John Berryhill defends GNP.com in #UDRP at the WIPO

IP attorney, John Berryhill, was the attorney representing the owner of GNP.com. The aged three letter .com domain was the subject of a UDRP filed by Grupo Nacional Provincial, S.A., Mexico, a large Mexican insurance provider.

In the UDRP, the Complainant stated they operate in Mexico since 1907, predating the domain’s registration by 84 years. The domain was registered in 1991, making this UDRP a record-breaking 30 year case since the domain’s registration!

The Respondent stated the following, in part:

The Disputed Domain Name is a non-distinctive three-letter acronym which has multiple possible uses, most obviously as a well-known acronym for the term “gross national product”. The Respondent purchased it for its value as an acronym and not because of any possible connection with the Complainant. The Complainant’s business and reputation appears to be entirely confined to Mexico and the Respondent had no knowledge of the Complainant or its use of the acronym GNP when he obtained the Disputed Domain Name.

The Respondent concedes there may be short acronyms which are so well known they are referable to a given company (such as IBM, BMW, VW and BBC) but says the Disputed Domain Name and the Complainant are not in that category. The Complainant’s reputation appears entirely confined to Mexico and it does not have a monopoly right elsewhere in the acronym “GNP”.

Yancy Naughton, the Respondent, made a solid choice to have the domain GNP.com defended in the UDRP, as such cases can be lost when a response is not filed.

A three member panel found no indication of bad faith in the domain’s registration and use. Final decision: Deny transfer of GNP.com to the Complainant.

The domain transfer was denied.

Grupo Nacional Provincial, S.A. v. Privacydotlink Customer 4270030 / Yancy Naughton
Case No. D2021-1136

1. The Parties

The Complainant is Grupo Nacional Provincial, S.A., Mexico, represented by Legarreta y Asociados, Mexico.

The Respondent is Privacydotlink Customer 4270030, Cayman Islands, United Kingdom / Yancy Naughton, Czech Republic, represented by John Berryhill, Ph.d., Esq., United States of America.

2. The Domain Name and Registrar

The disputed domain name <gnp.com> (the “Disputed Domain Name”) is registered with GoDaddy Online Services Cayman Islands Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 13, 2021. On April 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 15, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 3 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 7, 2021.

The Center sent an email communication to the parties on May 3, 2021 regarding the language of the proceeding, as the Complaint has been submitted in Spanish and the language of the registration agreement for the disputed domain name is English. The Complainant submitted a request for Spanish to be the language of the proceeding on May 7, 2021. The Complainant filed a translated Complaint on June 4, 2021, 2021. The Respondent submitted a request for English to be the language of the proceeding on May 6, 2021.

The Center verified that the Complaint, together with the amended Complaint and the translated 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 June 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 1, 2021. The Response was filed with the Center July 1, 2021.

The Center appointed Nick J. Gardner, Kiyoshi Tsuru and Gerald M. Levine as panelists in this matter on August 12, 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.

4. Factual Background

The Complainant is a large Mexican insurance company which has existed since 1907. The filed evidence establishes it has a substantial business in Mexico and is widely known in Mexico by its acronym “GNP” and it trades under and by reference to that term. It has a Mexican trademark for the term GNP in stylised form (registration no 959948 from October 30, 2006) as well as several other Mexican trademarks which include the term GNP with other words such as “Insurance”. These trademarks are discussed further below.

The Respondent is an individual who divides his time between the United States of America and the Czech Republic. He operates a business via a website linked to the domain name <namerefic.com>. That business offers for sale what it describes as “Unique and brand-worthy ‘.Com’ domain names with logos for your new business”. As this description suggests it offers a range of domain names for immediate purchase each accompanied by a ready designed logo of some sort. It offers a wide range of generic names including a number of three letter acronym domain names. At the time of this decision the website offered approximately 25 three letter acronym domain names, including the Disputed Domain Name.

The Disputed Domain Name was originally created on August 27, 1991. At one stage it was linked to what appears to be an automatically generated “parking page” containing links to third party websites. It now resolves to a “namerefic” for sale page indicating that it is offered for sale in the manner described above.

5. Parties’ Contentions

A. Complainant

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

It then says that the Respondent has no rights or legitimate interest in the term GNP. It says the Respondent “intentionally chose to register the disputed domain name based on the fame of the [Complainant’s] name and registration in order to generate more traffic to the website and to be able to make the consuming public believe that it has some kind of relationship with the [Complainant] and thus make itself economic resources that do not correspond to it for the sale of advertising”.

The Complainant says that the Respondent’s registration and use is in bad faith because it “was based on the notoriety of the GNP brand itself, with the aim of obtaining an undue profit by offering exclusive advertising services for Mexican insurers”. It also relies on the Respondent having concealed his identity by using a privacy service.

B. Respondent

The main points the Respondent makes are as follows.

