29th Oct 2014
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wallace Media Pty Ltd v. CyclingTips CA
Case No. D2014-1384
1. The Parties
The Complainant is Wallace Media Pty Ltd of Balaclava, Victoria, Australia, represented by Holding Redlich, Australia.
The Respondent is CyclingTips CA of Quebec, Canada, represented by ESQwire.com PC, United States of America ("United States").
2. The Domain Name and Registrar
The disputed domain name <cyclingtips.com> is registered with Rebel.com Corp. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 14, 2014. On August 14, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 21, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced August 26, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response September 15, 2014. The Response was filed with the Center September 15, 2014.
The Center appointed Luca Barbero, Andrew F. Christie and The Hon Neil Brown Q.C. as panelists in this matter on October 3, 2014. 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.
On September 22, 2014, the Complainant submitted a Supplemental Filing. The Respondent submitted a reply on September 24, 2014.
October 13, 2014, the Complainant submitted an additional Supplemental Filing.
4. Factual Background
The Complainant operates an informational website on road cycling at "www.cyclingtips.com.au" since April 2009.
The disputed domain name <cyclingtips.com> was registered on August 14, 2002 and was pointed, prior to the filing of the Complaint, to websites featuring sponsored links to third party sites. At the time of the drafting of the decision, the disputed domain name is pointed to a blog about cycling and related tips.
5. Parties' Contentions
The Complainant contends to have acquired common law rights in the name CYCLINGTIPS and states that, although comprised of two common English words, "cycling" and "tips", CYCLINGTIPS is not generic or descriptive, but an arbitrary term suggestive of the content of the Complainant's website.
The Complainant informs the Panel that it began operating a website about cycling in 2008 and that, since then, it has earned a reputation in Australia as the preeminent provider of online journalism for road cycling. The Complainant underlines that the first article was published on September 8, 2008, at the website "www.bikehints.blogspot.com.au/" and that the website was subsequently moved to "www.cyclingtipsblog.com" and, in May 2009, to "www.cyclingtips.com.au".
The Complainant asserts that the website has become increasingly successful and is now a major player in the road cycling culture and business community in Australia, having accumulated a significant following from Australia, United States, United Kingdom of Great Britain and Northern Ireland, Canada and across the globe. The Complainant encloses details of the traffic to the Complainant's website "www.cyclingtips.com.au" and the Complainant also provides the numbers of followers of its social media accounts (29,000 Twitter followers, 115,000 fans, 22,000 Instagram followers).
Based on the above, the Complainant alleges that CYCLINGTIPS has acquired a secondary meaning within the Australian road bike community and is now solely used to described the Complainant's business.
The Complainant has submitted, as evidence of its reputation, links to online web sites where the Complainant has been referred to as a credible source of cycling news and opinion. It also relies on the volume of traffic to its website as proof of its consumer recognition.
The Complainant contends that the disputed domain name is identical to its trademark CYCLINGTIPS and states that the registration date of the disputed domain name, which predates the trademark of the Complainant, is not relevant for the purpose of the assessment of identity or confusing similarity according to paragraph 4(a)(i) of the Policy.
The Complainant asserts that the Respondent has no right or legitimate interest in the disputed domain name since there is no company named CyclingTips CA in Canada, the Respondent has no trademark rights for CYCLINGTIPS and cannot claim common law trademark rights.
The Complainant also submits that it has never granted to the Respondent any license, right or interest in the trademark CYCLINGTIPS, that prior to receiving notice of the dispute on April 30, 2014, the Respondent had not made use of, or demonstrated preparations to use, the disputed domain name in connection with a bona fide offering of goods or services and that the Respondent has not made legitimate noncommercial or fair use of the domain name. As to the use of the disputed domain name, the Complainant states that, after having been notified of the dispute, the Respondent attempted to misleadingly divert consumers to an electricity provider for a short period and that now the Respondent's web site has no content.
