A three member UDRP panel ruled against Marchex who was represented by John Berryhill, on the domain name priceshoes.com, with one panelist filing a dissenting opinion.

The complainant is  Administradora de Marcas y Franquicias, S.A. de C.V. which the panel found to own “numerous trademark registrations for PRICE SHOES in various jurisdictions” which were registered years prior to Marchex registration which was back in 2005.

The majority of the panel seemed to particular bothered by the fact that the results on the PPC page were not only related to shoes which would have matched the descriptive nature of the domain but had links unrelated to shoes including some adult links.

The majority of the panel also placed an additional burden on Marchex who the panel described as being “professional registrants who are engaged in the business of domain name monetization” to research whether trademark results existed, at the time of registration.

The third panelist, the Honorable Neil Brown filed a lengthy dissent discussing why he would have denied the complaint

Here is the relevant facts and findings by the panel:

“The Respondent has provided a thoughtful and well-organized Response to the Complainant’s contentions. The crux of the Respondent’s argument under this element is that the domain name text is merely the combination of two generic, English language words. The Respondent notes the extensive body of UDRP case law, indicating that the monetization of generic-word domain names, in connection with PPC advertising related solely and completely to the dictionary meaning of those words, constitutes a legitimate business practice under the Policy.”

“The Panel does not dispute that the use of PPC monetization in connection with wholly generic domain names, which follow the guidelines for use set out in previous UDRP decisions, may indeed constitute a right and/or legitimate interest in a domain name. There are, however, three critical factors to consider in this regard, under the particular circumstances of this case, which must be addressed in turn.”

“First, where a complainant’s trademark registration is of a more descriptive nature, it can become difficult for a panel to draw a line between the use of the domain name in connection with its generic meaning, and use of the domain name in a trademark sense. ”

“In this case, where the Complainant uses the mark PRICE SHOES to sell shoes, and the Respondent has provided PPC advertising to various shoe retailers, it is difficult to determine in which “sense” the predominate use has occurred. As will be shown below, however, other aspects of the case preclude a hair-splitting decision on this point.”

“Second, it is unclear whether the domain name can, indeed be considered truly “generic”. ”

“Where a domain name consists of a single word, such as a noun or verb, there can be little confusion as to whether or not the domain has been used by its registrant in connection with a trademark or in connection with its dictionary meaning. ”

“As it is impossible to, for example, trademark the term “soda” in connection with soft drink beverages, the use of a website at “www.soda.com” for information or PPC advertising for beverages would indeed be considered a generic use.”

“In this case, however, the domain name does not consist of a single dictionary term. Instead, it consists of two terms, combined together in precisely the same configuration as the Complainant’s pre-existing mark.”

“It also combines the terms in exactly the same manner as the Complainant’s primary website, which had been registered for roughly six years prior to the Respondent’s acquisition of the domain name in 2005. ”

“Perhaps most importantly, the Complainant has secured registration for its PRICE SHOES mark in numerous jurisdictions, indicating that the combination itself is not wholly generic. A URDP panel will not generally “look behind” a trademark registration granted under the authority of a sovereign nation, and this Panel is likewise not inclined to do so.”

“The third point is, perhaps, the most directly relevant to the questions raised by the parties, and provides a solution to the generic use question in this case.”

“In order to meet the requirements of this “safe harbor” exception, the domain name must be used only and entirely in connection with the generic or dictionary-related meaning of the textual string. ”

“The Complainant provided a number of screen-shots of the links available on the disputed domain name. ”

“While many of them related to shoes, shoe retailers and shoe sellers (which, naturally, do compete with the Complainant’s business, but are also logically connected with the meaning of the words comprising the domain name’s textual string), many of the links are entirely unrelated. ”

“On October 21, the Presiding Panelist also visited the website active at the disputed domain name, and found the following links thereon (in addition to a number of shoe-related hits): Chicas Para Ligar (girls for flirting), Fotos de Mujeres (pictures of women), Videos Mujeres (videos of women), Mujeres Para Chatear (women for chatting), Marcos Para Fotos (photo frames), Descargar Juegos Para Movil (download mobile game), Juegos Para Celular (mobile games).”

