DLL.com #UDRP : Reverse #domain name hijacking finding at the #WIPO

Directnic

RDNH finding.

The UDRP against the domain DLL.com has been decided upon, and the Complainant was found guilty of Reverse Domain Name Hijacking.

It’s interesting to note that the Respondent, at some point, asked for $100 million dollars in order to sell the domain DLL.com to the Complainant!

Full details of this decesion follow:

WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
De Lage Landen International B.V. v. Steve Thomas
Case No. D2017-2045

1. The Parties

The Complainant is De Lage Landen International B.V. of Eindhoven, Netherlands, represented by Novagraaf Nederland B.V., Netherlands.

The Respondent is Steve Thomas of Worcester, New York, United States of America (“US”), represented by UDRPro, LLC, US.

2. The Domain Name and Registrar

The disputed domain name <dll.com> (the “Disputed Domain Name”) is registered with Wild West Domains, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2017. On October 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 16, 2017. On November 11, 2017, the Respondent requested an extension pursuant to paragraph 5(b) of the Rules. On November 13, 2017, the Center notified the Parties that the new Response due date was November 20, 2017. The Response was filed with the Center on November 15, 2017.

The Center appointed Nick J. Gardner as the sole panelist in this matter on November 27, 2017. 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

The Complainant is a company incorporated in the Netherlands. As of the date of this decision it trades as “DLL”. Its history in this regard is discussed further below. According to its corporate website (located at “www.dllgroup.com”) which is referenced in the Complaint, its business is as follows: “DLL is a global vendor finance company with more than EUR 30 billion in assets. Founded in 1969 and headquartered in Eindhoven, The Netherlands, DLL provides asset-based financial solutions in the agriculture, food, healthcare, clean technology, construction, transportation, industrial and office technology industries.

DLL partners with equipment manufacturers, dealers and distributors in more than 30 countries to support their distribution channels and help grow their businesses. DLL combines customer focus with deep industry knowledge to deliver sustainable solutions for the complete asset life cycle, including retail finance, commercial finance and used equipment finance. DLL is a wholly owned subsidiary of Rabobank Group”.

The Complainant has been in business since 1969 when it commenced trading using the name “De Lage Landen”. The nature and extent of its trademark rights are discussed below.

The Respondent is an individual based in the United States.

The Disputed Domain Name was originally created on December 5, 1995 by the Respondent who has owned it ever since. It is now linked to a website which offers for sale advertising space on the website which it says is valuable because it attracts a lot of traffic. It was historically linked to a website used by a company called Story House Corporation. This is discussed in more detail below.

In August 2017 the Complaint arranged for an email to be sent to the Respondent (from an account which did not identify the Complainant or its claimed rights) enquiring as to whether the Disputed Domain Name was for sale, and if so at what price. The Respondent replied as follows:

“100 million US

5 million non-refundable deposit

30 days to come up with balance

Non-negotiable.

If you do not like terms, please do not bother responding”.

5. Parties’ Contentions

A. Complainant

The Complainant says that the Disputed Domain Name is identical to its registered trademark DLL.

It explains its trademark rights as follows. It says it was founded in 1969 as De Lage Landen. In 1976 it says it started using a new word/device which also contains the abbreviation DLL. This trademark is shown below and is referred to in this decision as the “De Lage Landen Word/Device mark”. The Complainant filed a Benelux trademark application for this trademark in black and white in 1987.

logo

The Complainant says that at this time it also expanded its activities into Europe. Due to the lack of the knowledge of the Dutch language in the various EU-countries, it says its trademark was often referred to as the abbreviation DLL. In 1992 the Complainant filed an international registration for the DE LAGE LANDEN Word/Device trademark in black and white, designating Germany, France, Spain, and Italy. It says that since its trademark had been referred to as DLL outside the Netherlands it “amended” its trademark to DLL and filed trademark applications for those letters as a word mark in 2007. It now owns a significant number of registered trademarks for the term DLL – for example international registration 961922 filed on March 3, 2008 which designates, amongst other countries, the US.

It also says it has spent considerable time, effort and money since 1969 in advertising and promoting financial services in connection with the trademark DE LAGE LANDEN, which it refers to as “respectively DLL”. It says that thus, DLL has a reputation in various countries throughout the world and embodies substantial goodwill.

