TER.com #UDRP: No finding of Reverse Domain Name Hijacking

SNCF Voyageurs, France, filed a UDRP against the three letter .com domain TER.com. The Complainant, the French national railway company, operates a public transport service in France called “TER”, which carries more than one million travellers daily and owns some 7,500 trains and 2,000 coaches.

The domain TER.com was registered in 1994. How can a French company claim rights to it almost 28 years later?

In their response, the Respondent pointed out the functionality that a LLL .com provides:

The Respondent has a hobby of collecting short, generic, and appealing domain names as long-term investments. The Respondent is not interested in profiting from other peoples’ trade marks. In fact, the Respondent tries to avoid trademarked terms by reasonable due diligence.

Domain names can be valuable, particularly if, like the disputed domain name, they are short and memorable and were registered a long time ago. Three-letter domain names are especially desirable because they are scarce and in high demand.

The sole panelist at the WIPO concluded that the domain was not registered or used in bad faith, ordering this premium LLL .com domain to remain with the Respondent. He also denied their request for a finding of Reverse Domain Name Hijacking.

The domain transfer was denied.

SNCF Voyageurs v. Whois Agent, Domain Protection Services, Inc. / Antonio Vaz
Case No. D2021-2718

1. The Parties

The Complainant is SNCF Voyageurs, France, represented by Cabinet d’avocats Guillemin Flichy SELAS, France.

The Respondent is Whois Agent, Domain Protection Services, Inc., United States of America / Antonio Vaz, Portugal.

2. The Domain Name and Registrar

The disputed domain name <ter.com> is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 19, 2021. On August 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 19, 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 August 22, 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 amendment to the Complaint on August 24, 2021.

The Center verified that the Complaint together with the amendment to 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 August 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 25, 2021. The Respondent’s late Response was filed with the Center on September 26, 2021.

The Center appointed Adam Taylor as the sole panelist in this matter on October 27, 2021. 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.

On November 17, 2021, the Panel issued Procedural Order No. 1 inviting the Respondent to submit certain information and the Complainant to comment thereon if it wished. The Respondent responded on November 20, 2021. The Complainant did not comment.

4. Factual Background

The Complainant, the French national railway company, operates a public transport service in France called “TER”, which carries more than one million travellers daily and owns some 7,500 trains and 2,000 coaches.

The Complainant owns French trade mark no. 1613499 for TER, filed and registered on July 4, 1989, in classes 35, 36, 38 and 42.

The Respondent acquired the disputed domain name from its previous owner on January 24, 2017, for an undisclosed sum.

As of June 10, 2021, the disputed domain name was offered for sale by auction on GoDaddy with a minimum offer price of USD 10,000.

As of June 21, 2021, the disputed domain name resolved a parking page with the following pay-per-click (“PPC”) categories: “Train SNCF” (linking to a list of websites including “www.thetrainline.com”), “Amtrack Train Tickets” (linking to a list of websites including “www.mytrainpal.com”), “Tickets Rail” (linking to a list of websites including “www.omio.com”), “Parcel Service Tracking”, “Tankcar”, and “Amtrack Train Fares”.

5. Parties’ Contentions

A. Complainant

The following is a summary of the Complainant’s contentions.

The disputed domain name is identical to the Complainant’s famous and highly distinctive trade mark.

The Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant has never authorised the Respondent to use its trade marks.

There is no evidence of any use of the disputed domain name for a bona fide offering of goods or services, as the parking page merely links to other commercial websites and does not itself offer any goods or services.

The fact that the disputed domain name is offered for sale for a price starting at USD 10,000 is further evidence that the Respondent has not been using or making demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

The Respondent is using the disputed domain name to deliberately take advantage of the goodwill in the Complainant’s trade mark with a view to diverting customers to the Respondent’s own website.

The disputed domain name was registered and is being used in bad faith.

The Respondent must have been aware of the Complainant’s famous and longstanding trade mark when he registered the disputed domain name.

Customers who visit the Respondent’s website will assume that it is linked to the Complainant, and that the PPC links are related to the Complainant’s trade mark or services, whereas in fact the page links to websites offering competing goods and services, including rail ticket websites.

