1.1 The Complainant is Tilda Limited of Rainham, United Kingdom of Great Britain and Northern Ireland, represented by Dechert LLP, United Kingdom of Great Britain and Northern Ireland.
1.2 The Respondent is Shahab Syed of London, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
2.1 The disputed domain name (the “Domain Name”) is registered with Tucows Inc (the “Registrar”). 3. Procedural History
3.1 As the Case number would suggest, this is one of the first few cases filed with the Center in relation to a “.co” domain name since second level “.co” domains became first available to the world, on a first-come, first-served basis on July 20, 2010. The Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) is applicable in relation to such registrations.
3.2 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2010. On August 18, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 18, 2010, 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.
3.3 The Center verified that the Complaint satisfied the formal requirements of the 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”).
3.4 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 8, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 10, 2010.
3.5 The Center appointed Matthew S. Harris as the sole panelist in this matter on September 14, 2010. 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
4.1 The Complainant is a company incorporated under the laws of England and Wales involved in the sale of rice and rice related products. Although based in the United Kingdom, it is an international business selling products in over 40 countries under the “Tilda” name.
4.2 The Complainant spends “many millions of pounds per year” on the promotion of its products. Its turnover for the financial year ended December 31, 2008 was in excess of GBP 100 million.
4.3 The Complainant is the owner of various marks around the world that comprise or incorporate the “Tilda” name. These marks inclue:
(i) United Kingdom registered trade mark No. 987343 for the word mark TILDA in class 30, filed on February 14, 1972;
(ii) Community Trade Mark No. 1924026 for the word mark TILDA in classes 29 and 30, filed on October 26, 2000.
4.4 Little is known about the Respondent but he appears to be an individual based in the United Kingdom who conducts business under the name “IT P”.
4.5 According to the WhoIs details for the Domain Name, the Domain Name was registered on July 25, 2010; i.e., just 5 days after second level “.co” domains became available to the world, on a first-come, first-served basis.
4.6 At least recently the Domain Name has been used in connection with a web page that bears all the hallmarks of having been generated by a domain name parking or pay-per-click service. For example as at August 17, 2010 the page displayed from the Domain Name provided a series of “Sponsored listings”. These “listings” for the most part made reference to Nissan cars. They included:
- Nissan Versa Must Go
- Tilda Swinton “Like This”
- Nissan Versa Sale
- Nissan Versa Claearance
- Compare the Honda Fit
- Nissan Versa
4.7 On August 5, 2010 a representative of the Complainant sent an email to the Respondent enquiring whether the Domain Name was for sale. The same day the Respondent responded asking for the sum of GBP 50,000, but stated that this was “open to negotiations”. He further stated that the Complainant would have “the first right of refusal before [the Domain Name] progressed to auction”. On August 10, 2010 the Complainant’s lawyers sent a letter before this Complaint to the Respondent by email and post. It demanded that the Respondent transfer the Domain Name to the Complainant, failing which it would commence proceedings under the UDRP.
4.8 On August 16, 2010 the Respondent sent a further email to the Complainant’s lawyers. In that email the Respondent contended that he had not previously been aware of the UDRP and had believed that domain names were available on a first come first served basis. He went on to state:
“Now we stand corrected, we would like to transfer the domain to yourselves, however we have had an offer of £500 from another party who wish to purchase this domain name. Their trading name closely matches the domain name also, and they are pushing to conclude the transaction by Wednesday 18th,August 2010.”
He then went on to ask the Complainant to match that bid, failing which he would transfer the Domain Name to the alleged third party.
4.9 As at the date of this decision a domain name parking / pay-per-click page continues to operate from the Domain Name. The “sponsored listings” shown continue to predominantly promote Nissan related websites. 5. Parties’ Contentions A. Complainant
5.1 The Complainant contends that the Domain Name is identical to the Complainant’s TILDA mark.
5.2 The Complainant further contends that the Complainant has not licensed the Respondent to use its trade marks or register the Domain Name. It claims that the content of the website operating from the Domain Name does not provide evidence of the Respondent’s use of, or demonstrable preparations to use, the Domain name in connection with a bona fide offering of services.
