Complainant is TranScrip Partners LLP, TranScrip Limited, United Kingdom, represented by Fox Williams LLP, United Kingdom.
Respondent is Abstract Holdings International Ltd, Domain Admin, Barbados, represented by Muscovitch Law P.C., Canada.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2021. On July 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 12, 2021, 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 Complainant on July 13, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 16, 2021.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 10, 2021. The Response was filed with the Center August 21, 2021.
On September 1, 2021, Complainant submitted an unsolicited supplemental filing. On September 8, 2021, Respondent replied to Complainant’s supplemental filing. In its discretion, the Panel has elected to consider these supplemental filings.
The Center appointed Robert A. Badgley, Clive Duncan Thorne, and Tony Willoughby as panelists in this matter on September 2, 2021. 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 invitation to Complainant to file an amended Complaint stemmed from the fact that the Domain Name was registered in the name of a privacy service. In response to the Center’s registrar verification request, the Registrar disclosed the name and address of the entity in whose name the Domain Name is currently registered. The amended Complaint names the underlying registrant as Respondent.
4. Factual BackgroundComplainant Transcrip Limited, incorporated in the United Kingdom on September 25, 2020, claims to be the successor in interest to the “goodwill in the relevant unregistered [trademark] rights” allegedly possessed by Complainant Transcrip Partners LLP, incorporated in the United Kingdom on February 15, 2008. The record is devoid of documentary evidence corroborating this purported assignment of goodwill and trademark rights, but the Panel is prepared to accept this particular assertion at face value for purposes of this proceeding.
In any event, unless required by context to do otherwise, the Panel will refer to the two entities collectively as “Complainant”, and will disregard as moot Complainant’s somewhat confusing request that this Complaint regarding a single Domain Name be consolidated.
According to the Complaint:
“The Complainant supports the development and lifecycle activities of biopharmaceutical products by providing a range of specialist professional services to pharma and biotech companies. The Complainant delivers strategic insights, innovative approaches and effective support across all phases of drug development from translational medicine through to registration and medical affairs, worldwide. The Complainant is a global leader in the Specialist Service Sector and supports clients in numerous territories. Its global head office is in the UK and it has regional offices in Europe, North America, Asia, Pacific Rim and Africa. Since 2008, the Complainant has worked with over 250 companies, from the Top 50 pharmas to multiple small and medium-sized enterprises. It has successfully completed more than 600 individual projects, big and small […].”
Complainant states that its annual turnover in 2016 was GBP 4,020,000, and it increased each year through 2020, at which point the annual turnover was GBP 5,806,000. Complainant states further that it has expended “large amounts on advertising and promotion of tranScrip”, and the annual outlays were claimed to be GBP 195,000 in 2016 and GBP 230,000 in 2020.
Complainant has owned the domain names
Annexed to the Complaint is a series of trade press articles which refer to Complainant, but all but one date from 2020 or 2021. The earliest article is from May 26, 2016, wherein it is announced that Complainant and another firm were launching a joint venture under the name “IntraScience”.
Although the Panel accepts that Complainant has existed as a business since 2008, there is no direct evidence in the record of Complainant using the unregistered mark TRANSCRIP as a source identifier in commerce prior to 2016.
Respondent states that it acquired the Domain Name as part of a bulk domain name transaction on April 15, 2014. Respondent provides evidence that the Domain Name was registered in its name as of June 12, 2014. (For purposes of this proceeding, the difference between the two 2014 dates is immaterial.)
The Domain Name resolves to a parking page, at the top of which it is announced that the Domain Name “may be for sale”. Below this announcement are a number of hyperlinks, such as “Transcription Jobs”, “Apply Jobs”, “Transcription Services”, and “Writing Services”.
According to the sworn Declaration of Sherene Blackett, Respondent’s Director and Manager:
“The Respondent acquired the Disputed Domain Name on or about April 15, 2014 from the previous registrant along with numerous other generic, descriptive, common typo and common mispronunciation of dictionary word domain names. The Disputed Domain Name, Transcrip.com, was one amongst many of such misspelled domain names and was acquired exclusively because it corresponded to a misspelled common term. It was registered to the Respondent at or about the same time that it was acquired but no later than June 12, 2014.
The Respondent’s sole interest in the Domain Name was that it corresponded to the common dictionary word, ‘transcript’, albeit a common misspelling and mispronunciation of the word.
I have consulted with all persons employed and engaged by the Respondent and have determined that no one associated with the Respondent had ever heard of the Complainant or its trademarks at any time prior to the aforesaid acquisition of the Disputed Domain Name.