“It is clear that these PPC ads are in no way related to the generic or dictionary meaning of the disputed domain name. ”

“Furthermore, a number of these links connect Internet visitors with advertising for adult content, which has been held in many prior cases under the Policy to constitute evidence of Respondent bad faith.”

“The Respondent has provided no explanation for its inclusion of PPC links unrelated to the generic meaning of the terms which comprise the domain name, and has not answered the Complainant’s allegations in connection to the provision of adult content on a website containing its registered mark.”

“Accordingly, for all of the above reasons, the Panel finds that the domain name has not been used in a manner consistent with rights or legitimate interests on the part of the Respondent, and thus that the Complainant has satisfied the second element of the Policy.”

C. Registered and Used in Bad Faith

“With regard to the final element of the Policy, it is necessary for the Complainant to demonstrate that the disputed domain name was both registered and used in bad faith. ”

“In order to demonstrate the first of these requirements, the Complainant must show that the Respondent either selected the domain name while aware of the Complainant’s rights in the PRICE SHOES mark, or that the Respondent had reason to know of the Complainant’s mark and was willfully negligent in discovering the Complainant’s rights.”

“In that regard, the Respondent has put forward a number of arguments concerning the jurisdiction of the Complainant’s trademark, indicating that it was under no duty to search for marks registered in foreign countries. ”

“The Panel agrees.”

“To impose a duty on registrants, even professional registrants who are engaged in the business of domain name monetization, to search the trademark databases of the entire world would, in the Panel’s view, be entirely too burdensome. ”

“Furthermore, as only certain jurisdictions around the world provide for free, open-access trademark searching, such a requirement could also lead to situations of unequal protection for rights-holders.”

“That said, however, it is clear that registrants, and in particular professional domain name registrants, have a duty to avoid infringing the rights of others under paragraph 2(d) of the Policy. ”

“Professional registrants cannot avoid liability for their actions by simply electing to remain “willfully blind” to the rights of others. ”

“Thus, the question remains, whether the Respondent would have discovered the Complainant and been put on notice of the Complainant’s trademark rights, had it conducted a minimal due diligence investigation through the use of a basic online search when it acquired the domain name in 2005. ”

“This question is made rather more difficult as the Complainant has elected to delay the filing of its Complaint for roughly seven years, and it is now harder to ascertain what a Google search might have returned within the relevant time frame.”

“That said, however, the Complainant has provided a time-limited historical Google search, showing hits which would have been returned on or around the date on which the domain name was originally registered (potentially by the Respondent’s predecessor-in-interest) in 2003. ”

“The Complainant’s website is the first hit in the search results, and thus (particularly absent any rebuttal or refutation of the Complainant’s evidence or arguments in this regard), it seems clear that a basic Internet search would have put the Respondent on notice of the Complainant’s rights in the PRICE SHOES term. The Complainant’s domain name had, at that time, been registered for roughly six years, and the Complainant had been conducting its business under the Price Shoes name for nearly ten years.

“Accordingly, the Panel finds that the disputed domain name was registered in bad faith by the Respondent.”

“The final remaining issue in this case, then, concerns the bad faith use of the domain name. The Complainant has argued that bad faith may be inferred either by the Respondent’s asking price for the domain name, or by the Respondent’s use of the “robots. txt” software. ”

“The Panel finds both of these arguments to be unconvincing. ”

“The Respondent has already gone to great lengths (in Rba Edipresse, S. L. v. Brendhan Hight / MDNH Inc., WIPO Case No. D2009-1580) to demonstrate to the interested UDRP community the many and varied valid reasons for employing web-crawler blocking mechanisms, and the Panel agrees that the use of such programs may be entirely legitimate.

“Likewise, the parties’ deliberations concerning the potential sale of the domain name do not indicate wrongdoing by either side. It is apparent that the Respondent did not seek out the Complainant to solicit a sale of the domain name, and the amount requested by the Respondent (in a free market exchange) does not give rise to questions of impropriety.”

“That said, however, the Respondent has clearly used a domain name containing the registered trademark of another entity, in which it holds no rights or legitimate interests, for the generation of revenue. ”

“Such use is consistent with the bad faith activities outlined under paragraph 4(b)(iv) of the Policy, and, therefore, the final element has been satisfied.”