5.3 The Complainant also contends that the Respondent has not previously been known by the Domain Name and that it is not aware of the Complainant having any trade marks in the term “Tilda”. It also refers to the fact that the Domain Name was registered long after the Complainant first started to use the TILDA mark and claims that the TILDA mark had become a “household name” in the United Kingdom. Reference is also made to the fact that the Respondent has not claimed in correspondence that he has a right or legitimate interest in the Domain Name. In the circumstances, the Complainant contends that no such right or legitimate interest exists.
5.4 On the issue of bad faith, the Complainant refers to the correspondence with the Respondent prior to the commencement of proceedings and the offers for sale made by the Respondent at that time. It contends that this shows that the Domain Name was registered primarily for the purpose of selling, renting or otherwise transferring the Domain Name to the Complainant or a competitor for a sum in excess of out of pocket expenses, within the scope of paragraph 4(b)(i) of the Policy. Reference is made in this respect to American Home Products Corporation and Genetics Institute, Inc. vs. Global Produtions [sic],WIPO Case No. D2000-0456 and Merck KGaA v. Sunmeet Jolly,WIPO Case No. D2004-0195.
5.5 Further, the Complainant contends that the website operating from the Domain Name shows that the Domain Name was registered with an intention of attracting for commercial gain Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of his website, within the scope of paragraph 4(b)(iv) of the Policy. B. Respondent
5.6 The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
6.4 The Panel will address the three aspects of the Policy listed above in turn. A. Identical or Confusingly Similar
6.5 The Panel accepts that the Complainant is the owner of various marks that comprise the word “tilda” alone. It also accepts that the most natural reading of the Domain Name is as the word “Tilda” combined with the “.co” TLD. In the circumstances, the Panel has no difficulty in concluding that Domain Name is virtually identical to the Complainant’s registered marks. The Complainant has easily made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
6.6 Many UDRP panels have adopted the approach of saying that where prima facie none of the examples of rights or legitimate interests laid out in paragraph 4(c) of the Policy apply, then the respondent carries the burden of showing such a right or interest. It is an approach that the Panel could perhaps also have followed in the current case. However, the Panel prefers to deal with this issue in a somewhat more direct manner.
6.7 It is clear in this case that the Domain Name is being used by the Respondent for use with a “domain name parking” or “pay-per-click” service. It is possible for use of a domain name for a parking site with advertising revenue generating sponsored links to provide a legitimate interest within the meaning of paragraph 4(a)(ii) of the Policy. For example, if a registrant intends to profit from the descriptive nature of the word or words in the domain name without intending to take advantage of a third party's rights and reputation in that term, then it may have a legitimate interest in the domain name (see Section 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions). On the other hand, if the owner of the domain name in question is using it with such a service in order to unfairly capitalise upon or otherwise take advantage of a similarity with another's mark then such use would not provide the registrant with a right or legitimate interest in the domain name (see, for example, the decision of the three member panel in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267).
6.8 The Panel also accepts that the Respondent's offer for sale of the Domain Name in correspondence prior to these proceedings indicates that the Domain Name was registered and is currently held with at least the possibility of its potential onward sale or a profit. There is generally nothing per se illegitimate in selling or dealing in domain names. However, if there is an intention by reason of the sale or threatened sale of the domain name to take advantage of the third party's rights and reputation in a trade mark represented in that domain name, then that is quite a different matter.
6.9 Essentially, therefore, in this case the assessment of rights or legitimate interests boils down to the question; is the Respondent using the Domain Name with the Complainant's marks in mind and with a view to taking unfair advantage of the reputation of those marks?
