Dune Holdings Limited of London, United Kingdom just lost its attempt to grab the domain Dune.com

The domain holder Jeffrey Greenberg was represented by John Berryhill, Esq. who also represents my company has owned the domain since 2004.

The opinion is unusually long and contains not only the majority opinion but two separate Concurring opinions thereby all three panelist filed an opinion in this case.

The majority UDRP opinion was written by Adam Taylor.

The panel decided the case solely on the issue of bad faith.

It should be noted that DomainSponsor.com seemed to be very helpful in providing the UDRP panel a lot of information as to what links appeared on the domain name, what platforms of DomainSponsor the domain was at over a period of October 2013 until the Complaint was filed.

I haven’t seen a UDRP decision that include so much information provided by any parking company so I would say DomainSponsor should be commended for going the extra mile.

Also one of the Panelist gave glowing praise to Mr. Berryhill in his Concurring opinion.

The Compainant as you will read is a rather large company which uses the domain name DuneLondon.com for its website but also owns the domain name dune.co.uk which it re-directs to the .com

Here are the relevant facts and findings by the three member panel:

“”The Complainant, a fashion retailer principally focusing on footwear and fashion accessories, has traded under the names “Dune” and “Dune London” since 1992.

The Complainant’s home market is the UK, where it owns 46 Dune-branded stores, including one on Oxford Street in London.

It operates concessions in a further 169 department stores.

The Complainant’s sales under the “Dune” brand total some GBP 270 million in the three year period ending March 2014.

The Complainant owns an international portfolio of trade marks for the word DUNE including UK trade mark no. 1431627 filed July 10, 1990 in class 25 and US trade mark no. 3747858 filed April 20, 2006 in classes 26 and 35.

The Respondent has used the disputed domain name at different times for websites with various sponsored links, the exact nature of which have been hotly contested between the parties. These matters, and other relevant facts, are set out in a chronology in section 6D of this decision.

Given the separate concurring opinion of one Panel member, discussed further below, references to “the Panel” in this section 6D should be taken as referring to “a majority of the Panel” unless the context requires otherwise.

The underlying controller of the disputed domain name is Mr. Jeffrey Greenberg, who is located in the US. He leased the disputed domain name from the owner in 2004 using a trading name “Click this Link” and thereafter he acquired the disputed domain name and registered it in that trading name.

Mr. Greenberg subsequently reorganized his businesses and the disputed domain name was successively held through two different US corporations: SearchMachine LLC and Calacom LLC.

In the Panel’s view there is no reason to draw any distinction between these various entities and it refers to them all interchangeably as “the Respondent” in this decision, except where the context requires otherwise.

Chronology

As the timing of events is important in this case, the Panel considered that it would be helpful if it set out in a chronology the facts which it considered relevant. References to screenshots below are to those either exhibited by the parties or viewed by the Panel at screenshots.com:

February 20, 2004: The Respondent leased the disputed domain name from its then-owner until August 20, 2004, for a lease fee of USD 6,000.

There was also an option for the Respondent to purchase the disputed domain name during the lease period for USD 9,500. Section 9.9 of the lease agreement stated:

“Intended Purpose. To use the Domain Name in conjunction with a topical sponsored search platform operated by Lessee, and through such use intends to publish links, information, news and other materials including but not limited to advertising content of various third parties, for the offering of goods and services relating to sand recreation and travel.”

On an unspecified date after entering into the lease agreement, the Respondent exercised the option to purchase the disputed domain name.

January 18, 2005: An archive.org screenshot of the Whois shows “DUNE.COM / CLICKTHISLINK” as registrant of the disputed domain name.

July 2005 to June 2008: A series of screenshots of the website at the disputed domain name show it comprising principally a list of very generic search categories such as travel, financial planning, business, health and beauty, computers, etc. – none directly related to either “sand recreation” or shoes.

January 18, 2011: The Complainant’s representatives emailed the Respondent, noting that it was “not actively using” the disputed domain name at that time and enquiring whether it would be willing to sell it to the Complainant.