It says that in 1995 when the Respondent registered the Disputed Domain Name the Complainant was already referred to by the abbreviation DLL in “the international trade”. Therefore, the creation of the Disputed Domain Name could not serve any legitimate interest and could only aim at exploiting the reputation of the Complainant’s trademark, and was therefore registered in bad faith. It says the Respondent should have been aware of Complainant’s trademark rights given that it is involved in financial services in more than thirty countries including in the US, where the Respondent is living. It says that the Respondent’s denial of knowledge is highly improbable in this case.

It also says that beside the registration in bad faith, the Disputed Domain Name is also used in bad faith and the effect of the requirement of paragraph 2 of the Policy should be considered, which states: “By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that […] (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.” This should be regarded as a warranty at the time of registration and renewal that the domain name will not be used in bad faith. By the breaching of such warranty by the Respondent, use in bad faith at the time of the renewal of the Disputed Domain Name is evident.

It also says that the Respondent has a large number of domain name registrations that are registered through automated processes, with no appropriate mechanism for ascertaining whether these may be identical or confusingly similar to registered trademarks. Besides the Disputed Domain Name <dll.com>, the Respondent has for example, also registered the domain name <fatboydesigns.co.uk>, which involves the trademark FATBOY, used for design sofas.

It also says that the extraordinarily high asking price for the Disputed Domain Name, namely USD 100 million, of which USD 5 million was a non-refundable deposit, is obviously in excess of the Respondent’s costs in registering the Disputed Domain Name and clearly indicates use in bad faith.

B. Respondent

The Respondent has filed a detailed Response. It is accompanied by a sworn declaration from the Respondent attesting to the matters set out in the Response. The salient points the Respondent makes are addressed in the discussion below. In summary the Respondent says the Complainant had no applicable trade mark rights in the term “DLL” at the time he registered the Disputed Domain Name. He says that all the Complainant’s registrations for the term “DLL” were registered long after he registered the Disputed Domain Name. He points out the Complaint itself says the Complainant has used the term “DLL” for ten years. He says the Complainant’s wider case based upon fame and reputation in the letters “DLL” is entirely unsupported by any evidence and comprises a range of conclusory statements. He says he had never heard of the Complainant when he registered the Disputed Domain Name or at any time before receiving the Complaint and denies he acted in bad faith. He says he had a legitimate business reason for registering the Disputed Domain Name (discussed below) which is in any event an obvious three letter acronym available to anyone on a “first come first served” basis. He says the offer he made to sell the Disputed Domain Name was in response to an unsolicited approach. He says he regularly receives these and always responds in this way to deter frivolous enquiries and expecting anyone who is serious to respond with a meaningful counter-offer. He says there is no proper basis for the Complaint and requests a finding of Reverse Domain Name Hijacking. He also says the Complaint is barred by laches.

6. Discussion and Findings

To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel in respect of the Disputed Domain Name 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; and

(iii) The Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar

The Panel does not accept that the Disputed Domain Name is confusingly similar to the DE LAGE LANDEN Device/Word mark (reproduced above). The dominant elements of that trademark are the words “De Lage Landen”. It is not immediately apparent that the letters “DLL” feature at all in the trademark (other than as part of the words “De Lage Landen”) – however a close inspection of the trademark enables the Panel to see how an argument might be advanced that the graphic element of the trademark is a stylized form of the letters “DLL” – but those letters do not seem to the Panel to be readily apparent to the average viewer. Indeed the graphical element might more obviously be seen as a single letter “L” inside the letter “O”. Taking the DE LAGE LANDEN Device/Word mark as a whole the Panel declines to find the Disputed Domain Name confusingly similar to this trademark. In any event this issue is not determinative of the Panel’s conclusion in relation to this issue, given the Panel’s further finding in the following paragraph.

The Complainant has however established that it also owns a number of registered trademarks in respect of the term “DLL” in word form (the “DLL trademark”). The Panel holds that the Disputed Domain Name is identical to the DLL trademark. It is well established that the specific top-Level of the domain name (in this case “.com”) typically does not affect the domain name for the purpose of determining whether it is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429. Accordingly the Complainant has established the first element of paragraph 4(a) of the Policy.