The Respondent’s PPC website generates profits for the Respondent by attracting visitors based on recognition of the Complainant’s trade mark and confusion with its rights.

The auction page is further evidence of the Respondent’s intention to use the Complainant’s well-known trade mark to generate a commercial gain. If the Complainant fails to pay a substantial price for the disputed domain name, the Respondent unlawfully prevents the Complainant from exercising its rights in its trade mark and managing its presence on the Internet.

The Respondent is intentionally using the disputed domain name to create a likelihood of confusion with the Complainant’s mark and to divert Internet users to competing rail websites.

B. Respondent

The following is a summary of the Respondent’s contentions.

The Respondent acknowledges that the disputed domain name matches the Complainant’s trade mark – and it is also identical to several third party registered trade marks for TER in the United States and elsewhere.

The Respondent has rights or legitimate interests in respect of the disputed domain name, namely for the legitimate of purpose of resale, as a collectible and generic domain name. The disputed domain name has not been registered or used in bad faith.

The Respondent has a hobby of collecting short, generic, and appealing domain names as long-term investments. The Respondent is not interested in profiting from other peoples’ trade marks. In fact, the Respondent tries to avoid trademarked terms by reasonable due diligence.

Domain names can be valuable, particularly if, like the disputed domain name, they are short and memorable and were registered a long time ago. Three-letter domain names are especially desirable because they are scarce and in high demand.

The Respondent has never been aware of the term being used for railway services, or as a French trade mark. The Respondent’s only interest is because the term means “to have” in Portuguese and is short as well as being a “strong and appealing verb”. The Respondent acquired the disputed domain name due to its generic nature, scarcity, and resale value potential.

The Respondent disagrees that the Complainant’s trade mark is highly distinctive and famous. If anything, the trade mark is well known only to French citizens.

The Respondent had no easy way to know about the Complainant’s trade mark when acquiring the disputed domain name. Given its generic nature, the disputed domain name was purchased without any particular target. Indeed no one can be a “target” in these circumstances.

The word “ter” brings up many results on Google, none of which relate to the Complainant. On Google in Portugal, and where the Respondent resides, and on “www.google.com”, the Complainant appears only on the third page. Only on Google in France, with the language set to French, does the Complainant appear on the home page. The term brings up 1,120,000,000 results, mostly related to Portuguese content.

Dictionaries list around 40 different acronyms for “ter”, albeit including the Complainant’s “Transport Express Régional” and, a variation thereof, “Train Express Regional”.

There is no evidence that the Respondent has engaged in a pattern of trade mark-targeting conduct in respect of the hundreds of domain names he owns.

Pending resale, and to recoup some of the cost, the Respondent decided to resolve the disputed domain name to an English-language landing page with PPC advertising links for a wide variety of products and services, generated by a third party service without any control from the Respondent. The Respondent was confident that this would be an innocuous step, given the generic nature of the disputed domain name and the advanced algorithms used by PPC services to screen out trade marks from PPC-generated links.

In any case, it is bad faith for the Complainant to claim that consumers who see the disputed domain name will necessarily assume that the PPC page is linked to the Complainant. Consumers are more sophisticated than they used to be. They will have seen PPC pages before and will understand that that they are not related to any business.

While the PPC page does include links to websites of the Complainant’s competitors, it also has links to unrelated subjects, some of which may be subject to the same type of claim as that made by the Complainant, namely that the Respondent is intentionally creating a likelihood of confusion with the Complainant’s trade mark. If so, even if the Respondent is acting in bad faith (which is denied), he is not actively targeting the Complainant’s trade mark.

It is also bad faith for the Complainant to claim that its failure to pay a substantial price for the disputed domain name will unlawfully prevent it from exercising its trade mark rights and managing its Internet presence. The Complainant could have bought the disputed domain name itself, as the Respondent has done. The Complainant does not even own <ter.fr>.

The Complainant is using the UDRP as a means of acquiring ownership of the disputed domain name for a low price.

The Respondent seeks a finding of reverse domain name hijacking. Given the evidence, and the fact that the Complainant is professionally represented, the Complainant should have known that its claims were far-fetched and had no real likelihood of success.

