BODIS

#Rolyn .com : Twenty-three year old #domain saved at the #WIPO

UDRP has been denied.

The aged domain, Rolyn.com, was registered in 1995 – at the dawn of the commercial Internet.

Rolyn Companies Inc. of Rockville, Maryland, challenged its registrant, who is based in Korea. The UDRP was filed at the WIPO and the Respondent was represented by ESQwire.com.*

A trademark for ROLYN was registered in 2011 by the Complainant. That’s a good 16 years after the registration of Rolyn.com.

According to the complaint, the Complainant attempted to buy the domain, offering $10,000 dollars. The Respondent wanted $38,000 dollars in order to sell Rolyn.com.

In this case, the Respondent stated that the domain was acquired at an expired domain auction. According to Namebio, that was for $1,515 dollars on NameJet. It was purchased as comprising a short and valuable “.com” domain name comprising either a first or last name to which no-one could claim exclusive rights.

The Complainant disputed the name’s popularity, but the Respondent filed this additional part:

“The Respondent reasserts that the Complainant has resorted to a proceeding under the Policy because its offer for the disputed domain name was unsuccessful. The Respondent says the case does not hinge on whether the name Rolyn is popular, as the Complainant partly asserts, but on its being short and memorable. There is no evidence that the Korean Respondent had any reason to know of the Complainant and no evidence the Respondent has targeted the Complainant.”

A three member panel at the WIPO delivered a decision favoring the Respondent, and ordering the domain Rolyn.com to remain with them.

*Note: ESQwire.com is a premium sponsor of DomainGang. This document is public information, as released by the WIPO newsletter, and does not constitute an endorsement.

Full details of this UDRP decision follow:

Rolyn Companies Inc. v. Mediablue Inc.
Case No. D2018-0072

1. The Parties

The Complainant is Rolyn Companies Inc. of Rockville, Maryland, United States of America (“United States”), represented by Sughrue Mion, PLLC, United States.

The Respondent is Mediablue Inc. of Gwang-Ju, Republic of Korea, represented by ESQwire.com PC, United States.

2. The Domain Name and Registrar

The disputed domain name <rolyn.com> is registered with Uniregistrar Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2018. On January 15, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 16, 2018, 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 January 17, 2018 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 January 22, 2018.

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 the Respondent of the Complaint, and the proceedings commenced on January 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 15, 2018. On February 11, 2018, the Respondent requested an automatic four-day extension of the deadline to file a Response. The Center granted the requested extension and confirmed that the new deadline for Response was February 19, 2018. The Response was filed with the Center on February 19, 2018.

On February 25, 2018, the Center received an unsolicited Supplemental Filing from the Complainant. On March 5, 2018, the Center received an unsolicited Supplemental Filing from the Respondent.

The Center appointed Dr. Clive N.A. Trotman, Jonathan Agmon and The Hon Neil Brown Q.C. as panelists in this matter on March 19, 2018. 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 Maryland company providing disaster recovery services including restoration, remediation, decontamination, infection control, disinfection and mould remediation. The name “Rolyn” is derived from Ron and Lyn, being the company founder and his wife. The company was formed or registered on January 18, 1982.

The Complainant holds the following trade or service marks (“trademarks”):

ROLYN, United States Patent and Trademark Office (“USPTO”), principal register, filed December 21, 2010, registered July 26, 2011, registration number 4002389, classes 37, 40;

R ROLYN, illustration drawing, USPTO, principal register, filed December 21, 2010, registered July 26, 2011, registration number 4002390, classes 37, 40.

The Complainant holds the domain names <rolyncompanies.com>, <rolyn.co>, <rolyn.us>, <rolynco.co>, <rolynco.com>, <rolynco.us>, <rolyncompanies.co> and <rolyncompanies.us>.

The Respondent trades in domain names and specialises in generic and descriptive words and in 3 and 4 letter domain names, particularly in the “.com” generic Top-Level Domain (“gTLD”). The registration of the disputed domain name, which had been first registered on September 3, 1995, was allowed to lapse when its previous registrant Rolyn Optics Co. ceased business, and was auctioned. It was registered in the name of Perfect Privacy LLC on September 4, 2017, and in the name of the Respondent on October 11, 2017. On October 13, 2017, enquiries about buying the disputed domain name from the Respondent were made by or on behalf of the Complainant. Recently the disputed domain name has been parked and offering links that may earn advertising revenue.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions include the following.

