#TheSun dot com : #UDRP against generic #domain ends up blackholed as #RDNH

The UDRP case against the owners of TheSun.com, a generic domain registered in 2001 didn’t end well for the Complainant, News Group Newspapers Limited of London.

The latter is known as the Rupert Murdoch group, that operates the newspaper The Sun in the UK.

A three member panel outlined the facts of the case, strongly in favor of the Respondent; TheSun.com is a generic domain, and it’s being used for its literal meaning:

“The Complainant has not presented any compelling evidence for the alleged bad faith on the part of the Respondent. To the contrary, the Respondent’s evidence which is not contradicted by the Complainant establishes that the disputed domain name was registered because it referred “to the star that our planet orbits” in our solar system and that the Respondent believed no party could claim exclusive rights in the word “sun”.  “

In the end, the panelists slapped the Complainant with a finding of Reverse Domain Name Hijacking.

Full details of this decision follow; the  documentation was provided by ESQwire.com that defended the Respondent in this case.

Note: ESQwire is a sponsor of DomainGang.

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION
News Group Newspapers Limited v. Privacydotlink Customer 2383026 / Blue Nova Inc.
Case No. D2019-0084

1. The Parties

The Complainant is News Group Newspapers Limited of London, United Kingdom, represented by Allen & Overy LLP, United Kingdom.

The Respondent is Privacydotlink Customer 2383026 of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom / Blue Nova Inc. of The Garrison, Barbados, represented by ESQwire.com PC, United States of America.

2. The Domain Name and Registrar

The disputed domain name <thesun.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 15, 2019. On January 16, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 16, 2019, 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 21, 2019, 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 25, 2019.

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 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 21, 2019. On February 7, 2019, the Respondent submitted a request pursuant to paragraph 5(b) of the Rules for a four-day extension of the Response due date. The Response was filed with the Center on February 22, 2019.

The Center appointed Tobias Zuberbühler, Clive Duncan Thorne and The Hon Neil Brown Q.C. as panelists in this matter on March 27, 2019. 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 the owner of the tabloid newspaper “The Sun” published in the United Kingdom and the Republic of Ireland. The Complainant is the owner of a number of UK and EU trademarks for SUN and THE SUN (e.g., UK registration No. 00001562967 of January 26, 1996; EU registration No. 000670638 (application on April 1, 1996, registration on February 15, 2005)).

The disputed domain name was registered on May 4, 2001 (i.e. roughly 18 years ago) and leads to a pay per-click website containing generic links auto-generated by Google. Over the past two decades, the Respondent has registered tens of thousands of domain names consisting of generic dictionary words, three and four letter domain names, and common surnames. The Respondent is a well-known investor in domain names.

In 2016, the Complainant made an anonymous approach to purchase the disputed domain name from the Respondent for USD 300,000. The Respondent replied that it was unwilling to accept any offers below USD 700,000. In 2018, the Complainant made a further offer of USD 600,000 which was again rejected by the Respondent. The Respondent stated that it would be open to negotiating terms for the purchase of the disputed domain name starting from USD 2.5 million.

5. Parties’ Contentions

A. Complainant

In summary, the Complainant argues the following:

The disputed domain name incorporates the Complainant’s trademark THE SUN in its entirety and is therefore identical to such trademark.

The Respondent has never used the disputed domain name for the purposes of a bona fide offering of goods or services. It appears that the disputed domain name is used for a number of sham pay-per-click advertisements, rather than as a genuine advertising platform. Even if the Respondent’s website were considered a bona fide pay-per-click advertising, a parked page comprising PPC links does not represent a bona fide offering where such links compete or capitalize on the reputation of the Complainant’s trademark or otherwise mislead users (cf. the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.9).

The traffic to the website at the disputed domain name would largely result from Internet users seeking the Complainant’s websites as a result of the fame and reputation of the Complainant’s THE SUN trademark.