“The only remaining question concerns the impact of the Complainant’s long delay in the filing of the Complaint.”

“The Complainant waited a long time to act on its rights in the PRICE SHOES mark, and did not file its Complaint until seven years after the Respondent took possession of the domain name. ”

“The Panel would certainly have expected to be provided with some explanation from the Complainant as to the reason for this delay, but unfortunately, none was forthcoming from the materials in the case file. ”

“Given the particular facts and circumstances of the case, however, the Panel is not inclined to deny the case on the basis of Complainant delay and laches, for a number of reasons.”

“The Panel notes initially that many (although not all) UDRP panelists have generally declined to introduce the equitable doctrine of laches into the UDRP. ”

“Furthermore, to the extent relevant, the Respondent did not request such equitable relief, and similarly did not provide the necessary evidence to establish detrimental reliance. ”

“Additionally, the disputed domain name has been used at all times in connection with a PPC landing page which (from a programming standpoint) does not require a good deal of ongoing development. The initial input of effort, in setting up the site, would be the same regardless of how long the Complainant delayed the filing of its case, and accordingly there would seem to be little in the way of time-induced harm to the Respondent.”

“In any event, for all of the above-discussed reasons, the Panel holds that the domain name has also been used in bad faith, and that the dual-pronged requirement of the third element of the Policy is duly satisfied.”

In a Dissenting Opinion the Honorable Neil Brown the Respondent showed a legitimate interest in the disputed domain name.

“The first is the nature of the expression “priceshoes. ”

“It should not require any evidence to establish that this expression is what is variously referred to as a generic or descriptive term using dictionary words. That is so because the expression is made up of two words that may be found in any dictionary. The first of them is “price”, which is a noun and a verb. As a noun, the word means in the English language the sum of money for which the seller will sell the goods in question to the buyer. As a verb, the word means the process of putting a price on goods or finding out what is the price of the goods. The second of the two words, “shoes” is clearly a noun and means footwear. ”

“All of this should be clear and beyond argument and should certainly not require either any direct evidence or further explanation. The Respondent, however, has volunteered more and has adduced evidence by way of published dictionary definitions of the word “price” as a verb, which is the form in which it is clearly used in the domain name. The Respondent’s evidence is specific and unequivocal and is to the effect that where “price” is used as a verb, it has the meaning of the process of ascertaining the price of something.”

“Accordingly, unless the Respondent’s evidence and the above additional material are simply to be ignored, it must be the starting point for the argument about the words in question. That evidence establishes that the Respondent, in choosing its domain name, has used two English words with clear and established meanings. In combination, in a domain name, they mean that it will lead to a website where shoes may be priced and the prices compared. The majority express the view that this interpretation is “plausible” and “debatable”, although I myself would say that it is well established and for the reasons given above.”

“The question remains, however, whether the Respondent has used the domain name for a website where shoes may be priced and prices compared and that is the second issue. The majority’s view is that it has not done so. ”

“My view is that it has. My reasons for so finding are as follows.”

“The majority maintain that, for the Respondent to succeed, it must show that the links on the website must be entirely related to shoes and their sale, whereas some of them are not.”

“It also cites 3 decisions in support of that proposition. ”

“If the decision in this proceeding is to be determined by previous decisions, it should be said that the first of those decisions, Caisse Nationale des Allocations Familiales v. Domain Discreet Privacy Service / Medya Grup, Ozaltin Haydar, WIPO Case No. D2012-0877 is certainly not directly in point as the panel made the ruling in the decision that “In the instant case, there is no dictionary meaning for the term “caf”, which forms part of Complainant’s trademarks and the disputed domain name that is confusingly similar to these trademarks. “

“In the present case , of course, the starting point, which the majority accept as being at least plausible, is that priceshoes. com is made up of two dictionary words that in fact do have very clear dictionary meanings. ”

“The second decision, mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141 also deals with domain names not based on dictionary meanings, rather than those that are so based as in the present case. As the panel said “Respondent’s domain names appear to be used for their trademark value and not for any descriptive value in the names. Indeed, “myxer”³ is not a dictionary word. ”

“The third decision, HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062 was correctly decided on its own facts which were facts that gave rise to a concern by the panel that the Respondent was in effect copying the services of the trademark owner and hence not using the domain name in its generic sense. ”

“More importantly, however, than analyzing previous decisions, the proposition that the website must be entirely devoted to the one subject covered by the words of the domain name is, with respect, an artificial one and has the potential for doing injustice to parties in the position of the present Respondent, who , even if they strive to keep the website to subjects covered by the generic domain name, also include additional content, whether by accident, issues of technology or even from a desire to provide some additional benefit for the user.”

