – often clarified by the respondent; (vi) the complainant’s failure to disclose that a case is a UDRP refiling; (vii) filing the complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis; (viii) basing a complaint on only the barest of allegations without any supporting evidence.
The Panel does not consider the Complainant’s conduct warrants a finding of RDNH. This is a complex dispute and although the Panel has found in the Respondent’s favour in relation to the Original Disputed Domain Name, it may be the case that the Complainant is entitled to other legal remedies relating to that domain name – that is a matter for the courts. The Respondent’s registration of the Other Disputed Domain Names also seems difficult to explain and may in itself justify this Complaint. The Panel therefore declines to make a finding of RDNH. 7. Decision
For the reasons set out above and in accordance with paragraphs 4(a) of the Policy and 15 of the Rules the Panel orders that the Other Disputed Domain Names, i.e., , , , , and be transferred to the Complainant.
In relation to the Original Disputed Domain Name, i.e., , the Complaint is denied.
The Respondent’s request for a finding of Reverse Domain Name Hijacking is denied.
Nick J. Gardner
Sole Panelist
Date: July 2, 2019
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