January 19, 2011: The Respondent responded as follows:

“Dune.com is not for sale. We have been using the domain for many years, in conjunction with our advertising business where we offer Topic Related Searching, targeting the “offroading, desert & beach reacreational” markets, to offer our visitors related products and services as provided via our select advertising partners in this sector. We also internally distribute ad related newsletter to a large number of our subscribers, affiliates and advertising partners. For more information on advertising on dune.com or for newsletter inquiries, please email us directly at info@dune.com.

If you are a website administrator and are interesting in employing Topic Related Searching on our site, please contact us via phone for more information on third party integration and ad licensing.

Thank you for your interest, and your correspondence.

(NOTE – Subscribers to our dune newsletter, and inclusion requests, please contact your account liaison direct and be sure to always include your subscriber id)…”

The email was signed “Don J, Adminstrator Asst. DUNE.COM. Desert & Beach Recreation. Topic Related Searching…”

May 19, 2012: A large sand recreation-related advertising banner has been added to the header of the website at the disputed domain name. The remainder of the site still consisted of a list of generic search categories.

April 10, 2013: A different sand recreation-related banner appeared in the header but otherwise the site remained largely the same.

August 16, 2013: Screenshots produced by the Complainant show the website consisting of a differently designed landing page with sponsored links, principally to UK footwear-related retail websites. The following list of “Related Links” appeared vertically in smaller font on the left of the page and also along a horizontal bar at the bottom of the page “Offroad Tours”, “Discount Coupons”, Cheap Travel”, “Beach Resorts”, “Desert Vacations” and “Recreational Vehicles”.

October 2013: DomainSponsor.com says that the disputed domain name was moved to their advertising and monetization platform.

November 1, 2013: A screenshot produced by the Respondent shows the same format of website as above except that the sponsored links were replaced a third listing of the above categories of “Related Links”.

March 2014: Screenshots produced by the Complainant are materially the same as the August 2013 screenshots.

When did the Respondent acquire the disputed domain name?

The Respondent has not stated exactly when it exercised the option to purchase the disputed domain name. The lease agreement provided for exercise by August 20, 2004 but, in any case, an archive.org screenshot shows that the Respondent was listed as the registrant by January 18, 2005.

How likely is it that the Respondent acquired the disputed domain name with reference to the Complainant?

While there is no doubt that the Complainant has traded under the name “Dune” in the UK in a substantial way for many years, there is no evidence of any reputation or trading activity of the Complainant in the US, where the Respondent is located. Nor is there any other evidence before the Panel indicating a reason as to why the Respondent might be expected to have known of the Complainant in 2004/2005.

The Panel rejects the Complainant’s assertion as to the Respondent’s constructive notice of the Complainant’s 1990 UK trade mark.

Not only have most panels declined to introduce the concept of constructive notice into the UDRP, in those occasional instances where panels have done so: (a) there has been both a US respondent and a US trade mark (here the US trade mark post-dates acquisition of the disputed domain name); and (b) panels in such cases have been less inclined to find registration in bad faith based solely upon a claim of such notice where the trade mark corresponds to a common word or phrase and is used in relation to the common (dictionary) meaning – as here.

The Respondent denies knowledge of the Complainant and claims that it acquired the disputed domain name for its generic qualities.

This assertion is in theory supported by statement of “intended purpose” in the lease agreement signed by the Respondent on February 20, 2004.

The Panel does not automatically assume that such a statement of purpose is genuine but nonetheless, in the circumstances of this case, the Panel considers it highly unlikely that it was part of an elaborate ruse by the Respondent to conceal a real intention to target the Complainant. Nor is there anything before the Panel to suggest that the Respondent’s intentions for the disputed domain name at the time it exercised the option to purchase (by January 2005) were any different to those expressed when it first acquired its lease-interest in the disputed domain name, within 12 months previously.

Does the Respondent’s usage of the disputed domain name before 2013 shed any light on the Respondent’s mindset at the time of acquisition?

So far as the Panel can tell from the various archive screenshots, until at least 2008 the Respondent used the disputed domain name for a parking page with very anodyne general links – unrelated either to the generic meaning of the disputed domain name or to the Complainant’s business.

The next relevant development was in 2011 when the Complainant’s representatives first approached the Respondent in relation to the disputed domain name.

