Poster Boy For Frivolous UDRP Cases: Booked.xyz Guilty Of RDNH: TM Filed 16 Yrs After Domain Was Registered

TUESDAY,27 January 2015   THE DOMAINS
According to the news from Domain.cn1(1) on January 27th, b Booked Ltd of London which owns the domain Booked.xyz and Bookedxyz.com was just found guilty of Reverse Domain Name Hijacking on the domain name Booked.com in one of the most baseless UDRP cases we have ever read.

Its too bad there is not any penalties for those who bring frivolous UDRP cases other than a finding of Reverse Domain Name hijacking which the three member panel rightfully found.

The domain owner represented himself in the UDRP which is just silly on its face.

The domain Booked.com was registered on January 7, 1999.

The Complainant was incorporated on July 15, 2014 as an English registered limited company and registered the domain names booked.xyz and bookedxyz.com.

It owns a UK registered trademark in respect of the terms “booked.xyz” and “booked.com”, registration number UK 00003064753 registered (as a series) on October 24, 2014. I have no idea how country granted a trademark to a domain that wasn’t owned by the applicant but what can I tell you.

Its a totally baseless case in fact or in law, and its a shame that a domain holder had to spend time to answer such a silly case and that a three member panel of Nick J. Gardner, Christopher S. Gibson and Tony Willoughby had to waste their time on it either.

Here are the highlights of the decision:

The Complainant has established that it has a registered trademark in respect of the terms “booked.com” and “booked.xyz”. The dominant part of each of these terms is the word “booked” and the Panel concludes in these circumstances that the Disputed Domain Name is identical or confusingly similar to the Complainant’s trademark.

As a general rule the registration of domain names is a “first come first served” system. In this particular case the Panel concludes that the Respondent was perfectly entitled to register this ordinary English word given no antecedent trademark rights are alleged to have existed at the time of registration.

Further the Panel is of the view that carrying on business in registering descriptive or generic domain names is not of itself objectionable

In addition the Panel is also of the view that offering domain names for sale is not of itself objectionable

The Panel notes the consensus view expressed in the WIPO Overview 2.0 in relation to parking pages (paragraph 2.6) that:

“Panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a ‘bona fide offering of goods or services’ ….or from ‘legitimate noncommercial or fair use’ of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder.

As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value (a result that PPC page operators can achieve by suppressing PPC advertising related to the trademark value of the word or phrase).

By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion.”

The Panel concludes that the present case is a paradigm example of use of a dictionary word in relation to PPC links relating to the generic meaning of the word.

The Complainant’s case in relation to this element appears to be that because the Respondent has no registered trademarks corresponding to the Disputed Domain Name he has no rights or legitimate interests.

That argument is simply wrong.

There is no requirement upon domain name registrants to themselves have registered trademark rights in order to establish a legitimate interest. The Complainant also says that the Respondent’s actions infringe its trademark.

That is not a matter for this Panel to determine, although it can anticipate numerous arguments the Respondent would deploy in disputing that allegation.

The Panel also notes that the Complainant has applied for and obtained a registered trademark which corresponds to a domain name it must have known was owned by a third party.

It would in the Panel’s view be surprising if having done so the Complainant could then use that trademark to seek to impugn the registration and use of the Disputed Domain Name. In the circumstances the Panel attaches no significance to this unsupported assertion by the Complainant.

The Complainant also says that the Respondent’s use of the Disputed Domain Name is a “waste of resources”.

The fact of the matter is that the Disputed Domain Name was legitimately registered by the Respondent and it is, in general, his resource to do with as he wishes.

Based on the circumstances of this case, the Panel decides that where the Disputed Domain Name (i) predates the existence of the Complainant’s trademark by 15 years, and (ii) is comprised of a dictionary word used for PPC links related to the generic meaning of that word, the Respondent has established a legitimate equitable seniority interest in the Disputed Domain Name.

The Panel has no hesitation in concluding that the Respondent’s registration was not in bad faith.

The Respondent was entitled to register the Disputed Domain Name containing an ordinary English word on a “first come first served” basis in circumstances where no question of any prior third party rights in that word existed.

In this context paragraph 3.1 of WIPO Overview 2.0 states the following consensus view:

“Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date…, when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right.”

The Panel concludes that is precisely the situation in the present case.

The Panel also concludes that the Respondent’s subsequent use, both in relation to a parking page with PPC links and in offering the Disputed Domain Name for sale, were not in bad faith.

In this regard the Panel considers that the various arguments asserted by the Complainant are all wholly misconceived.

The Complainant has come into existence many years after the Disputed Domain Name was registered.

On the evidence before the Panel this is not the type of case where the Complainant then carries on business under a name the same as or similar to a pre-existing domain name in a manner which develops significant reputation of its own in the name and where, as a result, questions may arise as to whether a respondent’s continuing use of the domain name in question (especially if the respondent changes in some manner that use) then amounts to bad faith use.

In the present case no evidence at all is before the Panel about the Complainant’s business. Somewhat extraordinarily the Complainant has not felt it necessary to place evidence before the Panel as to whether it has ever traded, whether it has a website, whether it has ever advertised or promoted whatever business it may have, whether it has even a single customer or whether it has ever earned any revenue.

In the view of the Panel this is a Complaint which should never have been launched.

The Complainant knew that the Disputed Domain Name was registered some 15 years before the Complainant came into existence.

No attempt was made to demonstrate the existence of any earlier rights or to address the issue arising from the obvious fact that the Respondent had simply registered a dictionary word long before the Complainant even existed.

The submissions made by the Complainant were simply assertions that the actions of the Respondent, in offering the Disputed Domain Name for sale and in using the Disputed Domain Name in respect of a PPC webpage, somehow resulted in the Respondent registering and using the Disputed Domain Name in bad faith.

Further the Complainant has obtained a registered trademark which it must have known corresponded to the pre-existing Disputed Domain Name and then sought to argue that this trademark somehow retrospectively rendered the Respondent’s registration and use of the Disputed Domain Name as being in bad faith.

Given the nature of the Policy and previously decided cases on this issue, this was an argument that had no reasonable prospects of success in the circumstances of this case.

Any sensible reading of the relevant issues as set out in WIPO Overview 2.0 should have led to that conclusion.

The Panel accepts that the Complainant and its officers are not experts in the UDRP process but at least one of those officers is a qualified attorney and it is clear to the Panel that considerable thought and effort have been devoted by the Complainant to preparing its Complaint. That should have resulted in the Complainant appreciating that it was commencing a proceeding that had no reasonable prospect of success. The Respondent should not have been put to the time, trouble and cost of having to defend this Complaint.

The Panel agrees with the Respondent that the present case is very similar to Squirrels LLC v. Giorgio Uzonian, WIPO Case No. D2014-1434, a three-member panel decision, where the panel concluded that the case should never have been brought and constituted RDNH.

The present Panel applies the same reasoning to the present case.

Accordingly the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

Leave a Reply

Your email address will not be published. Required fields are marked *