6. Discussion and Findings

Under the Policy, the Complainant is required to prove on the balance of probabilities that:

– the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;

– the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

– the disputed domain name has been registered and is being used in bad faith.
A. Preliminary – Late Response

The Response was received by the Center just after midnight (in the Respondent’s location) on the due date. The Respondent explains that the delay was due to an issue with Internet access.

Paragraph 10(d) of the Rules provides that the Panel shall consider the admissibility, relevance, materiality and weight of the evidence.

In view of the minimal nature of the delay as well as the lack of any prejudice to, or objection (assuming there would be grounds for this) by the Complainant, the Panel has decided to admit the Response.

B. Identical or Confusingly Similar

Disregarding the Top-Level Domain (“TLD”) suffix, the disputed domain name is identical to the Complainant’s trade mark.

Accordingly, the Complainant has established the first element of paragraph 4(a) of the Policy.

C. Rights or Legitimate Interests

It is unnecessary to consider this element in view of the Panel’s findings under the third element below.

D. Registered and Used in Bad Faith

It is relevant, first, to consider section 3.2.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), which explains that, noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where a complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.

On the other hand, section 3.2.2 goes on to discuss circumstances that may indicate a lack of respondent knowledge, pointing out that where the complainant’s mark is not inherently distinctive and it also corresponds to a dictionary term or is otherwise inherently attractive as a domain name (e.g., it is a short combination of letters), if a respondent can credibly show that the complainant’s mark has a limited reputation and is not known or accessible in the respondent’s location, panels may be reluctant to infer that a respondent knew or should have known that its registration would be identical or confusingly similar to the complainant’s mark. Particularly given the Internet’s borderless nature, a sweeping respondent disclaimer of knowledge based as such on its (deemed) presence in a particular location different from the locations in which the complainant’s goods or services are accessible may be seen by panels as lacking in credibility or relevance. Section 3.2.2 notes that the business of cybersquatting often seeks to exploit the global reach of the Internet and may in fact purposefully target a location other than that in which the respondent may be “present”.

Here, the Respondent, who is located in Portugal, insists that he did not know of the Complainant’s French railway service and that he registered the disputed domain name for resale purely based on its dictionary meaning (“to have” in Portuguese) and on its attractiveness as a short domain name likely to be interest to many people. The Respondent says he has a hobby of collecting short, generic, and appealing domain names as long-term investments and has provided examples of some his other three-letter domain names.

While it is not in dispute that the Complainant’s mark is famous in France, the Respondent claims that that the mark is not well-known in Portugal, where he lives. The Respondent invokes a localised Google search in Portugal where the Complainant’s mark allegedly appears only on the third page of results. The Respondent has not supplied screenshots of this search and search engines do not necessarily give the same results when used by others, particularly in different countries. However, it seems reasonable to assume that, like three-letter acronyms generally, “ter” is common use by a range of organisations, both in Portugal and elsewhere, and that the Portuguese dictionary term also features in Portuguese search results.

The Panel notes that the Complainant had not supplied any evidence indicating that it possesses a significant reputation outside France. While that would not conclusively establish the Respondent’s lack of knowledge, given the borderless nature of the Internet mentioned above, the Panel is mindful that the disputed domain name is inherently attractive as a domain name because it is a short combination letters, i.e., one of the types of domain names discussed in section 3.2.2 of WIPO Overview 3.0 in the connection with circumstances indicative a lack of respondent knowledge, and that the Complainant has not established that its mark has achieved the status of a famous three-letter acronym, sucn as “IBM” or “BMW”, that is likely to have “cut through” internationally. See, e.g., S.P.Complainant.M. SA v. Whois Privacy Services Pty Ltd / Vertical Axis Inc., Domain Administrator, WIPO Case No. D2014-0327, where the panel stated:

“There is also no evidence before the Panel that anyone outside the specialized areas the Complainant operates in would have any awareness of the Complainant’s business under the letters ‘SNF’. Further in the present case there is no evidence that the Respondent had actual knowledge of the Complainant or its trademark and there is no evidence and no reason to suggest that the Panel should disbelieve the Respondent’s account that it had never heard of the Complainat or its rights. Had the three letter acronym been, say, IBM or BMW that fact could allow the Panel to reach such a conclusion, as it could reasonably be assumed that a Respondent would have actual knowledge of such famous brands. But there is no evidence at all of the Complainant having any reputation outside the specialized area in which it operates in either 2001 or indeed today. The Panel accordingly considers that no case of willful blindness is made out on the present facts.
[…]

The Panel accepts 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, 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 case, having weighed up all of the above matters, the Panel considers that, on balance, it has no reason to disbelieve the Respondent’s assertion that he was unaware of the Complainant’s French railway service when he registered the disputed domain name and that it forms part of a pattern of attractive short domain names that the Respondent registered for potential resale to the world at large with “no particular target”.

Is this conclusion altered by the fact that the disputed domain name has been used for a parking page with links to the Complainant’s competitors? The Respondent says he relied on the generic nature of the disputed domain name and the “advanced algorithms” used by PPC services to screen out trade marks from PPC-generated links. However, section 3.5 of WIPO Overview 3.0 makes clear that respondents cannot disclaim responsibility for “automatically” generated PPC links on their websites and the fact that such links are generated by a third party would by itself prevent a finding of bad faith.

This issue has given the Panel some pause for thought. Ultimately though, the Panel must be mindful that, notwithstanding the existence of the PPC page, the Complainant must still establish that the Respondent registered the disputed domain name in bad faith, i.e., to take unfair advantage of, or otherwise abuse, a complainant’s mark (per section 3.1 of WIPO Overview 3.0). See, e.g.,Telephone and Data Systems, Inc. v. Protected Domain Services – Customer ID: NCR-813584 / Daniel Wang, WIPO Case No. D2011-0435, another case involving a three-letter domain name and an offending PPC page, where the panel stated the following:

“Complainant’s case is primarily based on the subsequent use of a long-registered disputed domain name as a pay-for-click site that may have directed Internet users to links of companies that compete with the Complainant, which potential links the Respondent now claims to have suppressed. This alone is not enough to establish bad faith use in all circumstances, and it is not necessary for the Panel to determine this issue on the contested facts here. As to bad faith registration, there must here be sufficient evidence that the Respondent had the intent in some manner deliberately to ‘target’ the Complainant and its marks or goodwill in order to capitalize on them. This is particularly the case where, as here, the trademark in question comprises a combination of three letters that Respondent has established is widely used by persons other than the Complainant on the Internet and elsewhere. See, Diknah, S.L. v. WebQuest.com Inc., WIPO Case No. D2005-0573. Thus even were Respondent’s actions found to constitute bad faith use – a finding we do not need to and do not make – the subsequent use of the disputed domain name as a pay-for-click site would not, alone, on the facts of this case constitute sufficient proof of the requirement of bad faith registration…”

Similarly, the Panel has concluded that, in the particular circumstances of this case, the PPC page – the screenshot of which is dated four years after the Respondent registered the disputed domain name – is insufficient to displace the Panel’s finding above that it was unlikely that the Respondent was aware of the Complainant’s mark at the time of registration of the disputed domain name. The Panel also notes in this regard that while the PPC page does include links to websites of the Complainant’s competitors, at times it also has links to unrelated subjects.

For the above reasons, the Panel considers that the Complainant has failed to establish the third element of paragraph 4(a) of the Policy.

E. Reverse Domain Name Hijacking

In his Response, the Respondent makes a claim of Reverse Domain Name Hijacking (“RDNH”) on the grounds that the Complainant should have known that its claims were far-fetched and had no real likelihood of success.

Paragraph 15(e) of the Rules 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”. RDNH is defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”. See examples of the reasons articulated by panels for finding RDNH at section 4.16 of the WIPO Overview 3.0.

In this case, the Panel declines to make a finding of RDNH. While the Complainant has ultimately failed, its case was by no means “far-fetched” – as the discussion above should indicate.

7. Decision

For the foregoing reasons, the Complaint is denied.

Adam Taylor
Sole Panelist
Date: December 15, 2021

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