6.10 This is a question that is addressed in greater detail when assessing the question of bad faith. For the reasons that are explained in greater detail under the heading of bad faith below, the Panel has reached the conclusion that the Domain Name has been both registered and used with a view to taking unfair advantage of the reputation of the Complainant's trade marks. In the circumstances, the Panel has little difficulty in reaching a positive finding that the Respondent has no rights or legitimate interests in the Domain Name. Accordingly, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
6.11 As the Panel has already stated, it seems clear that the Domain Name has at least recently been used in connection with a “pay-per-click” or “domain name parking” service. It is now well-known how these sorts of services operate. A domain name owner “parks” the domain name with a domain name parking service provider. The service provider then generates a page that incorporates sponsored links or links to sponsored links. When an Internet user clicks on these sponsored links, the entity sponsoring that link will make a payment. This “click-through revenue” is then ordinarily split between the domain name parking service provider and the owner of the domain name (see, for example, Owens Corning v. NA,WIPO Case No. D2007-1143).
6.12 The generation of revenue from domain name parking activities is not necessarily activity in bad faith. However, it is use in bad faith within the scope of paragraph 4(b)(iv) of the Policy where the registrant is using the domain name in this manner because of its similarity to a mark or name of another person in the hope and expectation that that similarity would lead to confusion on the part of Internet users and result in an increased number of Internet users being drawn to that domain name parking page (see, for example, Express Scripts, Inc., supra). The confusion that is usually relevant here is the confusion that draws the Internet user to the respondent's website in the first place (for example, confusion that leads an Internet user to type the domain name into his Internet browser). It does not matter that when the Internet user arrives at the pay-per-click site that it then becomes clear that the website is unconnected with the trade mark holder.
6.13 The Panel has reached the conclusion on the balance of probabilities that the Domain Name has in this case been both registered and used to take advantage of confusion with the Complainant's TILDA mark. The Panel accepts the Complainant’s contention that in at least in the United Kingdom “Tilda” is a household name. There are perhaps potential other uses of the “tilda” term that would not refer to the Complainant, but given the degree of reputation that the TILDA mark enjoys in the United Kingdom the most likely explanation of the registration was to take advantage of the reputation of that mark.
6.14 Another factor that points in that direction is the offer for sale of the Domain Name for GBP 50,000. So far as the offer for sale is concerned, it is difficult to see why it is that the Domain Name might command such a value unless it is because of its associations with the Complainant's mark. The pre-Complaint correspondence suggests that the Respondent had second thoughts about that offer, but the initial offer being made only a few weeks after registration, nevertheless provides some insight as to the Respondent’s motivations at the time of registration.
6.15 Whether or not the selling, renting, or otherwise transferring of the Domain Name was the “primary” purpose of the Respondent’s registration, and therefore strictly falls within the wording of the example of circumstances indicating bad faith set out at paragraph 4(b)(i) of the Policy, or was simply one of a number of possible ways in which the Respondent considered the Domain Name might be exploited is not certain. But in the Panel’s opinion it does not matter. In the absence of any explanation from the Respondent as to why he registered the Domain Name, that offer is a further factor that suggests that the Respondent registered the Domain Name in some manner or other to take unfair advantage of the reputation that the Complainant has built up in the TILDA mark.
6.16 It is perhaps necessary briefly to comment upon the rather curious fact that the various sponsored links that appear on the web page operating from the Domain Name seem predominantly to relate to Nissan cars. Why this is the case is not clear1. But ultimately the Panel does not believe that it changes its assessment that on the balance of probabilities the Respondent has both registered and used the Domain Name in bad faith. The fact that similarity between a domain name and a mark is being used to promote goods and services unrelated to those for which the mark is registered does not prevent a finding of bad faith, if a panel concludes that it was nevertheless with the intention of taking advantage of the reputation of the mark that the domain name has been used.
6.17 Accordingly the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
7.1 For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Matthew S. Harris
Sole Panelist
Dated: September 22, 2010
1 These listings perhaps intend to take advantage of the fact that “Tilda” is a misspelling of”Tiida” and Tiida” is a name used for a model of Nissan car. But there is no evidence before the Panel on this issue.
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