The Disputed Domain Name is a non-distinctive three-letter acronym which has multiple possible uses, most obviously as a well-known acronym for the term “gross national product”. The Respondent purchased it for its value as an acronym and not because of any possible connection with the Complainant. The Complainant’s business and reputation appears to be entirely confined to Mexico and the Respondent had no knowledge of the Complainant or its use of the acronym GNP when he obtained the Disputed Domain Name.

The Respondent says that so far as the term GNP features in the Complainant’s trademarks it is a non-distinctive element within the trademark in question and the Complainant cannot rely on it to establish identity or confusing similarity (see Panel discussion below).

The Respondent provides evidence which shows that he has a business model which comprises acquiring generic domain names, including three letter acronyms, and then typically creates a logo to go with such domain names and prepares a custom “sales pitch” for each domain name. The Respondent says he operates the “namerific.com” website which shows how this business model works. He provides evidence of the transaction where he purchased the Disputed Domain Name (together with the domain name <lop.com>). He says that nowhere in this purchase discussion was there any indication that the Disputed Domain Name had anything to do with the Complainant.

The Respondent says that the parking page the Complainant relies upon was not the normal behaviour of the Disputed Domain Name and he does not understand how that occurred. He challenges whether the evidence about this page and how it was obtained is accurate and complete. He goes into considerable detail about this issue but ultimately the Panel does not think it matters (see below).

The Respondent concedes there may be short acronyms which are so well known they are referable to a given company (such as IBM, BMW, VW and BBC) but says the Disputed Domain Name and the Complainant are not in that category. The Complainant’s reputation appears entirely confined to Mexico and it does not have a monopoly right elsewhere in the acronym “GNP”.

The Respondent says in any case it would not have made sense to purchase the Domain Name for a substantial sum in order to use it to attract advertising by diverting potential customers to other Mexican insurance companies as the likely value of revenue earned from that activity would be minimal.

6. Discussion and Findings

Preliminary Matters

The Panel notes this is a case where one Respondent (“Privacydotlink Customer 4270030, United Kingdom”) appears to be an alias generated by a privacy or proxy service.

The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:

“Panel discretion

In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.

Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.”

In the present case the Panel considers the substantive Respondent to be Yancy Naughton and references to the Respondent are to that person.

In accordance with paragraph 11 of the Rules, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The Registrar has confirmed that the language of the Registration Agreement is English. In the circumstances of this case, the Panel determines English as the language of the proceeding.

Substantive Matters

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 has not found the Complainant’s evidence as to its registered trademarks entirely easy to follow. It clearly owns at least one registered trademark for the term GNP but this appears to be for the term in stylised form. It also appears to own registered trademarks for the term in combination with other words.

The Respondent draws attention to Limited Liability Company Infomedia v. Eurofirm Ltd. WIPO Case No. D2010-1239 where the panel says as follows:

“While panel approaches in assessing confusing similarity between a domain name and a trademark comprising a combination device and word mark can vary, certain commonalities are apparent to this Panel. These include where a combination trademark features a prominent design with a commonly used or generic word beside it, making a literal comparison of the trademark and the relevant domain name, considering the overall impression given by the mark, taking into account as appropriate the strength of the word mark element which is being directly compared with the domain name and considering the relevant prominence of the word mark element in the context of the overall impression given by the trademark. In other instances, particularly where the word component of the relevant mark has not been disclaimed as such, panels have found it appropriate to disregard the device element, and limited the comparison to one between the textual component of the relevant mark and the alphanumeric string in the disputed domain name. This is usually said to be because such disregarded device element is generally incapable of representation in a domain name, or because the word component of the combined mark may still have some distinguishing value sufficient to convey standing rights for the purpose of the Policy or because all components of the relevant mark capable of incorporation in a domain name have been so incorporated. See e.g. RUGGEDCOM, Inc. v. James Krachefels, WIPO Case No. D2009-0130. However, the latter approach may be less common in cases in which the device element forms a particularly prominent part of the relevant trademark, and the word element is a common or dictionary term. Indeed, in cases where the word element is a common or dictionary term and not inherently distinctive, panels have noted that there may be an onus on the complainant to present the panel with compelling evidence of secondary meaning and distinctiveness through extensive use. See e.g. Dreamstar Cash S.L. v. Brad Klarkson, WIPO Case No. D2007-1943.”

The Respondent says that the letters GNP are not in themselves distinctive and points out there are over 600 trademarks on the European Union Intellectual Property Office (“EUIPO”) trademark database which include the letters GNP.

Ultimately given the Panel’s findings below this point does not matter. However the Panel thinks that on balance it is likely that the Complainant’s reputation within Mexico is such that it is entitled to rely on the letters GNP as part of its stylised trademark. It is well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed 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 Panel finds that the Disputed Domain Name is identical or confusingly similar 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 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 considers a domain name comprising a three-letter combination could readily be purchased for its inherent value as a general acronym and sees no clear evidence on the record in this case to suggest that was not the case. As a general rule it is likely that in such cases the registration will be for bona fide purposes. That would seem to be so as a matter of common sense and it is supported by previous UDRP decisions dating from the very beginning of the UDRP.