The Disputed Domain Name was registered by the Respondent because the Respondent is in the business of registering generic, descriptive, misspelling of common words, and acronym domain names, and the Disputed Domain Name corresponded to a misspelling of the word, ‘transcript’. As such, the Domain Name was acquired because it could be of interest to the eventual purchaser of Transcript.com if the purchaser wants to avoid losing traffic to misspellings, or alternatively, could be of interest to anyone interested in obtaining traffic for marketing goods or services related to transcripts.
The Respondent also owns Transcripts.net which Respondent acquired on or about February 26, 2016 from BuyDomains.com.”
Respondent notes that it has prevailed as the respondent in four previous UDRP decisions. Complainant cites one prior UDRP case in which Respondent had been found to be in bad faith. Respondent claims to be challenging that decision in court.
Although not mentioned in the Complaint, Respondent notes that Complainant first reached out to Respondent on May 29, 2015, to inquire about the Domain Name. In an email, Complainant’s representative (“David”) wrote to Complainant’s domain broker (“Darryl”):
“Hi Darryl, I have been asked to look into getting the address “www.transcrip.com”.
My company is called Transcrip Partners, and currently, we are www.transcrip-partners.com, but we are looking at a rebrand. Please could you advise if this name is available and if so, what cost would be involved please. We would also need to be able to direct our email through it too.”
Through Darryl, Respondent quoted a price of USD 18,000 for the Domain Name. On June 29, 2015, David emailed Darryl to advise that Complainant’s managing partner had decided not to go ahead with the purchase, “partly due to the cost but also due to the requirements of changing a whole domain over”.
On September 9, 2015, Complainant’s representative David reached out to Respondent’s broker Darryl again, this time asking whether Respondent would reduce the USD 18,000 price for the Domain Name. Darryl quoted the USD 18,000 price again but added that Respondent is willing to consider counter-offers.
On September 10, 2015, David reverted to Darryl, stating that USD 18,000 was too high, and that “we are a relatively small company”. Over the next two months, David states that his management team is busy but would like an offer lower than USD 18,000. Darryl repeats that Complainant should make a counter-offer, which Complainant appears reluctant to do for some reason. David repeats (on November 2, 2015) that Complainant is “not a big company”.
There apparently was no further communication until April 13, 2016, when Darryl asked David whether Complainant is “still interested” in the Domain Name. Darryl got no response from David, and sent the latter several chasers over the next two months. This email thread evidently ended in July 2016.
At no point in the foregoing exchange did Complainant assert any trademark rights in “TRANSCRIP”. As noted above, these 2015-2016 Domain Name sale discussions were not mentioned at all in the Complaint, but were raised in the Response. In its September 1, 2021 supplemental filing, Complainant explains its failure to mention the 2015-2016 exchanges as a memory lapse. As Complainant explained in the supplemental filing, “David” was Complainant’s IT administrator “around six years ago”, but David no longer works for Complainant.
Although not discussed in the Complaint (though reflected in one of Complainant’s annexes), following earlier emails on May 4, 2021, on May 13, 2021, Complainant’s representative (“Ashton”) emailed Respondent’s broker (“Watson”) with a “final offer” – authorized by Complainant’s board – to purchase the Domain Name for GBP 12,000. The following day, May 14, 2021, Watson responded with the news that Respondent had agreed to sell the Domain Name for GBP 12,000, which at the time equated to USD 16,730. In this responsive email, Watson advised that it would be preferable (and cheaper for Complainant) to wire the funds in USD rather than GBP. Watson also provided a link to the Afternic transaction rules and some details about setting up an Afternic account to facilitate the Domain Name transfer.
On May 19, 2021, Ashton emailed Watson to inquire (as part of his “due diligence”) into the identity of the owner of the Domain Name. Watson demurred, stating that the seller’s identity is protected and not relevant to the transaction because the Registrar, GoDaddy, was representing Respondent in this transaction.
At no point during this 2021 pre-Complaint exchange did Complainant state that the Afternic terms of sale were in any manner objectionable.
On June 1, 2021, Watson followed up with Ashton for an update on the status of the transaction from Complainant’s side. On June 8, 2021, Ashton told Watson that Complainant’s board had authorized a bid for the Domain Name at a “much lower price” than the GBP 12,000 offer that Complainant had made back on May 13, 2021. The emails about the GBP 12,000 deal falling through were missing from Complainant’s annexes, but were provided with the Response.
