17th Jul 2014
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dealhunter A/S v. Richard Chiang
Case No. D2014-0766
1. The Parties
The Complainant is Dealhunter A/S of Frederiksberg, Denmark, represented by Aumento, Denmark.
The Respondent is Richard Chiang of San Francisco, California, United States of America (“US”), represented by ESQwire.com Law Firm, US.
2. The Domain Name and Registrar
The disputed domain name <dealhunter.com> (the “Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 9, 2014. On May 9, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 10, 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 on May 22, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response on June 11, 2014. The Response was filed with the Center on June 11, 2014.
The Center appointed Nicholas Smith, Daniel Kraus and The Hon Neil Brown Q.C. as panelists in this matter on July 11, 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.
4. Factual Background
The Complainant is a Danish company that operates a “deal site”, i.e. a website that offers a range of discounted products and group buying deals in Denmark and Sweden. It was established in on January 1, 2007 and maintains websites at “www.dealhunter.dk” and “www.dealhunter.se” (the “Complainant’s Website”) which it has owned since 2010. It claims to have more than 350,000 users of its websites each month.
The Complainant owns the registered trademark no. 011340593 for a figurative mark whose primary element is the word “Dealhunter” with the letters “D” “a” and “l” in gray and the other letters in green (the “DEALHUNTER Mark”). The DEALHUNTER Mark was registered on April 18, 2013 in a variety of European countries for a variety of services in class 35, including the “marketing and providing of goods and services for others via websites and apps”.
The Domain Name <dealhunter.com> was registered on April 23, 1998. It currently resolves to a website (the “Respondent’s Website”) that contains the tag-line “dealhunter, What’s your deal”, an opportunity for visitors to provide their email addresses to the Respondent and a number of what appear to be Google advertisements. The Respondent’s Website does not resemble the Complainant’s Website in any way and in particular is in a different language, uses different colours, fonts and overall design.
In 2013, the Complainant made a pair of offers to purchase the Domain Name from the Respondent, for USD 5,000 and USD 7,000 respectively. The Respondent rejected these offers and did not make a counter offer.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s DEALHUNTER Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the DEALHUNTER Mark having registered the DEALHUNTER Mark on April 18, 2013. The Domain Name is identical to the DEALHUNTER Mark.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. Since the registration of the Domain Name in 1998 the Respondent has made no use or demonstrable preparations to use the Domain Name. Rather the Domain Name has simply been advertised for sale. It is not immediately apparent to Internet users visiting the Respondent’s Website that the Domain Name is not owned by the Complainant. By reason of those facts the Respondent holds no rights or legitimate interests in the Domain Name.
The Domain Name was registered and is being used in bad faith. Under the Policy an offer to sell a domain name for valuable consideration in excess of the documented out-of-pocket costs conclusively establishes that the domain name was registered and used in bad faith. In the present proceeding the Respondent indicated that the Domain Name was for sale. The Complainant made offers of USD 5,000 and USD 7,000 that were not accepted. Furthermore the Respondent failed to abide by the Policy to protect against trade mark infringement after being made aware of the Complainant’s rights in the DEALHUNTER Mark; in fact the Respondent attempted to extract an offer of above USD 7,000 in order to sell the Domain Name. In all the circumstances of the case it can be said that the Respondent is acting in bad faith.
Notwithstanding the incorporation of the Complainant subsequent to the registration of the Domain Name, the Respondent registered and used the Domain Name in bad faith because, since registration the Respondent has consistently offered the Domain Name for sale, and because since registration the Respondent has redirected the Domain Name to a website that has no connection with the Complainant. This conduct amounts to registration and use of the Domain Name in bad faith.
The Complainant has not proven that the Domain Name was registered and used in bad faith because the Domain Name was registered in 1998 and the Complainant registered the DEALHUNTER Mark in 2013. In fact, it appears that the Complainant registered its own domain name, <dealhunter.dk>, in November 2010, over a decade after the Respondent acquired the Domain Name.