Thus for example in Kis v. Anything.com Ltd., WIPO Case No. D2000-0770 (<kis.com>) the legitimate interest in short letter domain names was confirmed by that panel’s statement that:

“The Domain Name at issue here is a three-letter second-level domain within the popular ‘.com’ top-level domain. All or nearly all of the three-letter names have long been taken; respondent itself holds a number of other short domain names (as reflected in Network Solutions’ Whois database), including ‘an.com’, ‘hw.com’, ‘vz.com’, ‘xv.com’, ‘yz.com’, ‘zw.com’, ‘aex.com’, ‘fii.com’, ‘ldn.com’, ‘lna.com’, ‘mhi.com’, ‘nnc.com’, ‘otl.com’, ‘tbj.com’, ‘tca.com’, ‘ukt.com’, ‘vaz.com’, ‘vdj.com’, ‘wla.com’, and probably many more. Respondent appears to have selected the Domain Name ‘kis.com’ because of its length (if not because it represents an acronym for the Korean Information Site), rather than because it corresponds to Complainant’s trademark — indeed, it seems unlikely that Respondent was even aware of Complainant’s trademark when it selected the domain name.”

See also Trans Continental Records, Inc. v. Compana LLC, WIPO Case No. D2002-0105; Banca Monte dei Paschi di Siena S.p.A v. Charles Kirkpatrick, WIPO Case No. D2008-0260; Dumankaya Yapi Malzemeleri v. Name Administration Inc. (BVI), WIPOCase No. D2015-1757; Instrumentation Northwest, Inc. v. INW.COM c/o Telepathy, Inc. WIPO Case No. D2012-0454; and R.V. Kuhns & Associates, Inc. v. Gregory Ricks WIPO Case No. D2014-2041 all to similar effect.

The Panel accepts (and the Respondent concedes) that the right to register such acronyms cannot be unlimited. Knowing of a complainant’s trademark, registering a domain name to copy the trademark or using it to trade off it or to target the trademark owner or act inappropriately towards it must put the registrant in a different position and put at risk its claim to have a right or legitimate interest in the domain name. But in the absence of such factors, and none are present in this case (as to which see further below) the registrant has as much right as anyone else to use expressions such as acronyms, generic, dictionary words or other domain names made up from a small number of letters.

In this regard the Panel has considered the points made by the Complainant as to its fame and reputation. The evidence establishes the Complainant is a substantial insurance company in Mexico and is likely widely known in that country by the acronym GNP. Conceivably it might be recognised elsewhere by others involved in the insurance business, although the evidence does not clearly establish that is the case. However the evidence does not come anywhere close to establishing that the term GNP was so well-known as to mean a third party based outside Mexico, and operating in a completely different field, either was or should have been aware of the Complainant and its use of the term GNP. In short there is no applicable evidence on the record to suggest that the Respondent had any knowledge of the Respondent when he acquired the Disputed Domain Name.

As discussed at section 2.10.2 of WIPO Overview 3.0: “For a respondent to have rights or legitimate interests in a domain name comprising an acronym, the respondent’s evidence supporting its explanation for its registration (and any use) of the domain name should indicate a credible and legitimate intent which does not capitalize on the reputation and goodwill inherent in the complainant’s mark.”

The Panel considers that is the case here – the Respondent has a legitimate interest in marketing domain names together with custom designed logos when those names have been chosen for their generic nature and do not seek to capitalize on the Complainant’s trademark.

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 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. It is abundantly clear to the Panel that the Respondent purchased the Disputed Domain Name because of its value as a generic three-letter acronym and not because of any connection with the Complainant. The Panel sees no reason to disbelieve the Respondent when he says he had never heard of the Complainant and the contemporaneous correspondence corroborates that fact. The Respondent offering the Disputed Domain Name for sale as part of his “namerific” business is a bona fide business activity and does not amount to bad faith use.

So far as the other factors relied upon by the Complainant are concerned use of a privacy service may or may not be a relevant factor in determining bad faith. As noted at section 3.6 of WIPO Overview 3.0: “There are recognized legitimate uses of privacy and proxy registration services; the circumstances in which such services are used, including whether the respondent is operating a commercial and trademark-abusive website, can however impact a panel’s assessment of bad faith”. In the present case the Respondent is clearly operating a legitimate business and is entitled to use a privacy service if he wishes – it does not support a finding of bad faith.

So far as the parking page relied upon by the Complainant is concerned it is unclear exactly when and why that page was displayed, because the evidence submitted by the said Complainant does not contain any reference to a particular, certain date, and therefore the probative value of this evidence is low. In any event the Panel doubts that in circumstances where a domain name has been legitimately acquired for its generic properties, linking that domain name to a parking page which automatically generates links to third party websites based on the generic properties of the domain name is unlikely to amount to bad faith use. The Panel concludes that in this case the parking page in question does not support any finding of bad faith.

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

7. Decision

For the foregoing reasons, the Complaint is denied.

Nick J. Gardner
Presiding Panelist

Kiyoshi Tsuru
Panelist

Gerald M. Levine
Panelist
Date: August 26, 2021

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