In its September 1, 2021, supplemental filing, Complainant states that the 2021 transaction for GBP 12,000 did not go through “because the Respondent’s agent sent terms which superseded any acceptance that had purportedly previously been made”. Complainant is referring to the Afternic terms of sale and the need to open an Afternic account to effectuate the Domain Name transfer.
In its supplemental filing, Complainant does not even address, much less deny, the allegation that its board had authorized and made a GBP 12,000 offer to Respondent, but later claimed that the board had never authorized a purchase at anything near GBP 12,000.
5. Parties’ Contentions A. ComplainantComplainant contends that it has satisfied each of the three elements required under the Policy for a transfer of the Domain Name.
B. RespondentRespondent denies having had any knowledge of Complainant or its alleged TRANSCRIP trademark when it acquired the Domain Name in 2014, and therefore it cannot have registered the Domain Name in bad faith. Respondent states that it engages in the legitimate activity of acquiring domain names comprised of abbreviations, common words or common misspellings because of their intrinsic value, and that it does so without the intent to trade off the renown of another’s trademark.
Respondent also asks the Panel to find that this Complaint was brought in bad faith because Complainant should have known that its Complaint was doomed to fail, and because Complainant was not candid with the Panel.
6. Discussion and FindingsParagraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
For purposes of this first UDRP element, the Panel is prepared, despite the paltry evidence put forth in the Complaint (and the supplemental filing), to accept that Complainant possesses unregistered common law trademark rights in TRANSCRIP. It is not relevant, for purposes of this first UDRP element, whether Complainant’s trademark rights predate Respondent’s acquisition of the Domain Name.
The Panel also finds that the Domain Name is identical to the TRANSCRIP mark.
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate InterestsPursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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.
The Panel concludes that Complainant has failed to carry its burden of proving that Respondent lacks rights or legitimate interests in respect of the Domain Name. Complainant’s main contention on this point is that Respondent is deriving pay-per-click (“PPC”) revenue from the hyperlinks at the landing page to which the Domain Name resolves, while waiting for a big payoff when Complainant comes along with an offer to buy the Domain Name.
Complainant cites section 2.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) (entitled “Do ‘parked’ pages comprising pay-per-click links support respondent rights or legitimate interests?”) for the proposition that “the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”.
Complainant fails to note, however, another passage in that very same section 2.9 of the WIPO Overview 3.0, viz., “Panels have recognized that the use of a domain name to host a page comprising PPC links would be permissible (…) where the domain name consists of an actual dictionary word(s) or phrase and is used to host PPC links genuinely related to the dictionary meaning of the word(s) or phrase comprising the domain name, and not to trade off the complainant’s (or its competitor’s) trademark”.
Here, “transcrip” is an obvious reference to “transcript” and the PPC links refer to transcribing activities and transcriptions. They do not refer to or target the pharma and biotech industries in which Complainant operates as a service provider.
Respondent’s business model of “registering generic, descriptive, misspelling of common words, and acronym domain names” has been held to be a legitimate endeavor, so long as targeting of another’s trademark is not found. Monetizing domain names because of and in relation to their dictionary value is not in itself illegitimate, so long as there is no targeting of trademarks.
Indeed, as noted above, Respondent has prevailed in four prior UDRP cases in which the legitimacy of Respondent’s conduct has been called into question. Of course, prevailing in a prior UDRP case does not immunize a respondent from a bad faith finding in a later case, as the facts of each case must be considered on their own. In the instant case, as will be discussed in greater detail in the next section, the Panel finds no basis upon which to conclude that Respondent had targeted Complainant’s purported TRANSCRIP trademark when registering the Domain Name.
Complainant has not established Policy paragraph 4(a)(ii).
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has neither registered nor used the Domain Name in bad faith.
It is essential to a finding of bad faith that the Panel, based on the record and on a balance of probabilities, finds it more likely than not that Respondent had Complainant’s mark in mind when registering the Domain Name. As such, the focal point here is the period in April-June 2014, when Respondent acquired the Domain Name and then proceeded to have it registered in Respondent’s name. At that point, the Panel must ask, what (unregistered) trademark rights, if any, did Complainant possess in the purported mark TRANSCRIP.
As suggested above in the “Factual Background” section, there is no evidence in the record that Complainant possessed any trademark rights in the mark TRANSCRIP at that time. Complainant concedes that it has no registered trademark for TRANSCRIP.
With respect to unregistered rights under the UDRP, Complainant articulates the standard as follows in its Complaint: “For unregistered marks, the Complainant must show its mark has become a distinctive identifier which consumers associate with the Complainant’s goods and/or services (section 1.3 of WIPO Overview 3.0).”