The Complainant’s DEALHUNTER Mark is for a figurative, as opposed to word mark and is at best descriptive – relating to the sourcing and offering of deals to the public. The Complainant is clearly overreaching in its effort to seek exclusive control of the words “Deal Hunter.” It is clear that third-parties world-wide commonly use the term “deal hunter” in connection with the offering of discounts or deals.
The Complainant certainly would have been aware of the extensive and common third-party use of “deal hunter” when it decided to obtain its own domain name and saw that other domain name options that include the words “deal hunter” were not available or in use. Indeed, an advanced Google search for “deal hunter” excluding “dealhunter.dk” and “dealhunter.se” to avoid results for the Complainant reveals 181,000,000 results with millions of third-party uses of the common term. It is beyond question that there is ample worldwide third-party use of the term “deal hunter” consistent with its common and descriptive meaning. Accordingly, the Complainant’s attempt to monopolize the term is disingenuous and must be rejected.
The Respondent has rights and legitimate interests in the Domain Name by reason of the fact that the Respondent registered the Domain Name prior to the Complainant having any rights in the DEALHUNTER Mark. The Respondent registered the Domain Name in good faith in 1998 because it included the generic dictionary words “deal” and “hunter.” It is well-established under the Policy that the use and registration of descriptive term domain names is an extremely common and permissible business practice. The registration of generic or descriptive term domain names, such as <dealhunter.com>,ipso facto establishes the Respondent’s legitimate interest, provided the Domain Name was not registered with a trademark in mind.
The Respondent registered the Domain Name to support his vision to create an online business related to the common meaning and its inherent value of this combination of the English words “deal hunter.” In 1999 the Respondent raised USD 250,000 to support his business ideas and first worked on launching a website at the domain name <planetcities.com>. In 2011, the Respondent began working with M. Gavin to develop a “daily deal” website and created logos, multiple design drafts, and a development version of the site and ultimately finalized a new business model to support its venture. Unfortunately, in November 2011 the Respondent’s father passed away and he placed his development plans on hold.
The Respondent did not register the Domain Name with the intent to sell to the Complainant, to disrupt the Complainant’s business, or to confuse consumers seeking to find the Complainant’s website. The Respondent did not register the Domain Name to prevent the Complainant from owning a domain name incorporating its trademark and had no knowledge of the Complainant when he registered the Domain Name. Indeed, the Complainant did not exist until sometime after 2010, first applying for its trademark in 2013.
The Complainant is wrong that responding to an inquiry to purchase a domain name is evidence of the Respondent’s bad faith. Anyone has the right to register and sell a domain name which was registered based on its generic meaning. Not only do such sales fail to establish bad faith, they can support an owner’s legitimate interest under the appropriate circumstances. It only constitutes bad faith registration to register a domain name with the intent to sell it to the trademark owner. There is absolutely no evidence the Domain Name was registered with this intent. Finally, it should be noted that a link for an offer to sell a domain name is not “use” that would attract Internet users to the website by creating a likelihood of confusion with a trademark, as is required under paragraph 4(b)(iv) of the Policy. Nothing related to the Complainant’s unsuccessful attempt to purchase the Domain Name constitutes bad faith on the part of the Respondent.
Furthermore the Respondent registered the Disputed Domain on April 23, 1998. The Complaint was filed over fifteen years later (and over four years after the Complainant registered its own domain name <dealhunter.dk>) – a substantial delay by any measure and an eternity in “Internet time.” The Complainant does not explain why it waited so long to initiate the Complaint. This long delay bars the Complaint under the doctrine of laches, which has been recognized under the Policy.