In reaching this conclusion the Panel notes that all of the Complainant’s trademarks for the term “DLL” post date the filing of the Disputed Domain Name, the earliest of these registrations dating from 2007. This does not however matter so far as this element is concerned. The Panel agrees with the view expressed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) as follows (at section 1.1.2): “[…] the filing/priority date, date of registration, and date of claimed first use, are not considered relevant to the first element test. These factors may however bear on a panel’s further substantive determination under the second and third elements”. That is the case here, for reasons discussed below.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:

(i) before any notice to the Respondent of the dispute, use of, or demonstrable preparations to use, the Disputed 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 Disputed 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 Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel finds there is clear evidence that (i) applies in this case. The Respondent has provided credible evidence that he was a member of a company called Story House Corporation, and was in charge of domain name and Internet matters for the company. Story House Corporation was a book binding company that had developed a proprietary approach for teaching children how to read and write. This approach was called Defining Literacy Levels or “DLL” for short. An “archive.org” screenshot of the website then linked to the Disputed Domain Name dated December 7, 1998 (which is the earliest record available on “archive.org”) shows the following: “Story House Corporation has developed an approach for teaching children to read and write, which involves Defining Literacy Levels. Using enjoyable activities and leveled books, the DLL Method is the most effective way to teach individualized reading to all students. DLL is a unique program which precisely matches the level and theme of a literary work to a student’s”.

The Respondent registered the Disputed Domain Name for use by this company in this way, which supports a finding of rights or legitimate interests in Story House Corporation from the time the Disputed Domain Name was registered in 1995 to its winding up in 2002. The Respondent asserts that as a part of the dissolution of Story House Corporation, some of its assets such as the Disputed Domain Name were transferred to the Respondent. It is not entirely clear to the Panel what the relationship between Story House Corporation and the Respondent was, but the Panel does not consider this matters – the registration of the Disputed Domain Name has at all times been in the Respondent’s name and if, prior to 2002, he was holding it and acting on behalf of Story House Corporation this is, in the opinion of the Panel, still sufficient to amount to use of the Disputed Domain name in connection with a bona fide offering of goods or services (if on their behalf from 1995 to 2002). Accordingly, the Panel finds that the Respondent has established a legitimate interest.

Note that in any event even if the relevant date for assessment of this issue is taken to be 2002 (when the Respondent says Story House Corporation’s interest in the Disputed Domain Name was transferred to him) the Panel would still have concluded a legitimate interest was established in the registration of a simple three letter acronym (given that the Respondent had no knowledge of the Complainant and this was in any event long before it adopted the term “DLL” – see below). See in this regard the discussion about three letter acronyms by this Panel in ETH Zürich (Eidgenössische Technische Hochschule Zürich) v. Andre Luiz Silva Rocha, Construtora Norberto Odebrecht S/A, WIPO Case No. D2016-0444.

Accordingly the Complainant has failed to establish that the second condition of paragraph 4(a) of the Policy has been fulfilled.

C. Registered and Used in Bad Faith

Whilst the Panel’s finding under Section B above is sufficient to enable a conclusion to be reached in relation to this Complaint, the Panel also finds that there is no evidence to suggest that the Disputed Domain Name has been registered and used in bad faith. The Complainant has made a large number of conclusory statements as to its fame and reputation particularly in relation to the letters “DLL” but these statements are simply not supported by any evidence. As identified above the Complainant’s registered rights in the letters “DLL” as a word mark date from 2007, long after the Disputed Domain Name was registered. There is no evidence at all of any use by the Complainant of the letters “DLL” on their own, or as its name, before this date. As the Respondent correctly notes, the Complaint itself states that the Complainant has been using the term “DLL” for ten years – which is consistent with this analysis. The Panel does not accept, for reasons discussed above, that the evidence of record provides any foundation for any rights in the letters “DLL” based on the DE LAGE LANDEN Word/Device mark, still less that the Respondent should have been aware of these letters as connected with the Complainant when he registered the Disputed Domain Name. So far as the various allegations as to the Complainant’s general rights and goodwill in the term “DLL” are concerned, the Panel agrees with the view expressed in WIPO Overview 3.0, section 1.3 (in relation to rights but equally applicable to assessing bad faith) that “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.” The Complainant appears to operate in a specialized area in the financial services sector and it seems fanciful in the extreme to suggest the Respondent chose the Disputed Domain Name in 1995, because of any perceived connection with the Complainant, given there is no credible evidence suggesting why the Respondent should have been aware of the Complainant at all, still less why he would have identified it as having any rights or reputation in the letters “DLL”.