With reference to the circumstances evidencing bad faith, the Complainant states that the Respondent has indicated incorrect WhoIs information and concludes that the use of a fictious persona to hide the Respondent's identity is indicative of bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant also underlines that the Respondent is a "professional domainer" and that previous UDRP panels have stated that the Respondent has engaged in a pattern of registering domain names using a name that corresponds to the domain name in question and, in three instances, the domain names were transferred to the complainants (PI Financial Corp. v. Pi Financial QC, WIPO Case No. D2011-1741, Caja de Ahorros y Monte de Piedad de Las Baleares v. Sa Nostra QC, WIPO Case No. D2010-0062 and Games Workshop Limited v. Forge World Quebece Blog, WIPO Case No. D2010-1844). The Complainant also states that the Respondent owns 2017 domain names and that a large number of them accord with the pattern identified in the above-cited decisions, where domain names exactly matched the name of an entity supposedly registered in Quebec and the websites set up by the Respondent do not contain any substantive material relevant to the domain name.
The Complainant asserts that the Respondent has no legitimate website of its own and is attempting to monetize traffic generated to the disputed domain name as a result of users incorrectly entering the Complainanant's domain name without the suffix ".au". The Complainant has submitted screenshots showing that, on May 1, 2014, the disputed domain name was pointed to a website containing links to cycling related products and websites, while on May 9, 2014, the website contained an advertisement for GoSwitch Electricity and, at the time of the filing of the Complaint, it displayed a front page setting out the bottom half of a person riding a bycicle, along with links devoid of any content. The Complainant therefore contends that the Respondent is using the disputed domain name in bad faith according to paragraph 4(b)(iv) of the Policy, as the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's trademark.
As to the bad faith registration requirement, the Complainant cites the decision Octogen Pharmacal Company, Inc. v. Domains by Proxy, Inc. / Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786, stating that whether the future use of the disputed domain name constitutes retroactive bad faith registration will necessarily depend on an analysis of the facts and circumstances of a given case and relying on the following circumstances that would allegedly be indications of an intention to use the disputed domain name in bad faith: i) three previous panel decisions found that the Respondent has registered and used domain names in bad faith by using fictitious company names to register them; ii) the Respondent is operating as a "professional domainer" with over 2000 domain names registered; and iii) the Respondent is attempting to create a revenue stream from misdirected traffic. The Complainant concludes that this constitutes a breach of the warranty provided by the Respondent in Section 2 of the Policy and that the registration of the disputed domain name can be said to be retroactively in bad faith.
The Respondent rebuts the Complainant's contentions stating that there is no basis for transferring the disputed domain name to the Complainant since the Complainant does not have any registered trademark for CYCLING TIPS, the Complainant's creation post-dates the Respondent's registration of the disputed domain name by many years and it changed its own domain name three times since it began operating in September 2008.
The Respondent contends that the mere allegations of use are not enough to establish secondary meaning in the marketplace or that consumers readily identify the alleged trademark with the Complainant and that such a claim requires substantial evidence showing a continuous operation and the strength of the mark, something the Complainant cannot establish in this case.
The Respondent states that it has a legitimate interest in the disputed domain name as it solely incorporates a combination of two generic words "cycling" and "tips" subject to third party use worldwide as a common term.
The Respondent points out that it is the second registrant of the disputed domain name as the Respondent purchased it on September 21, 2005. The Respondent asserts that it registered the disputed domain name because of its inherent value as a common English descriptive phrase and a combination of two dictionary words and contends to have registered several other domain names including the term "tips".
The Respondent states that the Doctrine of Laches applies to the present case because of the significant age of the disputed domain name and the lack of any explanation for the delay or presentation of any evidence that the Respondent has done anything in bad faith at any time. The Respondent also asserts that, even if the Panel does not deny the Complaint on the basis of laches, the long delay also raises an inference that the Complainant did not truly believe that the Respondent engaged in bad faith registration.
As to the Complainant's alleged trademark rights, the Respondent states that there are over 31 million third parties using the term "Cycling Tips" in search results worldwide and that such substantial third party use of, and obvious common descriptive use and meaning of "Cycling Tips" precludes a finding of secondary meaning, i.e., that consumers associate the Complainant exclusively, or nearly exclusively, with the term. The Respondent concludes that the Complainant has not established that it has common law trademark rights to CYCLING TIPS and that, therefore, the disputed domain name is not identical to a mark in which Complainant has enforceable trademark rights.
The Respondent contends that its rights and legitimate interests in the disputed domain name are established because the Respondent registered it based on its common descriptive meaning and not to target a trademark. The Respondent explains that it has used the disputed domain name to display descriptive advertising links related to items related to "cycling" or "bicycles", and asserts that such use constitutes a bona fide offering of goods or services.