Moreover, the Respondent has attempted to hold the Complainant’s goodwill to ransom by demanding a sum in excess of USD 2.5 million for the sale of the disputed domain name. Because the website connected to the disputed domain name is parked, the Complainant contends that the Respondent, with actual or constructive awareness of the Complainant’s business and prior rights, registered the disputed domain name (a) primarily for the purpose of selling it to the Complainant or a competitor for profit, (b) to profit from advertising revenue generated when Internet users searching for information on the Complainant have been diverted to the Respondent’s website, and/or (c) to prevent the Complainant from registering the disputed domain name.

If, in the present circumstances, it is not held that the Respondent’s use of the disputed domain name puts the Complainant’s rights at risk today, the Complainant asserts that said use nevertheless puts its rights at risk in the future, and that said use is therefore in bad faith by analogy with passive holding.

B. Respondent

The Respondent’s position can be summarized as follows:

The Complainant has chosen to file a claim that is devoid of any evidence of bad faith registration and use of the disputed domain name. Moreover, recognizing that its claims are baseless, the Complainant has resorted to mischaracterizing and tarnishing the Respondent and domain name investing. It is clear that the Complainant’s counsel was engaged to file the Complaint after the Complainant had been unsuccessful in its multiple unsolicited and anonymous attempts to purchase the disputed domain name. Not only is the term “the sun” subject to tremendous third-party use globally, the Respondent has also done nothing to target the Complainant at any time. The Complaint is a clear example of reverse domain name hijacking.

The disputed domain name was originally registered on May 4, 2001, but the Complainant took no action until January 2019 – a substantial delay by any measure and an eternity in “Internet time”. The Complainant does not explain why it waited so long to initiate its purported claim to the disputed domain name. This long delay bars the Complainant under the doctrine of laches, which has been recognized under the Policy. Here, the Complainant’s long delay particularly demonstrates that laches is appropriate, because after 18 years, the Complainant improperly seeks, with the assistance of highly sophisticated counsel, to appropriate the disputed domain name from the Respondent.

The Respondent accepts the validity of the Complainant’s trademarks and recognition as a tabloid in the United Kingdom. At the same time, however, the Complainant cannot plausibly claim exclusive rights to the term “the sun”.

The registration of domain names composed of descriptive terms or dictionary words, such as the disputed domain name <thesun.com>, ipso facto establishes a respondent’s legitimate interest, provided the domain name was not registered with a trademark in mind. The Respondent registered the disputed domain name in 2001 because it is solely comprised of the common term “the sun” – a common term in which it believed no party could claim exclusive rights, and which was therefore permissible to register on a first come, first served basis.

Additionally, evidence of rights or legitimate interests in a disputed domain name can be determined under paragraph 4(c)(i) of the Policy by a finding that the respondent is a generic domain name reseller with numerous similar domain names. On the balance of probabilities, considering the circumstances of this case and the fact that the Respondent has registered tens of thousands of generic domain names over the past two decades, the Respondent has established rights and a legitimate interest in the disputed domain name. It has also been held that the use of common word domain names in connection with PPC advertising establishes a legitimate interest.

Finally, there is no evidence of bad faith registration or use. The Respondent registered the disputed domain name simply because it incorporated a descriptive term that became available when the prior owner apparently allowed the disputed domain name to expire. This is not a case of a cyber-squatter looking for trademarks upon which to prey. The Respondent registered the disputed domain name along with numerous others with the intent to sell those registrations to willing purchasers, because of the inherent value in a generic or descriptive domain name. The Complainant has offered no evidence demonstrating that the Respondent has targeted its trademark.

6. Discussion and Findings

A. The Panel’s Decision on Laches and the Complainant’s Delay in Filing the Complaint

The Panel has carefully considered Respondent’s contentions based on the common law concept of laches and notes that a strong argument has been advanced from various quarters that the defence of laches does not apply in UDRP proceedings. That argument makes the point that the Policy offers a limited remedy to avoid future confusion in the marketplace and does not contemplate that such a remedy would be unavailable because of delay in initiating a case (see WIPO Overview 3.0, section 4.17).