The Complainant says the disputed domain name <rolyn.com> is identical to the Complainant’s trademark ROLYN, which is a portmanteau word and a fanciful trademark.

The Complainant further contends that the Respondent has no rights or legitimate interest in respect of the disputed domain name. The Complainant’s trademark was registered seven years earlier. The Respondent has not been permitted to use the Complainant’s trademark in any way. The Respondent is not known by the disputed domain name and the use of it is not noncommercial or fair and without intent for commercial gain. The disputed domain name resolves to a website that offers links for which the Respondent is paid. A search facility on the website may produce results that include the Complainant’s competitors. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services.

The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The Respondent must have had knowledge of the Complainant’s trademark rights. Bad faith is evidenced by the Respondent’s provision of advertising links. Again, users can find the Complainant’s competitors through the search facility provided.

The Complainant says it contacted the Respondent with a view to purchasing the disputed domain name with an offer of USD 3,000, which was raised to USD 5,000 and finally to USD 10,000. The Respondent wanted USD 38,000.

The Complainant says that contrary to the list of domain names in which the Respondent says its rights had previously prevailed when challenged, these were different in being descriptive in nature and less distinctive than the Complainant’s coined and fanciful trademark, which an Internet search shows to refer only to the Complainant.

The Complainant says the Respondent, although in the Republic of Korea, has links with the United States because the email address through which negotiations were conducted is registered to a United States address. The Respondent had at least constructive notice of the Complainant’s trademark. As a domain name broker, the Respondent should have searched for the Complainant’s trademark.

The Complainant alleges that the Respondent transferred the registration of the disputed domain name to a privacy service after being contacted by the Complainant.

The Complainant has cited certain previous decisions under the Policy that it considers to support its position.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent denies the Complaint. The extensive Response is summarised below and in a Declaration under penalty of law for making false statements signed on February 2, 2018 by the person who is the legal representative and owner of the Respondent.

The Respondent says it accepts the validity of the Complainant’s trademarks.

The Respondent contends that it does have rights and a legitimate interest in the disputed domain name, which has a common meaning as a first or last name and is not exclusively associated with the Complainant. Having expired after 22 years of previous ownership, the disputed domain name was acquired in September 2017 at auction. It was purchased as comprising a short and valuable “.com” domain name comprising either a first or last name to which no-one could claim exclusive rights. The Respondent’s business is to register generic and descriptive 3 letter, 4 letter, and other short and easily memorable domain names such as <ancot.com>, <aktan.com>, <rosum.com>, <malbi.com>, <ralio.com>, <bedon.com>, <catra.com>, <sason.com>, <waiko.com>, <abeto.com>, <anshe.com>, <bikel.com>, <roask.com>, <hoson.com>, <avato.com>, <nanix.com>, <meblo.com>, <koron.com>, <bomie.com> and <prome.com>.

The Respondent submits that a short, descriptive or dictionary word may be used legitimately as a domain name even if it is similar or identical to another’s trademark, provided it is not the intention to take advantage of the trademark.

The Respondent says it operates in the Republic of Korea, its owner does not live in the United States and did not have the Complainant’s trademark in mind. It did not register the disputed domain name with intent to sell to the Complainant, or to disrupt the Complainant’s business, or to confuse Internet users looking for the Complainant’s website.

The Respondent says it places stock domain names with parking services that generate advertising revenue, as is widely done.

The Respondent says the links offered on its website at the disputed domain name are automatically generated and the Respondent did not select links with intent to profit from the Complainant’s trademark. The website does not provide any links to the Complainant and the links are related to the categories “Baby or Infant” naming, “First Names” and “Genealogy”. The Respondent says it has not targeted the Complainant’s trademark, and that its use of the disputed domain name is in connection with a bona fide offering of goods and services.

The Respondent further contends that the disputed domain name was not registered or used in bad faith. It says the Complainant’s possession of a trademark was not a reason why the Respondent should not acquire the disputed domain name at auction. It cannot be argued that the Respondent had constructive knowledge of the Complainant’s trademark or targeted the Complainant. The Respondent denies it is a cybersquatter and says it purchases descriptive domain names that come up for sale. The Respondent submits that, in line with previous decisions under the Policy, “the expiration of a domain name raises the presumption that any trademark rights in such domain name have been abandoned, signalling to prospective registrants that it is available and can be registered in good faith”.