The Respondent denies to have registered the disputed domain name in bad faith, stating that the Respondent had no knowledge of the Complainant's alleged mark in September 2005, and that, at said time, it purchased the disputed domain name because it incorporated a descriptive term and it became available when the prior registrant of the domain name failed to renew it. It also contends that it does not constitute bad faith to offer descriptive term domain names for sale, even though for a significant profit.
The Respondent requests the Panel to issue a decision of Reverse Domain Name Hijacking since the Complainant knew, when it filed the Complaint, that it could not prove at least two, if not all three,
of the elements to prevail, and filed this UDRP to hijack the disputed domain name from its rightful owner and gain exclusive use of an inherently valuable common term and combination of two English words.
C. Complainant's Supplemental Filings
The Complainant submitted a Supplemental Filing, on September 22, 2014, stating that the Respondent had raised new arguments in its Response that were not dealt with in the Complaint and thus invoking the right of reply pursuant to clause 12 of the Rules.
Said new arguments raised by the Complainant would be, according to the Complainant, the Respondent's assertion that it has owned the disputed domain name since September 21, 2005, and the Respondent's indication of a list of domain names including the word "tips" that would be allegedly registered in its name.
With reference to the first issue, the Complainant asserts that, according to historical WhoIs reports included by the Complainant in its supporting material, the Respondent became the registrant of the disputed domain name on December 9, 2009, since before said date the disputed domain name was registered by other entities. The Complainant thus asserts that, since a transfer of registration to a new entity is treated as a new registration of the domain name by that entity for the purposes of the UDRP, this issue "forms the basis of some of the critical parts of the Respondent's submissions, including the suggestion that the doctrine of laches should apply, and that bad faith cannot be found in the circumstances".
With reference to the domain names containing the word "tips" that the Respondent alleges to have registered, the Complainant points out that, according to a recent Whois search, none of them is currently registered by the Respondent nor are any of the contact details the same as the details provided by the Respondent for the disputed domain name.
D. Respondent's Supplemental Filing
The Respondent replied to the Complainant's Supplemental Filing, on September 24, 2014, stating that the Complainant, instead of addressing the fundamental flaws in its case, namely the lack of a valid trademark, the lack of bad faith registration and absence of bad faith use, and the incontrovertible legitimate interest of the Respondent, persists in causing the Respondent to expend resources responding to a fundamentally flawed claim against an obviously generic domain name.
As to the Complainant's allegations that the disputed domain name was acquired by the Respondent only in 2009, the Respondent reiterates that it has owned it since 2005 and states that, since that date, the disputed domain name has been controlled by the same ownership, as attested by a Respondent's declaration and shown through the consistent DNS settings over the years, while the changes in the Respondent's corporate structure and relationship have been reflected in the indication of updated WhoIs information.
The Respondent also states that, even assuming arguendo that the Panel does not accept the common thread of ownership and selects 2009 as the "Respondent's date of registration," for the purposes of this proceeding, the Complaint and the Complainant's Supplemental Filing are still devoid of any evidence that the Respondent has ever targeted Complainant or attempted to play off of the alleged "good will" of the Complainant.
The Respondent concludes that, since the Complainant chose to file an additional submission in reply to the Response, but did nothing to refute the fundamental flaws in its original claim, the Complaint should be denied and a finding of Reverse Domain Name Hijacking should be issued.
E. Complainant's additional Supplemental Filing
The Complainant submitted an additional Supplemental Filing, on October 13, 2014, reiterating that, according to its searches, the disputed domain name was registered by the Respondent only in 2009 and thus stating that, should the Doctrine of Laches be applied, this should only be considered as the registration date. The Complainant also asserts that no prejudice was caused to the Respondent by reason of the alleged delay in bringing the Complaint, and that the Complainant attempted to contact the Respondent by email but received no answer to its communications.
The Complainant provides additional information in an effort to demonstrate that CYCLINGTIPS has acquired a secondary meaning, such as the number of visits to the Complainant's website (10 million over the past two years), the number of subscribers to its mailing list (15000), the use of CYCLINGTIPS by the Complainant in a series of articles published on the websites of major Australian newspapers owned by the Fairfax Group and on other Australian websites and the production and sale of merchandise featuring CYCLINGTIPS.
The Complainant asserts that, at the date of registration of the disputed domain name by the Respondent according to the Complainant's searches, the Complainant had already established common law trademark rights on CYCLINGTIPS in light of the number of visits to the Complainant's website, a significant portion of which came from Canada, where the Respondent is based.