Complainant’s evidence of its common law trademark rights is exceedingly thin, and altogether nonexistent for the period before 2016 (which is two years after Respondent acquired the Domain Name).
Further, it is undisputed that Complainant actually approached Respondent in 2015 in an effort to buy the Domain Name as a part of a rebranding effort.
Without belaboring the point, the Panel concludes that, if Complainant had any viable common law trademark rights prior to 2014, Complainant utterly failed to introduce evidence of such rights in this proceeding. This fact, coupled with Respondent’s sworn (and plausible, given Complainant’s operation in a narrow niche market largely unknown to the general consuming public) denial of knowledge of Complainant or its mark in 2014, leads the Panel to conclude that Respondent did not register the Domain Name in bad faith.
With respect to bad faith use of the Domain Name, the Panel incorporates its discussion above under the “Rights or Legitimate Interests” head.
Complainant has not established Policy paragraph 4(a)(iii).
D. Reverse Domain Name HijackingRespondent asks the Panel to declare that Complainant has engaged in Reverse Domain Name Hijacking (“RDNH”). The Panel agrees with Respondent that such a finding is appropriate in this case.
Complainant should have known that its Complaint was doomed to fail, especially since Complainant was represented by counsel with a clear understanding of the UDRP (counsel quotes from the WIPO Overview 3.0 throughout the Complaint).
Indeed, when the initial Complaint was filed on July 9, 2021, Complainant evidently did not realize that Respondent acquired the Domain Name in 2014.
Once Complainant received Respondent’s August 21, 2021 Response however, Complainant at least became aware that Respondent actually acquired the Domain Name in April 2014. In its September 1, 2021, supplemental filing, Complainant did not even attempt to assert (much less prove) any common law trademark rights in TRANSCRIP prior to April 2014, or offer any allegations or proof that Respondent had targeted Complainant’s trademark in April 2014.
Under these circumstances, Complainant, represented by counsel, should have known then that its Complaint was lacking in the requisite allegations and supporting evidence. After receiving the Response, if it was unable to provide such allegations and supporting evidence, arguably Complainant should have withdrawn its Complaint.
Instead, Complainant exacerbated matters by filing its September 1, 2021 supplemental filing. First, the Panel cannot credit Complainant’s explanation why it failed to disclose the 2015-2016 discussions about a possible sale of the Domain Name. Complainant states that its erstwhile IT staffer “David” made inquiries six years earlier, which management had forgotten. The supplemental filing does not assert that David made such inquiries of his own accord. Rather, the email exchanges from that period seem to show that David was in contact with Complainant’s management about the Domain Name.
Moreover, even if Complainant’s “cannot recall” explanation were plausible, Complainant certified that its Complaint was “to the best of the Complainant’s knowledge complete and accurate”. A UDRP complainant is “under an obligation imposed by paragraph 3(b)(xiii) of the Rules to undertake at least minimal due diligence before filing a complaint”. BERNINA International AG v. Domain Administrator, Name Administration Inc. (BVI),WIPO Case No. D2016-1811.
The Panel also doubts Complainant’s explanation, in the supplemental filing, about why the May 2021 transaction to buy the Domain Name for GBP 12,000 fell through. The Panel is left with the inference that Complainant reneged on the deal – which Complainant had initiated – because it ultimately concluded that it could wrest the Domain Name from Respondent via the UDRP process and avoid paying the agreed price of GBP 12,000.
Complainant asserts that the May 2021 deal fell through because Respondent had introduced new terms to the deal, which essentially voided the initial offer and acceptance. In sum, the Panel is inclined to agree with Respondent that Complainant’s explanation about the failed May 2021 transaction is an “ex post facto rationalization” and “bereft of credibility”.
In sum, Complainant should have known that it could not succeed under any fair interpretation of facts available prior to the filing of the Complaint; yet it pursued the Complaint on only the barest of allegations, bereft of any supporting evidence of substance. In so doing, Complainant unreasonably ignored established UDRP precedent as captured in WIPO Overview 3.0, a document with which it was familiar. The Panel concludes that Complainant has filed and pursued this Complaint in bad faith and therefore a finding of Reverse Domain Name Hijacking against Complainant is warranted.
7. DecisionFor the foregoing reasons, the Complaint is denied.
Robert A. Badgley
Presiding Panelist
Clive Duncan Thorne
Panelist
Tony Willoughby
Panelist
Date: September 27, 2021