The Respondent says, with reference to paragraph 4(b)(iv) of the Policy, that its links in the categories “Baby or Infant” naming, “First Names” and “Genealogy” do not target the Complainant’s business and do not create confusion of Internet users between the Complainant and the Respondent. The provision of the general search facility available on the Respondent’s website is not a targeting of the Complainant.

The Respondent asks for a finding of Reverse Domain Name Hijacking because the Complainant could not have succeeded in this proceeding and has made the Complaint after having failed to buy the disputed domain name at a price acceptable to it.

The Respondent has cited a number of previous decisions under the Policy that it considers to support its position.

C. Complainant’s Supplemental Filing

The Complainant says, among other things, the name Rolyn is not a personal name and surname or descriptive as the Respondent asserts. The Complainant annexes a number of database search results to the effect that the surname Rolyn is extremely rare in the United States, the United Kingdom, Australia and New Zealand and very rare as a baby name. According to “www.ancestry.com”, the surname has appeared in historic times.

The Complainant says the Respondent has not produced evidence of its statement that the name Rolyn has many users on Twitter and Facebook. The word is not descriptive and does not appear in any dictionary. Cases cited by the Respondent of domain names based on common descriptive words therefore do not apply here.

The Complainant contests the Respondent’s claim that the other domain names in its list (section 5B, above) do not correspond to any trademarks, and attached Saegis database records showing the first 4 to correspond to trademarks in multiple jurisdictions.

The Complainant says the previous owner of the disputed domain name, Rolyn Optics Company, did not use “Rolyn” in a descriptive sense but as a business name.

The Complainant quotes from section 3.2.3 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), to the effect that the Respondent should have made positive searches to check that the disputed domain name did not conflict with a trademark. Furthermore, being in the business of trading in domain names, the Respondent ought reasonably to have been expected to check on related trademark rights before registering the disputed domain name.

The Complainant denies Reverse Domain Name Hijacking.

D. Respondent’s Supplemental Filing

The Respondent reasserts that the Complainant has resorted to a proceeding under the Policy because its offer for the disputed domain name was unsuccessful. The Respondent says the case does not hinge on whether the name Rolyn is popular, as the Complainant partly asserts, but on its being short and memorable. There is no evidence that the Korean Respondent had any reason to know of the Complainant and no evidence the Respondent has targeted the Complainant.

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:

“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith”.

The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.

Paragraph 12 of the Rules provides that the Panel, in its sole discretion, may request further statements or documents from either of the Parties. Unsolicited supplemental filings should not be necessary. As the then panelist stated in the decision in Grove Broadcasting Co. Ltd v. Telesystems Communications Limited, WIPO Case No. D2000-0703, in a different context: “A Complainant should ‘get it right’ the first time and should have provided all the information necessary to prove its case from the material contained in the Complaint and its annexes alone. There is no right of reply under the Rules.” The Panel did not find that the Supplemental Filings provided evidence that could not have been produced in the first instance. Exceptionally, since the dispute is strongly contested, the Panel considers it to be in the interests of natural justice to admit the Supplemental Filings.

A. Identical or Confusingly Similar

The Panel finds the disputed domain name <rolyn.com>, disregarding the gTLD “.com”, to be identical to the Complainant’s registered trademark, and accordingly finds for the Complainant under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has asserted that the Respondent has no rights or legitimate interests in respect of the disputed domain name and has not been permitted to use the Complainant’s trademark in any way.

Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:

“(i) before any notice to you 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 (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 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 Complainant argues that the Respondent cannot qualify under the provisions of paragraph 4(c) of the Policy as having rights or legitimate interests in the disputed domain name because the website to which it resolves offers remunerated links and a search facility that may lead to the Complainant’s competitors; the Respondent is not commonly known by the disputed domain name; and its use is not noncommercial or fair and without intent for commercial gain.

The provisions of paragraph 4(c) of the Policy are without limitation. The Respondent claims rights and legitimate interests essentially on the basis of having purchased the disputed domain name at auction after its expiry in the hands of the previous owner, which had ceased business. The essence of the Complainant’s argument is that the Respondent cannot have rights or legitimate interests in a domain name comprising the entirety of the Complainant’s registered trademark, and furthermore, that the Complainant’s trademark is a unique and distinctive coined word.