The Complainant reiterates that the Respondent is using a fictitious name to conceal its identity, that the Respondent is not commonly known by the disputed domain name and is not making a legitimate, noncommercial or fair use of the disputed domain name.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Preliminary issue: parties' Supplemental filings
According to the consensus view of the UDRP panelists as summarized in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.2, it is in the panel's discretion whether to accept supplemental filings, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting the supplemental filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response. In addition, most UDRP panels that have allowed unsolicited filings have also tended to require some showing of "exceptional" circumstances.
While the Panel notes that there are no "exceptional circumstances" in this case, this Panel has reviewed the parties' supplemental filing as noted above under section 5C, 5D and 5E of this decision. The Panel finds that virtually the whole of this case can be decided on the basis of the documents and statements set out in the Complaint and the Response, however, the Panel will refer to the supplemental filings if they assist in resolving disputed issues of fact.
A. Identical or Confusingly Similar
The Complainant does not own any registered trademarks for CYCLINGTIPS and relies on alleged common law trademark rights acquired on said name.
In order to demonstrate common law trademark rights in a name, a complainant must show that the name has acquired a "secondary meaning", having become a distinctive identifier associated with the complainant or its goods or services. As mentioned in prior UDRP decisions and in the WIPO Overview 2.0, relevant evidence includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. In addition, in cases involving claimed common law trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there should be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness.
In the case at hand, the Panel notes that the name CYCLINGTIPS is not inherently distinctive as it is composed of the two generic words "cycling" and "tips" and is descriptive of the contents made available on the Complainant's blog site "www.cyclingtips.com.au".
The Panel has reviewed the material submitted by the Complainant and finds that it is not sufficient to demonstrate that consumers identify the name with the source of the Complainant's services and not merely a phrase describing those services.
Therefore, the Panel finds that the Complainant has failed to establish that it has a common law trademark in CYCLINGTIPS and has thus not discharged its burden of proving ownership of trademark rights according to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires that the Complainant demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
With respect to this requirement, a complainant is generally required to make a prima facie case that a respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name (WIPO Overview 2.0, paragraph 2.1).
As stated in prior UDRP panel decisions, the mere registration of a domain name, even one comprised of a dictionary word or phrase, may not of itself confer rights or legitimate interests in the domain name. In addition, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, which is the principal defence relied on by Respondent in this proceeding, the domain name would need to be genuinely used or demonstrably intended for such use in connection with the relied-upon meaning of the domain name and not, for example, to trade off third-party rights in such word or phrase.
In the case at hand, the Respondent submitted that it registered the disputed domain name because it is a highly descriptive, and hence potentially commercially attractive, phrase. However, Complainant maintains the evidence shows that the disputed domain name was mainly pointed in the past to landing pages featuring several sponsored links, while, after the filing of the Complaint, the disputed domain name has been pointed to a blog site about cycling tips and related material, thus related to the generic meaning of the disputed domain name.
In reply, Respondent submits that it has from time to time since its registration, as Complainant has conceded, used the domain name to point to website links for goods and services that fit comfortably within the genre of "cycling tips." The particular area of dispute is therefore whether those links were adopted before the filing of the Complaint or only after that event and hence whether they were used only to bolster Respondent's case. In this regard, Complainant's supplementary submission says:
A printout of all web pages from "www.cyclingtips.com" stored on the web archive "www.archive.org" was provided in Annexure M. These pages demonstrate that prior to March 2014, the Disputed Domain Name was used as a landing page for a collection of unrelated links on subjects such as weight loss, credit cards, anti-virus software and music downloads, none of which constituted a bona fide offering of goods or services in connection with the Disputed Domain Name
The majority of the Panel finds that the Respondent has not demonstrated that the disputed domain name was used in connection with a bona fideoffering of goods or services prior to the Respondent's receipt of notice of the dispute or that the Respondent made a noncommercial use of the disputed domain name, as the pointing of the disputed domain name show that several pay-per-click links, including links unrelated to cycling tips, were published on the correspondent website before the beginning of the dispute. In addition, no evidence has been submitted to show that the Respondent might have been commonly known by the disputed domain name.
