MONDAY,25 May 2015 The Domains
According to the news from Domain.cn on May 25th,Playworld Systems, Inc. just won control of the 18 year old domain name playworld.com in a UDRP which I find to be very troubling.
Playworld Systems owns and operates PlayWorldSystems.com which was registered in 1996.
PlayWorld.com was registered on October 30, 1997
Playworld System apparently made an offer of $30K which the domain owner rejected, countering with $120K
According to the facts and findings the domain holder at one time turned down $80,000 for the domain years earlier from a third-party.
The one member Francine Siew Ling Tan found that laches did not bar the UDRP even coming some 18 years after the domain name was registered. The panelist also found the domain name was not registered in bad faith since the domain name was used for the first five years for the domain holders then business’ website. However the panelist found each renewal period reset the clock of bad faith and when the domain was most recently renewed in 2015, at that point the domain holder was acting in bad faith.
Most troubling for me was this language of the panelist:
“By placing the disputed domain name with the domain name parking service, Respondent was deliberately trying to attract, for commercial gain, Internet users to the webpage created by the domain name parking service by “by creating a likelihood of confusion with [Complainant’s] mark”
The domain holder did not help himself by recently parking the page and having links to the Complainant and its competitors and refusing the remove such links when he received a C & D letter not asking for the domain to be transferred but asking for the links to be removed nor by failing to ask for a three member panel.
Here are the highlights:
“”Complainant manufactures and sells commercial-grade playground, recreation and fitness equipment. The trade name “Playworld Systems” was used since 1971. Its PLAYWORLD SYSTEMS trademark was first used in Canada and in the U.S. in 1993 and 1988, respectively; registrations of the mark were secured in Canada in 2008, and in the U.S. in 1989.
Complainant owns and maintains the domain name which was registered on June 11, 1996.
The disputed domain name was registered on October 30, 1997, almost a decade after Complainant’s first use of the PLAYWORLD SYSTEMS trade mark.
The disputed domain name is confusingly similar to Complainant’s PLAYWORLD SYSTEMS trade mark and identical to its PLAYWORLD trade mark.
Respondent owned 45% shares in a company known as Playworld Network Corporation (“PNC”) which began operations in late 1996 or early 1997.
It began developing online animated characters for use in connection with a cybermall and online theme park for kids in the toy industry.
In July 1996, PNC registered the domain .
In 1997, the disputed domain name was used to redirect traffic to the site at www.playworld.net. By December 1998, PNC was selling toys online.
In 2002, PNC decided to cease operations and take its primary website down.
Around 2002 to 2003, Respondent learned about Complainant and contacted them to inquire if they would like to buy the disputed domain name.
Complainant allegedly expressed no interest.
Between 2008 and 2010, a third-party contacted Respondent and offered $80,000 for the disputed domain name.
Respondent declined the offer, with the intention of starting a new business in the future.
Around November 2014, Complainant contacted Respondent regarding the purchase of the disputed domain name and offered $30,000.
Respondent declined the offer, after which it posted the domain name with a parking service whilst it considered what business it would like to proceed with. It was the decision of the parking service to place text link advertisements for third-party advertisers.
The Panel notes that for at least five years after registration, Respondent used and operated the disputed domain name in connection with its business.
There is therefore some evidence that at that point in time, Respondent had rights or legitimate interests in the disputed domain name. The question then is whether the fact that rights or legitimate interests in a domain name may have existed initially or at one point in time, whether it precludes any finding of a lack of rights or legitimate interests further down the road, in this case, almost 20 years later.
The Panel is of the view that such a finding is not precluded.
Respondent does not appear to have any substantive use of the disputed domain name, whether in connection with a business or otherwise, since around 2003.
Although Respondent claims to have had an intention to start a business “in the future” (and presumably to use the disputed domain name in connection with that), no evidence of demonstrable preparations to use the domain name in connection with a bona fide offering of goods of services has been produced by Respondent.
This gap spans over a term of about 10 years. Instead, around 2002/2003 and again in 2014, according to Respondent’s own account, it took steps to try to sell the disputed domain name to Complainant.
In addition, after Complainant declined Respondent’s demand for $120,000 for the transfer of the disputed domain name, the latter parked it with a domain parking service which provided links from the resolving webpage misdirecting visitors to a variety of Complainant’s competitors.
It is common knowledge that these services operate by providing the domain name registrant with “click through” revenue whenever an Internet user clicks on a sponsored link on the parking page. Whilst such practices are common and there is nothing inherently illegitimate about them, the activity of profiting from the deliberate linking of a parking page with the websites of competitors of a trademark owner does not demonstrate any legitimate interest in the domain name under the Policy (paragraph 4(c)(iii)). Neither has Respondent shown that it is “commonly known” by the disputed domain name.
The Panel accordingly finds that Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(a)(ii) of the Policy has been established.
Registration and Use in Bad Faith
Paragraph 2 of the Policy provides that:
“By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.” (Emphasis added.)
Respondent has the said obligations with each renewal or with each request to the Registrar to maintain the disputed domain name. Prior to March 2015, Complainant had no objection to Respondent’s registration of the disputed domain name. The Complaint was filed only after Complainant discovered Respondent had parked the disputed domain name with the website displaying pay-per-click advertisements for competitors and the latter ignored and/or chose not to respond to Complainant’s demand for the removal of the offending links from the parking page.
The Panel finds that there is evidence of bad faith registration and use in the circumstances of this case. The bases for this finding follow.
The renewal of a domain name is, by reference to paragraph 2 of the Policy, equivalent to a new registration in certain circumstances.
The Policy provides clearly that there is a responsibility that a domain name registrant has, namely to determine whether the domain name registration infringes or violates someone else’s rights.
The violation of Complainant’s rights in its trade marks was clearly in issue here and brought to Respondent’s attention by Complainant.
Respondent did not deny having received Complainant’s letter of demand.
Further, Respondent was, by 2002/2003, aware of Complainant and its interests in the PLAYWORLD and PLAYWORLD SYSTEMS marks.
Respondent sought to extract a huge sum of money from Complainant for the disputed domain name; and after Complainant refused to pay the sum, the domain name was parked with a domain name parking service which operated the pay-per-click links to webpages of competitors of Complainant.
The Panel is of the view that by placing the disputed domain name with the domain name parking service, Respondent was deliberately trying to attract, for commercial gain, Internet users to the webpage created by the domain name parking service by “by creating a likelihood of confusion with [Complainant’s] mark”. Pursuant to paragraph 4(b)(iv) of the Policy, this conduct constitutes bad faith registration and use under the Policy.
Respondent states that it was the decision of the parking service to place text link advertisements for third-party advertisers. The Panel is skeptical that Respondent is blameless or that it had no influence over the type of advertising that would appear. The amount of “click through” revenue that is generated is affected by the keywords that are associated with a domain name. In the absence of any explanation from Respondent as to how the links in this case were generated, the Panel accepts that Respondent had some involvement or influence in the selection process.
The Panel accordingly finds that Respondent has registered and is using the disputed domain name in bad faith.
Paragraph 4(a)(iii) of the Policy has been established.
Doctrine of Laches
The Panel is of the view that the doctrine of laches is not an applicable defense under the Policy (see Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum, February 13, 2006) and paragraph 4.10 of the WIPO Overview). What is relevant is Complainant has established a case on the merits under the requisite three elements of the Policy.
Accordingly, it is Ordered that the domain name be TRANSFERRED from Respondent to Complainant.”