The question of the Respondent’s rights or legitimate interests in the disputed domain name impinges to a large extent in this case on whether the Complainant can establish that the Respondent has acted in bad faith. The Panel will therefore move to the consideration of bad faith before returning to rights and legitimate interests.

C. Registered and Used in Bad Faith

The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.

The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found alternatively by the Panel.

The Complainant says that the Respondent has, within the meaning of paragraph 4(b)(i) of the Policy, intended primarily to sell the disputed domain name profitably to the Complainant. For that to be so, the Respondent may be shown to have targeted specifically the Complainant, or that the Respondent’s intent in registering the disputed domain name was in fact to profit in some fashion from or otherwise exploit the Complainant’s trademark, for which the onus of proof is upon the Complainant.

The Panel, in the exercise of its powers to consult publicly available information (WIPO Overview 3.0, section 4.8) has verified that the Complainant’s two trademarks, ROLYN and R ROLYN, are the only live examples found in searches of the USPTO and TMview (“www.tmdn.org”) trademark databases.

The Complainant says the word “Rolyn” can only refer to its fanciful trademark ROLYN. In support it has produced evidence, among other, that: since 1900 Rolyn has not been in the top 1000 personal names (“www.ssa.gov/cgi-bin/babyname.cgi”); only 7 instances of Rolyn as a surname in the United States are recorded in Whitepages (“www.whitepages.com”); the England and Wales 1911 census recorded 2 instances of Rolyn as a first name and one as a surname (“www.search.findmypast.co.uk”); Rolyn has not appeared as a baby name in England and Wales since 1996 (“www.names.darkgreener.com”); Rolyn is recorded 3 times as a first name in certain 20th century Australian records (“recordsearch.naa.gov.au”); in recent years Rolyn has been adopted as a first name between about 2 and 9 times per million babies (“www.babycenter.com). A search of “www.ancestry.com” records, pertaining to such databases as it has trawled, listed 73 historic occurrences of the surname or sole name “Rolyn” (some in the form “Rolÿn”, some may be duplicated) in records dating back some centuries.

The Complainant’s case that the name and trademark ROLYN is rare is reasonably substantiated. Conversely, according to the Panel’s examination of public trademark databases, the name “Rolyn” is not exclusive and the trademark ROLYN has been a registered trademark or may have acquired common law rights on previous occasions. Between June 15, 1982 (application date April 23, 1979) and January 28, 1989, United States individual Robert M. Lynn held a USPTO registration for the trademark ROLYN in classes 1 and 9 related to photography. Between June 17, 1975 (application date September 6, 1973) and March 25, 1996, United States company Chrisp Manufacturing Company held a USPTO registration for the trademark ROLYN in class 7 related to agricultural tools.

A slight variant of the Complainant’s Google search for “Rolyn”, in that it was repeated by the Panel through “www.google.com/ncr” (“no country redirect”), yielded on page 1 the domain name <rolyn.me>, which has been registered to a Rolyn Barthelman with a United States address since January 5, 2012. On subsequent pages were Rolyn Engineering (Pty) Ltd., of Rustenburg, South Africa; “Rolyn | FanFiction”, with the description “Rolyn is a fanfiction author that has written 38 stories for Pokémon, Teen Titans, Avatar: Last Airbender, iCarly, Iron Man: Armored Adventures, X-Men: The Movie, and Codename: Kids Next Door”; a Spanish holiday accommodation “Villa Rolyn with private pool nr Moraira sleeps 6”; two different websites, “www.sevenreflections.com/name/rolyn/” and “www.kabalarians.com/f/rolyn.htm”, each purporting to associate the name Rolyn (and other names) with the holder’s personal characteristics; Rolyn Golf Trails, of Chatham, Ontario, Canada; Rolyn Security Group Inc., “a locally owned and operated Security Agency here in Central Alberta”; and the Rolyn Prest brand of medical appliances and dressings. The Panel looked no further.