One Panelist, The Hon Neil Brown Q.C., notes that the Complaint in this matter was filed on 14 August 2014. Exhibit M in fact shows that the website carries links to sunglasses, fitness equipment, cycling gear, mountain bikes and bicycles, none of which were mentioned by the Complainant but they are clearly all within the genre of cycling tips and were posted before the Complaint was filed. Annexure M and N both show bicycle and hence cycling tips-related advertisements before the Complaint was filed. This shows that the Respondent registered two generic words in the one domain name and used it for advertising within the genre of the domain name, giving rise to a right or legitimate interest in the disputed domain name.
Although the Panel has not reached a common view on the assessment of this requirement, the Panel notes that this is not decisive to influence the outcome of the dispute.
C. Registered and Used in Bad Faith
The Panel finds that the Complainant has failed to demonstrate that the Respondent registered and used the disputed domain name in bad faith.
The Panel notes that, as mentioned above, the Complainant has failed to establish trademark rights on CYCLINGTIPS and launched its website "www.cyclingtips.com.au" on April 19, 2009, several years after the registration of the disputed domain name. In addition, even assuming that the Respondent acquired the disputed domain name only at the end of 2009, there is no evidence that the Respondent might have targeted the Complainant at any relevant time and that the Respondent attempted to benefit from the Complainant's reputation for the business it has been conducting under the descriptive name CYCLINGTIPS.
As to the previous UDRP cases which involved the Respondent cited by the Complainant to suggest that the Respondent has engaged in a pattern of bad faith registrations, the Panel notes that this circumstance is not sufficient, per se, to demonstrate the Respondent's bad faith in this case.
With reference to the defense of laches invoked by the Respondent, the Panel notes that opinions differ on whether it applies under the UDRP and, if so, its effect. One view is that, if laches does not apply in general, delay itself may be relevant with respect to findings of rights or legitimate interests and bad faith. In the present case, the effect of delay in bringing the proceedings could not change the result, as Complainant has failed on the issues of substance. It is therefore not necessary for the Panel to express concluded views on this subject on this occasion.
D. Reverse Domain Name Hijacking
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 … the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding." Reverse Domain Name Hijacking ("RDNH") is defined in paragraph 1 of the Rules as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name."
The onus of proving a Complainant's bad faith is generally on the respondent, whereby mere lack of success of the complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking.
In Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing, WIPO Case No. D2005-0309, the majority of the panel stated that: "Allegations of reverse domain name hijacking have been upheld in circumstances where a respondent's use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy (see Goldline International, Inc v. Gold Line, WIPO Case No. D2000-1151). See also Deutsche Welle v. DiamondWare Limited, WIPO Case No. D2000-1202, where an allegation of reverse domain name hijacking was upheld in circumstances where the complainant knew that the respondent used the at-issue domain name as part of a bona fide business, and where the registration date of the at-issue domain name preceded the dates of the complainant's relevant trademark registrations.
The three-member panel in Yell Limited v. Ultimate Search, WIPO Case No. D2005-0091 noted that whether a complainant should have appreciated at the outset that its complaint could not succeed, will often be an important consideration".
In the present case, the Panel notes that the Complainant has failed to prove ownership of trademark rights in the name incorporated in the disputed domain name and the Respondent's bad faith at the time of the registration and in the use of the disputed domain name.
While the use of the disputed domain name made by the Respondent prior to receiving notice of the dispute does not show a genuine use in connection with a bona fide offering of goods or services as the Respondent expressly declared that it registered the disputed domain name because of the inherent value of a domain name composed of generic terms and acknowledged that it pointed it to mere parking pages with pay-per-click links, the Panel finds that the Complainant should have known that it would not be successful in the present UDRP proceeding, due to the Complainant's lack of any registered trademark corresponding to the disputed domain name, the descriptiveness of the name CYCLINGTIPS and the paucity of evidence establishing that the name CYCLINGTIPS has become distinctive of the Complainant's services. These fundamental flaws in the Complainant's case are exacerbated by the facts, which should have been known to the Complainant and its authorised representative, that the registration date of the disputed domain name predated the Complainant's existence by several years and that there was an absence of any evidence of the Respondent's intention to target the Complainant.
For the above reasons, the Panel finds that there has been RDNH in this case.
For the foregoing reasons, the Complaint is denied. The Panel declares under paragraph 15(e) of the Rules that the Complaint was brought in bad faith and constitutes an abuse of the Administrative Proceeding.
Andrew F. Christie
The Hon Neil Brown Q.C.
Date: October 29, 2014