There simply is no evidence demonstrating that the Respondent targeted the Complainant’s trademark. Indeed, the fact that the Complainant first filed for its trademark in 2013 makes this line of reasoning impossible to accept. This lack of any evidence that the Respondent targeted a trademark, and the likelihood that the Complainant was aware the evidence was lacking when it filed the Complaint, establishes reverse domain name hijacking. Accordingly, because the Complainant has brought forth a case with no basis, and which it must have known had no basis, the Panel should find that the Complainant has abused the proceedings and, accordingly, issue a decision finding that the Complainant has engaged in reverse domain name hijacking.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:
– (i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
– (ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
– (iii) The Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the DEALHUNTER Mark, having registrations for DEALHUNTER as a trademark in the European Union. While the mark itself appears to be a weak mark, consisting of what is essentially a descriptive term for an entity that hunts for deals, it is a mark that is validly registered in the EU. The DEALHUNTER Mark, while a figurative mark contains as its dominant element the word “Dealhunter”, which is the only element of the mark reproducible in a Domain Name. As the generic Top-Level Domain (“gTLD”) “.com” may be discarded in considering the identity or confusing similarity between a domain name and a mark, the Domain Name is identical, or at best confusingly similar to the DEALHUNTER Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
The Panel notes that the system of domain name registration is, in general terms, a “first come, first served system” and, absent pre-existing rights which may be applicable to impugn a registration, the first person in time to register a domain name would normally be entitled to use the domain name for any legitimate purpose it wishes. Consistent with that principle, the Respondent submits that his right or legitimate interest in the Domain Name arises from the fact that he has registered a domain name consisting of two common, descriptive words in the English language, that he had not registered the name of a trademark and that he has not used the Domain Name for the purpose of targeting the Complainant. In support of that submission the Respondent has cited some of the many prior UDRP decisions to that effect such as National Gardening Association, Inc., v. CK Ventures, NAF Claim No.1294457 and has verified his submission in a signed statement adduced in evidence. No attempt has been made to rebut that submission or the evidence in support of it. There is no evidence before the Panel to suggest that the Domain Name was or is used to trade off third-party rights in “Deal Hunter”; indeed the Respondent could not have used the Domain Name to trade off the Complainant’s rights in the 15 years between the registration of the Domain Name and the Complainant acquiring marks in the DEALHUNTER Mark. Accordingly the Panel finds that the Respondent has established rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b) provides that for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owners of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) The Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. (Policy, paragraph 4(b))
The registration and use requirements of paragraph 4(a)(iii) of the Policy are conjunctive, and a complainant bears the burden of proof on each. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. If either of the required elements is not established, the Complaint must fail. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 (denying transfer of the Domain Name because the Complainant failed to prove bad faith registration).
The Domain Name was registered in 1998. The Complainant was incorporated in 2007, it registered its <dealhunter.dk> domain name in 2010 and the DEALHUNTER Mark was registered in 2013. Even taking the Complainant’s evidence at its highest, there is no possibility that the Respondent, when it registered the Domain Name in 1998, could have been aware of the Complainant or its rights in the DEALHUNTER Mark: The Complainant simply did not exist. For this reason, the Domain Name was not registered in bad faith.
The Complainant has argued that bad faith registration and use can be found by the fact that the Respondent is seeking to sell the Domain Name, received offers from the Complainant and rejected them. These arguments are unpersuasive to this Panel. The Complainant’s submission that an offer to sell a domain name for valuable consideration in excess of the documented out-of-pocket costs conclusively establishes that the domain name was registered and used in bad faith is an incorrect reading of the Policy.
Paragraph 4(b)(i) of the Policy specifically refers to the Respondent acquiring the Domain Name primarily for the purpose of selling the Domain Name to the Complainant or a competitor of the Complainant for valuable consideration. The Complainant fails to explain how the Respondent could acquire the Domain Name for this purpose when the Complainant did not exist at the time of the acquisition and would not exist for another nine years. The mere fact that the Respondent has chosen to sell the Domain Name for valuable consideration is not by itself evidence that the Respondent acquired the Domain Name for the purpose of selling the Domain Name to the Complainant or a competitor of the Complainant for valuable consideration.