The Respondent concedes that the disputed domain name was acquired as prospectively valuable, i.e., saleable, in accordance with its normal business. As shown in the preceding paragraph, the Complainant is not the Respondent’s only potential customer for the disputed domain name and other entities exist that might well find it valuable to them. There is no evidence of the Respondent having approached the Complainant with an offer to sell, although domainers have long realised it may be fatal to do so and tend to bide their time. There is no evidence the Respondent knew of the Complainant, but equally there is no evidence it did not know and the concept of constructive knowledge is applied sparingly under the Policy (WIPO Overview 3.0, section 3.2.2). It might reasonably be surmised that a prudent dealer in domain names would investigate the prospective market, and as the Complainant quotes, domainers “have an affirmative obligation to avoid the registration of trademark-abusive domain names” (WIPO Overview 3.0, section 3.2.3). As the same section also comments, however, “the mere fact of certain domain names proving identical or confusingly similar to third-party trademarks pursuant to a search does not however mean that such registrations cannot as such be undertaken or would automatically be considered to be in bad faith”.

Thus, the Complainant (which must tip the balance of probabilities in its favour in order to succeed) has submitted a good case that its registered trademark is fanciful and based on an uncommon word. “Rolyn” is not, however, exclusive as a business name, has been in use by others and is so, and has the potential to be or to become at least a common law trademark of entities in other fields of business, if not a registered trademark. The Complainant must prove that the Respondent registered the disputed domain name with the Complainant’s trademark in mind.

What happened, in the Panel’s overview, is that the Complainant, which owned 8 domain names incorporating the trademark ROLYN, sufficiently desired the disputed domain name in the “.com” gTLD that it offered initially USD 3,000 and eventually USD 10,000 for it. In the circumstances, the Complainant may reasonably be presumed to have been aware that another owner had used the disputed domain name for a long time, in fact for 22 years. It is not for the Panel to comment on how the Complainant runs its business or on the various steps that might have been taken through an agency or by itself to become notified of the impending availability of a desired domain name, e.g., by placing it on permanent “backorder” with domain name auctioneers. Only the Complainant knows why the disputed domain name apparently slipped through its fingers when it came up for recycling, particularly since the Complainant was trying to buy it from the Respondent within only 6 weeks after the auction. It had been bought openly by the highest bidder, by or on behalf of the Respondent. To a degree, the release of an expired domain name carries at least some implication that it is no longer wanted by its presumably unchallenged previous owner and invites the inference by a potential buyer that no other party felt any special entitlement to it. Had the Respondent done a search it may have found, as shown above, the existence of potential buyers of which the Complainant was merely one, and there is the further possibility that a new entity might build its name around an available domain name, rather than vice versa.

Under the particular circumstances of this case, the Panel does not find, on the evidence and on the balance of probabilities, that the Complainant has succeeded in proving that the Respondent acquired the disputed domain name primarily in order to benefit by transferring it to the Complainant.

The Complainant also claims in the terms of paragraph 4(b)(iv) of the Policy that the Respondent has attempted to attract visitors for private gain on the basis of the Complainant’s trademark comprising the disputed domain name. It does appear from the evidence, as the Respondent says, that the pay-per-click (“PPC”) links on the website of the disputed domain name are related to the categories “Baby or Infant” naming, “First Names” and “Genealogy”, and do not impinge on the business of the Complainant. Such use distances the Respondent from the Complainant and provides a showing of “negative keywords” which support the Respondent’s position that it was not targeting the Complainant. The provision of a search facility on the Respondent’s website appears to offer a visitor the ability to enter any search term, and cannot be compared with an offering of a restricted set of advertising links to a complainant or its competitors. The Panel does not find the Complainant to have succeeded in proving that the disputed domain name is in use with intent to attract Internet users by confusion with the Complainant’s trademark or that the Respondent, by means of remunerative advertising links, has sought to trade off the goodwill attaching to the Complainant’s trademark.

Accordingly the Panel finds for the Respondent under paragraph 4(a)(iii) of the Policy.

Returning to the matter of rights and legitimate interests, and without necessary reference to the provisions of paragraph 4(c) of the Policy, which are without limitation, the Panel majority cannot find grounds upon which the Respondent’s acquisition of the disputed domain name was other than rightful and legitimate under paragraph 4(a)(ii) of the Policy. An important distinction from some previous cases under the Policy is that here the disputed domain name was abandoned by its previous owner and this is not a case of the Respondent taking quick advantage of the registrant’s inadvertent omission to renew the registration. It is not the role of the Panel to unwind events surrounding the Respondent’s purchase of the disputed domain name. It is not for the Panel to arbitrate the possible value of a domain name or to interfere in the conduct of free bargaining in the marketplace.
D. Reverse Domain Name Hijacking

The Respondent has submitted that the Panel should make a finding against the Complainant that it engaged in Reverse Domain Name Hijacking. The Panel has therefore carefully examined the whole of the evidence to see if such a finding is appropriate.