If the Respondent had no knowledge of the Complainant when registering the Disputed Domain Name then bad faith cannot be established. It does not matter what the Respondent’s knowledge was when renewing the registration of the Disputed Domain Name, although on the evidence before the Panel there is no reason to doubt the Respondent’s account that the first time he heard of the Complainant was when he received the Complaint.

There is no evidence suggesting the Respondent has registered other domain names in bad faith (see further below) and the Complainant’s arguments in this regard do not succeed.

The Panel does not accept that the Respondent’s reply to an unsolicited enquiry seeking to purchase the Disputed Domain Name by itself supports a finding of bad faith. If the Disputed Domain Name belongs to the Respondent and was not registered in bad faith then all things being equal he is entitled to ask what he likes for it, including what is clearly an unrealistically large sum (USD 100 million) seeking (according to the Respondent) to deter frivolous enquiries.

Accordingly the Complainant has failed to establish that the third condition of paragraph 4(a) of the Policy has been fulfilled.

In the light of this finding the Panel does not need to determine the Respondent’s further arguments as to laches.

D. Reverse Domain Name Hijacking

Paragraph 15(e) of the Policy 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. In Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing, WIPO Case No. D2005-0309, the majority of the three-member panel noted that the onus of proving that a complainant has acted in bad faith is on the respondent, and that mere lack of success of the complaint is not of itself sufficient to constitute reverse domain name hijacking. The majority went on to note that: “Allegations of reverse domain name hijacking have been upheld in circumstances where a respondent’s use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy (see Goldline International, Inc v. Gold Line, WIPO Case No. D2000-1151). See also Deutsche Welle v. DiamondWare Limited, WIPO Case No. D2000-1202, where an allegation of reverse domain name hijacking was upheld in circumstances where the complainant knew that the respondent used the at-issue domain name as part of a bona fide business, and where the registration date of the at-issue domain name preceded the dates of the complainant’s relevant trademark registrations.”

The three-member panel in Yell Limited v. Ultimate Search, WIPO Case No. D2005-0091 noted that whether a complainant should have appreciated at the outset that its complaint could not succeed will often be an important consideration.

In the view of the Panel this is a complaint which should never have been launched. The Complainant should have appreciated that establishing registration and use in bad faith in respect of a domain name which had first been registered many years previously and which was a three-letter acronym was likely to involve difficult considerations. The Complainant appears to have ignored any such considerations and based its case entirely upon conclusory allegations unsupported by any evidence. It ought to have been apparent to the Complainant or its advisers that its case to have rights in the term “DLL” as at the date the Disputed Domain Name was registered was (on the evidence presented to the Panel) non-existent, and it should then either have sought further and better evidence or decided not to proceed with the Complaint. Instead it did proceed with the Complaint and simply relied upon unsupported conclusory allegations. Further if the Complainant had made sensible further enquiries (such as searching “archive.org”) it would have found out the Respondent had a case of legitimate interest. In addition had it approached the Respondent openly before launching this Complaint it would also likely have been informed of this position – instead it made an anonymous unsolicited approach to purchase the Disputed Domain Name and when that was rebuffed simply launched the present Complaint.

The Panel’s views in this respect are reinforced by the Complainant’s allegation that the Respondent has registered other domain names in bad faith. A single example is relied upon by the Complainant (<fatboydesigns.co.uk>). However the only evidence linking this domain name to the Respondent is the registrant name “Steve Thomas” and the Respondent categorically denies that this is anything to do with him and says he would have no interest in such a domain name and this is clearly some other “Steve Thomas”. “Steve Thomas” does not seem to the Panel to be an unusual name and it should have been apparent to the Complainant that a case advanced on the basis that the Respondent had a propensity to register domain names in bad faith needed far more persuasive evidence that the coincidence of registrant name in one other domain name.

In all the circumstances the Panel agrees with the Respondent that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

7. Decision

For the foregoing reasons, the Complaint is denied. The Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

Nick J. Gardner
Sole Panelist
Date: December 7, 2017


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