“The majority point to material on the website that is not devoted to selling shoes.”

“That is true, for there are some deviations from that ambit. The majority point to 7 items it has discovered, although the reality is that there are more than that number. ”

“However, the important point, surely, is not how many links can be found that are outside the dictionary definition of the price of shoes, but what that shows us about the substance of the site and what the site is really about and what it tells us about the intention and motives of the Respondent. That should be the proper area of inquiry by the Panel, as it is by courts and tribunals in analogous situations. ”

“The question really should be: has the Respondent produced a website that is in substance and reality a website about the prices of shoes or is it in reality something else? My examination of the site leads me to the conclusion that it is a website devoted principally and in substance to one subject, namely shoes, the price of shoes, the comparison between brands of shoes and the process of buying them. The overwhelming proportion and preponderance of the site deals with what must be hundreds of brands, styles and suppliers of shoes. It contains links to a broad range of suppliers of shoes, with prices marked so that the user may make comparisons and it contains links that provide information to be used by customers in making that comparison.”

“The Respondent has also added to the website other material outside the genre, but it is minor in numerical content, informative and in many cases socially useful. There are promotions for Common Focus, (a US neighbourhood conflict solving organisation), childrens’ health, a news service , the de Young Museum in San Francisco and the Catholic University of Louvin, among others. The number of such items is comparatively few and, if anything, their occasional appearance makes it clear that they are on a website that is predominantly and overwhelmingly a site for internet users who want to price shoes. Moreover, the site as a whole shows that the intention of those responsible for it has been, as it is now, to promote the sale of shoes by enabling the user of the site to price them.”

“As such and together with the time over which the Respondent has conducted this lawful business and the absence of any targeting of the Complainant, gives rise to a right or legitimate interest in the disputed domain name.”

Bad Faith

I agree with many of the observations of the majority on bad faith and with its rejection of many of the Complainant’s arguments on this element. In particular, the majority has held that panelists should not read into the Policy a requirement for a registrant to conduct trademark searches in foreign jurisdictions and concludes that the Respondent was “under no duty to search for marks registered in foreign countries. “ There may be a case for requiring, in an appropriate case, what the majority describe as the “lowest-standard requirement” of a Google search. However, in the present case, that would seem to be a very dubious way of determining the intention of the Respondent at the time it acquired the disputed domain name. The inordinate delay of seven years by the Complainant in bringing this Complaint makes it virtually impossible to come to any conclusions on that issue one way or the other and at the very least is seems an inappropriate basis for denying to the Respondent property that it acquired lawfully many years ago and used lawfully ever since, without any objection from the Complainant. This is therefore a classic case of delay preventing a tribunal from reaching a responsible decision about the intention and motives of a party that were formed many years earlier. To this the majority say that the Respondent has not asked for delay or laches to be taken into account and that no detriment has been shown. However, the Panel has the power and the responsibility under paragraph 15 of the Rules to have regard to “any rules and principles of law that it deems applicable” and in the particular circumstances of this case the effect of delay, whether or not it is referred to as laches is, in my opinion applicable. Moreover, the detriment that a respondent suffers as the result of inordinate delay of the sort that has occurred in this case, without a skerrick of explanation from the Complainant, is the potential loss of a business it has been allowed to build up using the domain name over many years while the complainant slept on its rights.

“On the issue of bad faith use, for the reasons given above I am of the opinion that the use of the disputed domain name has been legitimate and in good faith as it has been used in a balanced and lawful way to promote goods and services coming within the generally accepted meaning of the wording of the disputed domain name and without any pretense by the Respondent that it is the Complainant and without any targeting of the Complainant at all.

For these reasons I would deny the Complaint.”