The Complainant is Yeats Village Management Limited of Navan, Ireland, represented internally.
The Registrant is Albanne Property Management Limited of Ballindoe, Ireland, represented internally. 2. The Domain Name and Registrar
The disputed domain name is registered with IE Domain Registry Limited ("IEDR"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 31, 2014, via email. On August 1, 2014, the Center transmitted by email to IEDR a request for registrar verification in connection with the disputed domain name. On August 5, 2014, IEDR transmitted by email to the Center its verification response confirming that the Registrant is listed as the registrant and providing the contact details. On August 11, 2014 the Center notified the Complainant of various deficiencies in the Complaint. On August 11, 2014 the Complainant submitted a communication to the Center addressing those deficiencies.
The Center verified that the Complaint satisfied the formal requirements of the .IE Dispute Resolution Policy (the "IEDR Policy"), the WIPO Dispute Resolution Rules of Procedure for .IE Domain Name Registrations (the "Rules"), and the WIPO Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2.1 and 4.1, the Center formally notified the Registrant of the Complaint, and the proceedings commenced on August 14, 2014. In accordance with the Rules, paragraph 5.1, the due date for Response was September 11, 2014. The Response was filed with the Center September 8, 2014.
The Center appointed Adam Taylor as the sole panelist in this matter on September 12, 2014. 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.
The Complainant submitted a supplemental filing on September 20, 2014. The Registrant submitted a supplemental filing on September 22, 2014. 4. Factual Background
The Complainant is a company incorporated in the Republic of Ireland, whose membership consists entirely of the owners of properties in a residential complex known as "Yeats Village", located in Sligo, Ireland, which is used to provide accommodation for students during the academic year and for tourists at other times.
The Registrant had a contract to supply letting and management services to the Complainant from around 2002 until December 31, 2013.
The Registrant registered the disputed domain name on July 7, 2009.
The Registrant claims to have registered "Yeats Village" as a business name on September 1, 2014, with an effective date of January 1, 2001. 5. Parties' Contentions A. Complainant
In summary, the Complainant contends as follows: Identical or Misleadingly Similar
The Complainant has rights in the trade mark YEATS VILLAGE because the Complainant is a registered Irish company whose membership consists entirely of owners of the Yeats Village complex.
The name "Yeats Village" is known locally to the education and tourist authorities, to the student population nationally and to bodies dealing with international students. No other residential accommodation in Sligo or its environs is known by this name, which is essentially attributable to Sligo.
The Complainant's marketing strategy is built around this name.
The disputed domain name is confusingly similar to a name in which the Complainant has rights. Rights in Law or Legitimate Interests
The Registrant has no rights or legitimate interests in respect of the disputed domain name.
The Registrant operated the disputed domain name as a marketing tool to provide student and tourist accommodation under contract to the Complainant. The contract ceased on December 31, 2013. Since then the Registrant has had no legitimate interest in the trade mark or website.
The Registrant has no contract, capacity, nor is it licensed by the Complainant, to make any offering of accommodation, goods or services in Yeats Village. Despite this, the website at the disputed domain name continues to represent the Registrant as having the right to offer accommodation in Yeats Village, thus bypassing the Complainant, which is the legitimate management agent for the properties.
The Registrant has never been commonly known by the disputed domain name and it has acquired no trade mark rights in the disputed domain name. Registered or Used in Bad Faith
The Registrant is using the disputed domain name and associated website intentionally to divert customers from Yeats Village properties toward other rental properties managed by the Registrant in and around Sligo for the Registrant's commercial gain and to the Complainant's commercial loss. This is evidenced by a statement attached to the Complaint.
The Registrant has engaged in a pattern of such conduct as it has also registered and .
The Registrant registered or retained the disputed domain name primarily for the purpose of disrupting the Complainant's business. B. Registrant
In summary, the Registrant contends as follows: Identical or Misleadingly Similar
The Complainant has never owned a trade mark or registered business name for "Yeats Village" alone since its inception and incorporation as a limited company in 1999.
The Complainant has never tried to register "Yeats Village" as a domain name. The Complainant has never built a marketing strategy for the name "Yeats Village". The Complainant has no web presence.
The name "Yeats" is widely used through Ireland and is an internationally known name synonymous with Sligo and Ireland. Locally there are various places named after Yeats and the Yeats family. The term "village" is generic. Rights in Law or Legitimate Interests
The Registrant has a legitimate right and interest in the name "Yeats Village".
The Registrant has developed knowledge of Yeats Village over 13 years dealing with the student population and national and international tourists.
The Registrant's business headquarters has been located in Yeats Village for 13 years. At no point during those 13 years has the Complainant raised any issues regarding the Registrant's use of the name "Yeats Village".
The Registrant has registered "Yeats Village" as a business name and has traded under that name since 2001. The name has been an integral part of the Registrant over the last 13 years and the Registrant is known locally and internationally by this name. The Registrant markets tourism products which have connections with the literary world internationally and its connections with W.B. Yeats and the Yeats family history.
The controller of the Registrant is an owner of a property within Yeats Village and a member of the Complainant. He has the right to use of the name as the Complainant does not market or let his property. Registered or Used in Bad Faith
The Registrant has never operated the disputed domain name as an exclusive marketing tool for the Complainant and nothing in the contract restricted use exclusively for the benefit of the Complainant until the contract ended on December 31, 2013.
The Registrant forwards to the Complainant any correspondence it receives.
The statement attached to the Complaint is inaccurate and also illegal as it amounts to entrapment.