Paragraph 4(b)(iv) of the Policy requires a finding that the Respondent is using or has used the Domain Name intentionally to attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark. In the present proceeding there is no evidence that the Respondent has attempted to create a likelihood of confusion with the DEALHUNTER Mark. Not only does the Respondent’s Website make no reference to the Complainant or its area of business, it would have been literally impossible for the Respondent to have had any such intent in the period of time after the Respondent acquired the Domain Name prior to the Complainant’s incorporation.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), states in response to the question “Can bad faith be found if the disputed domain name was registered before the trademark was registered or before unregistered trademark rights were acquired?” that:
“Consensus view: Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date [see further paragraph 1.4 above], 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.”
While there have been cases where bad faith has been found when the registration took place prior to the acquisition of trademark rights, such cases involve situations where, at the time of registration the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights. This is not such a matter. The Complainant did not exist at the time the Respondent acquired the Domain Name. The Panel finds that the Respondent has not registered the Domain Name in bad faith.
Accordingly, the Panel finds that the Respondent did not register and use the domain name in bad faith.
The Respondent, in its Response also raises the question of laches. Given the Complainant was registered in 2007 and registered its domain names in 2010, one would naturally question why the Complainant waited 7 years to bring a proceeding in this matter. The Complaint provides no explanation for this delay.
The Panel notes that the passing of 7 years between the registration of the Complainant and the commencement of the present proceedings and the lack of any explanation for the delay has made it more difficult for the Complainant to establish its case on the merits. “The longer the time a disputed domain name has been registered, the more difficult it is for a complainant to prove bad faith registration.” AVN Media Network, Inc. v. Hossam Shaltout,WIPO Case No. D2007-1011. Although the Panel’s decision in this case does not rest simply on the passage of time between registration of the Domain Name and the Complainant’s assertion of its rights, it is a fact that the Panel cannot ignore.
Opinions have differed on the applicability of laches or delay in UDRP proceedings. This Panel’s view is that delay in filing a complaint is not an automatic bar to a complaint, but nor can it be ignored, for all the facts must be taken into account in all proceedings and a decision made in the light of all the circumstances of the individual case.
In the present case, the Panel has found that the Respondent has not registered and used the Domain Name in bad faith and the Complainant therefore cannot succeed on the merits. In these circumstances it is not necessary to make a finding as to whether the Complainant is barred from commencing or succeeding in the proceeding under the ground of Laches.
E. Reverse Domain Name Hijacking
Paragraph 15(e) of the Policy 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.
In Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing, WIPO Case No. D2005-0309, the majority of the three-member panel noted that the onus of proving that a complainant has acted in bad faith is on the Respondent, and that mere lack of success of the complaint is not of itself sufficient to constitute reverse domain name hijacking. The majority in Jazeera went on to note 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 view of the Panel this is a Complaint which should never have been launched. The Complainant knew that the Domain Name was registered nearly 9 years before the Complainant came into existence and close to 15 years before it acquired any registered rights in the DEALHUNTER Mark. It made two offers to purchase the Domain Name, and following the rejection of those offers and the registration of the DEALHUNTER Mark, chose to bring this Complaint.
The Complainant made no attempt to demonstrate the existence of any earlier rights. The Complainant did attempt to make an argument that suggested that the case of Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, WIPO Case D2009-0786 imposed an ongoing duty not to use the Domain Name in violation of another’s rights. The Octogen case has been criticised in subsequent decisions, including Validas, LLC v. SMVS Consultancy Private Limited, WIPO Case D2009-1413 and Torus Insurance Holdings Limited v. Torus Computer Resources, WIPO Case D2009-1455. In any event it involved a completely factually different situation to the present proceedings (the then complainant had used the non-descriptive OCTOGEN mark for approximately 60 years before the registration of the Domain Name). Furthermore, it its entirely unclear, given the Respondent is based in the United States and was not using the Domain Name to provide a service similar to the services for which the Complainant registered the DEALHUNTER Mark, which of the Complainant’s trade mark rights the Respondent was allegedly violating.
Given the nature of the Policy and previously decided cases on this issue, this, along with any other arguments that the Respondent registered the Domain Name in bad faith, were arguments that had no reasonable prospects of success.
The Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
For the foregoing reasons, the Complaint is denied.
The Hon Neil Brown Q.C.
Date: July 17, 2014