On the other hand, the Panel takes note of the fact that there have been UDRP decisions where the doctrine of laches has been applied and the observation in WIPO Overview 3.0, section 4.17, that “delay in bringing a complaint under the UDRP may make it more difficult for a complainant to establish its case on the merits, particularly in relation to the second and third elements requiring the complainant to establish that the respondent lacks rights and legitimate interests and that the respondent registered and used the domain name in bad faith” (see also, e.g., Green Bay Packers, Inc. v. Moniker Privacy Services / Montgomery McMahon, WIPO Case No. D2016-1455, section 5.C).

In this connection, and as an illustration of the latter view, the Panel is inclined to follow the reasoning in UTV Limited v. Unitedeurope Consulting, Kwang Pyo Kim, WIPO Case No. D2011-2293, where the Respondent had admitted that it had been registering common word domain names since 1998, the disputed domain name <utv.com> had been first registered on August 11, 1997 and the Respondent had acquired the disputed domain name on August 19, 2005 after it became available for registration. In UTV, the Panel did not find any evidence that the landing pages associated to the disputed domain name supported a finding of the respondent attempting to compete with the complainant or having the intent to mislead consumers. The complaint was subsequently denied on the basis of the respondent’s legitimate interest in the disputed domain name (second element of the Policy; see section 6.C below).

B. Identical or Confusingly Similar

Since the Complainant’s trademark THE SUN is identical to the disputed domain name, the Complainant has fulfilled paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

The factual history in this case is very similar to UTV, supra – domain investors registering generic domain names in the early phase of the Internet and trademark owners filing complaints many years after the domain name registrations (14 years after the first registration in UTV, almost 18 years in this case). In any event, a complainant would need very good arguments why it has waited for 18 years to file a Complaint under the UDRP.

The Complainant has not presented any compelling evidence for the alleged bad faith on the part of the Respondent. To the contrary, the Respondent’s evidence which is not contradicted by the Complainant establishes that the disputed domain name was registered because it referred “to the star that our planet orbits” in our solar system and that the Respondent believed no party could claim exclusive rights in the word “sun”. In the circumstances of this case, the Panel finds it highly unlikely that the Respondent had the Complainant in mind when it registered the disputed domain name. Even if the Respondent knew about the Complainant’s trademark rights, the Complainant was anonymously bidding to purchase the disputed domain name for a very high amount (USD 300,000) and doubled the bid when it “came out” and offered USD 600,000 for the disputed domain name. This alone demonstrates the Complainant’s full awareness that the Respondent had a legitimate interest and was not acting in bad faith when it registered and was using the (highly generic) disputed domain name.

The Complainant therefore failed to demonstrate the second element under paragraph 4(a) of the Policy.

D. Registered and Used in Bad Faith

For the same reasons, the Complainant has failed to meet its burden under paragraph 4(a)(iii) of the Policy. In particular, in accordance with the Respondent’s submissions, there is no evidence that the Respondent in 2001 registered the disputed domain name with the intent to sell it to the Complainant, to disrupt its business or to confuse consumers seeking to access the Complainant’s own website.

E. Reverse Domain Name Hijacking (“RDNH”)

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”.

Reasons articulated by panels for finding RDNH include: (i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith (see generally section 3.8 of WIPO Overview 3.0); and (ii) facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint, including relevant facts on the website at the disputed domain name (WIPO Overview 3.0, section 4.16).

Against the factual background set forth above, it is apparent in the Panel’s view that the Complaint has been filed abusively, in an attempt to wrest the disputed domain name from the Respondent’s control after failed negotiations with the Respondent to acquire the disputed domain name for a reasonable market price.

The Panel therefore concludes that the filing of the Complaint by the Complainant constitutes reverse domain name hijacking.

7. Decision

For the foregoing reasons, the Complaint is denied.

Tobias Zuberbühler
Presiding Panelist

Clive Duncan Thorne
Panelist

The Hon Neil Brown Q.C.
Panelist
Date: April 10, 2019

 

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