In that regard, the Panel has noted the evidence of the Complainant’s conduct in making a complaint under the Policy only after bargaining over a purchase price had failed, a ploy commonly met with in disputes under the Policy and often referred to as “Plan B”.

On the other hand, the fact of the matter is that the Complainant had an arguable case in certain respects and the totality of the evidence shows that it may well have been motivated mainly by a desire to defend Its trademark and to pursue the case on what it saw as legitimate grounds rather than an intention to harass the Respondent.

The Panel is therefore unable to say that the Complaint should never have been made and accordingly declines to make a finding of Reverse Domain Name Hijacking.

7. Decision

For the foregoing reasons, the Complaint is denied.

Dr. Clive N.A. Trotman
Presiding Panelist

The Hon Neil Brown Q.C.
Panelist
Date: April 4, 2018

OPINION CONCURRING IN PART BUT DISSENTING ON RIGHTS AND LEGITIMATE INTERESTS

With respect to section 6.B (Rights or Legitimate Interests) of the decision, I would like to make the following findings:

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name (WIPO Overview 3.0, section 2.1).

The Complainant has established a prima facie case in this regard, inter alia, due to the Complainant’s prior ROLYN trademark registration, and the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the Complainant’s trademarks or a variation thereof.

The Complainant argued that the Respondent cannot have rights or legitimate interests in a domain name comprising the entirety of the Complainant’s registered trademark, and furthermore, that the Complainant’s trademark is a unique and distinctive coined word. It is my view that a party may have rights or legitimate interests in a domain name without the requirement to register a trademark. However, once the burden shifts it is incumbent on the Respondent to show it has rights or legitimate interests in the disputed domain name. Indeed, the Respondent alleged that it is providing a bona fide offering of goods or services though at the time the Complaint was made the evidence shows that the Respondent was using the disputed domain name as a PPC website, albeit, the links shown therein were “negative keywords” negating the Complainant’s assertion of targeting.

Do the parking or landing pages or PPC links generate rights or legitimate interests in a disputed domain name? The answer to this question depends on the circumstances of each case. While generally, “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 … Panels have recognized that the use of a domain name to host a page comprising PPC links would be permissible – and therefore consistent with respondent rights or legitimate interests under the UDRP – 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” (WIPO Overview 3.0, section 2.9). In the present case, the domain name is not a dictionary word or phrase and the PPC links do not relate to the dictionary meaning of the word or phrase comprising the disputed domain name.

The Respondent argued it acquired the disputed domain name because it is a valuable first or last name, to which its legal representative thought no party can claim exclusive rights. In fact, parties have claimed rights or legitimate interests to names and names can be registered as trademarks. The Respondent also argued that its business model is that of acquiring a three and four-letter domain names. While previous panels have determined that acquiring a three-letter acronym domain name can be evidence of rights or legitimate interests, that finding rested on the fact that the acronym in question had inherent value, several meanings and was used extensively by third parties as an acronym or a generic term. See Color Image Apparel, Inc. v. Whois Privacy Services by DOMAINCA / unitedeurope consulting, WIPO Case D2017-0650. The circumstances of the present case differ. The disputed domain name is a five-letter word, not a three-letter acronym with multiple meanings and extensive use by third parties. As noted above, the Complainant’s case that the name and trademark ROLYN is rare is reasonably substantiated. The fact that the Respondent buys three or four-letter domain names as a part of its business does not, of itself, create rights or a legitimate interest in a domain name corresponding with the trademark of another.

One additional matter relates to the provision of a search facility on the Respondent’s website, which appears to offer Internet users the ability to enter any search term, and which my fellow Panelists find cannot be compared with an offering of a restricted set of advertising links to a complainant or its competitors. I respectfully disagree. The search facility used by the Respondent is provided to search for “Ads” only. In essence, it is an extended list of the PPC advertising links dependent on search terms by Internet users and does not, of itself, add any facility that would show a bona fide offering of goods or services.

Given the above, it is my finding that the Respondent has not made the necessary showing that it has rights or legitimate interests to the disputed domain name. It is therefore my finding that the Complainant succeeds on the second element.

I agree with the other portions in my fellow Panelists’ decision and join them in the conclusion that the Complaint must be denied.

Jonathan Agmon
Dissenting Panelist
Date: April 4, 2018


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