The Complainant has failed to mention that the Registrant offered to sell the disputed domain name to the Complainant, which the Registrant registered and built up over the last 10 or more years. The Registrant is still open to selling the disputed domain name to the Complainant. Reverse Domain Name Hijacking
The Complaint has been brought in bad faith as attempts to resolve the issue by sale of the disputed domain name have not been made known to the Panel. 6. Discussion and Findings
The Panel notes that the Policy is similar in many respects to the Uniform Domain Name Dispute Resolution Policy (the "UDRP") and therefore, to the extent applicable to the Policy, the Panel considers it appropriate to refer to authorities concerning the UDRP including the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"). A. Supplemental Filings
The Complainant has made an unsolicited supplemental filing responding to the Registrant and the Registrant has filed its own supplemental filing in response to the Complainant's filing.
Paragraphs 9 and 11 of the Rules in effect grant the Panel sole discretion to determine the admissibility of supplemental filings. Paragraph 9.4 states: "The Panel shall determine the admissibility, relevance, materiality and weight of the evidence." Paragraph 11 states: "In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties."
The principles which the Panel should apply in deciding whether or not to admit supplemental filings have been considered in many cases under the UDRP. See, e.g., The E.W. Scripps Company v. Sinologic Industries,WIPO Case No. D2003-0447. These principles include: that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimize prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.
Here, neither party has attempted to justify its supplemental filing. Furthermore, both filings consist of standard rebuttal and/or information which could reasonably have been addressed in the party's primary pleading. The Panel has therefore decided to disallow both filings.
The Panel would add, however, that neither supplemental filing would have made any difference to the outcome of this case. B. Identical or Confusingly Similar
The first condition in paragraph 1.1 of the IEDR Policy is that the disputed domain name is identical or misleadingly similar to a protected identifier in which the Complainant has rights.
Under paragraph 1.3.1 of the IEDR Policy, protected identifiers include "trade and service marks protected in the island of Ireland". The Complainant relies on unregistered trade mark rights in the term "Yeats Village".
According to paragraph 1.7 of WIPO Overview 2.0, the consensus view is that, in order to establish an unregistered trade mark for the purposes of the UDRP, a complainant:
"must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such 'secondary meaning' includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition."
Panels have concluded that this approach applies equally to the IEDR Policy. See, e.g., Department of Arts, Sport and Tourism v. Odyssey Internet Portal Limited,WIPO Case No. DIE2005-0002 and Budget Energy Limited (Budget Energy ROI) and Budget Energy Limited (Budget Energy NI) v. Prepay Power Limited, WIPO Case No. DIE2013-0002.
As was pointed out in Budget Energy Limited (Budget Energy ROI) and Budget Energy Limited (Budget Energy NI) v. Prepay Power Limited, supra, paragraph 1.7 of WIPO Overview 2.0 also states that "a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required."
In both cases mentioned above, the complaints were denied on the basis that the respective complainants asserted unregistered trade marks but failed to provide any supporting evidence.
Here too, there is only a conclusory allegation of unregistered trade mark rights; no supporting evidence whatever has been supplied by the Complainant. Furthermore, the mere fact that the Complainant has registered "Yeats Village Management Limited" as a business name in Ireland, as acknowledged by the Registrant, does not demonstrate to the Panel that the Complainant has developed common law trade mark rights in YEATS VILLAGE.
The Complainant is a company whose members are all owners of individual properties within the Yeats Village development and, apparently, it manages the development on behalf of those owners. The Complainant could presumably have provided information such as accounts showing the extent of its turnover by reference to the name "Yeats Village". Or, while it may be that the Complainant did not itself undertake any marketing activities, it was open to the Complainant to produce evidence of marketing by the Registrant and to contend that in fact this was undertaken on the Complainant's behalf in accordance with the contract between the parties. However, the Complainant did not do so.
In light of the lack of evidence showing that the name "Yeats Village" has been used in a way which has become a distinctive identifier associated with the Complainant or its services, the Panel finds that it does not have sufficient information to conclude that the term is, or has become, distinctive of the Complainant and/or its services.
The Panel therefore concludes that the Complainant has failed to establish the existence of a protected Identifier under paragraph 1.1 of the IEDR Policy.
In light of the Panel's finding above, it is unnecessary to address the second and third factors of the IEDR Policy in any detail. The Panel would just comment briefly that it is unlikely that the Complainant would have prevailed under these factors either. The reason for this is that the issues in dispute, including whether the Registrant itself generated any trade mark rights in the name "Yeats Village" independently of the Complainant, are factually complex, are based mainly on assertions with virtually no supporting evidence from either party, and are closely tied up with the contract between the parties. Although the Panel is somewhat sceptical as to many of the claims made by the Registrant, these are not matters which are appropriate for the Panel to address in a proceeding under the Policy and are probably best resolved by a court with the benefit of the tools of litigation such as disclosure of documents, cross-examination of witnesses etc., which are not available in this limited proceeding.
The Panel stresses that this decision is not intended to prejudge the Complainant's right to pursue this matter in the relevant national court if it considers that it has grounds to do so. Reverse Domain Name Hijacking
The Registrant argues that the complaint was brought in bad faith in accordance with paragraph 14.6 of the Rules on the basis that the Complainant did not disclose the attempts between the parties to resolve the issue by sale of the disputed domain name to the Complainant. Certainly, parties to proceedings under the IEDR Policy ought to disclose all relevant communications in order to provide panels with as complete a picture as possible but, in the Panel's view, the failure of the Complainant to do so falls very well short of evidencing that the complaint was brought in bad faith. Indeed, as mentioned above, neither party has provided much supporting evidence relating to any of the issues in dispute; the Registrant has not itself even supplied the very settlement communications which it criticizes the Complainant for withholding.
The Panel therefore declines to make a finding of reverse domain name hijacking. 7. Decision
For the foregoing reasons, the Complaint is denied.
Adam Taylor
Sole Panelist
Dated: October 2, 2014
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