The Complainant has not provided the Panel with any screenshots from around that period but the Complainant’s email did observe that the disputed domain name was not in active use at that time.

The Panel cannot tell whether, as claimed in the Respondent’s reply, the Respondent had by then been using the disputed domain name specifically to target the “offroading, desert & beach recreational” market. However, what is clear is that the Complainant did not at that point see any sponsored links which it considered objectionable as otherwise it would not have labelled the disputed domain name merely as not being in active use.

The first screenshot showing use of the disputed domain name specifically for sand recreation links is not until May 2012.

Whether that usage started then, or earlier, the Panel does question why it took at least three years – and possibly much more – for the Respondent to start using the disputed domain name for the purpose set out in the 2004 lease.

The Panel also queries whether the sand recreation banner was added to the site as a defensive move following the Complainant’s approach in 2011 or was in place previously.

In any case, and even if the banners were added defensively, the Panel does not consider that there is anything in the above series of events which indicates that the Respondent had the Complainant in mind when it acquired the disputed domain name back in 2004/2005.

The DomainSponsor.com parking page

In October 2013, the Respondent moved the disputed domain name to a new parking page provider, DomainSponsor.com. As mentioned in the chronology, the November 2013 screenshot produced by the Respondent shows the website consisting of only a series of subject headings related to sand recreation to a greater or lesser degree.

The nub of the Complainant’s case concerns August 2013 / March 2014 screenshots which it has produced whereby the main list of sand recreation-related subject headings was replaced with sponsored links, dominated by UK footwear retail websites.

The Respondent’s position was initially to suggest that the Complainant’s representatives manipulated the website by searching for “shoes” in the searchbox on the site and exhibiting the results of that search, rather than displaying the site as it looked on arrival.

The Complainant’s representatives very strongly rejected that assertion and the Panel unequivocally accepts that the screenshots were in no way manipulated.

Indeed the member of the Panel located in the UK has visited the website at the disputed domain name on May 27, 2014, and can confirm that it appeared to him exactly as exhibited by the Complainant, with sponsored links to mainly UK footwear-related retail websites in addition to the sand recreation-related subject headings.

Whereas, to the two US members of the Panel, the website consisted purely of sand recreation subject headings with no actual sponsored links, similar to the version shown in the November 2013 screenshot. The fact that the site appeared differently to users located in the UK and US no doubt accounts in large part for the dispute between the parties as to authenticity of these sponsored links.

In any case, the Respondent resiled from its claim of evidence manipulation and has provided a letter from the Director of Sales at DomainSponsor.com which provides an explanation as to how the UK footwear-related sponsored links came to appear on the site.

The gist of the letter is that, unbeknownst to the Respondent, DomainSponsor.com recently set up a “test slice” whereby some 5% of the visitors to the site would see a “1-click” page with automated sponsored links generated by Google instead of the “2-click” page format – as configured by the Respondent and never changed by it – showing purely subject headings based on topics connected with the generic meaning of the disputed domain name.

In the 2-click format, no sponsored links would appear on the landing page. These would only be shown on the second page after the visitor had clicked on the subject heading.

The Complainant has cast some doubt on DomainSponsor’s version of events.

Amongst other things, the Complainant points out that DomainSponsor does not say when the test slice began but that in any case this cannot have been before October 2013 when the disputed domain name was moved to DomainSponsor – yet the Complainant has produced an August 2013 screenshot of the site which includes the disputed links. Curiously, the August 2013 screenshot is almost certainly a DomainSponsor-style landing page as the format is very similar to the later versions of the site. (It may be that DomainSponsor simply made a mistake and that the disputed domain name was switched to its platform earlier in 2013.)

However, the plot thickens because DomainSponsor indicate that the test slice ended around May 11, 2014. Yet the Complainant has provided evidence that the disputed content still appeared on June 3, 2014, even after clearance of all cookies and cache on the relevant computer (which DomainSponsor had put forth as a reason as to why the 1-click lander might continue to appear when its server called for the 2-click version). Similarly, as mentioned above, the disputed content still appeared on the site when visited by the UK-based member of the Panel (for this first time) on May 27, 2014.

The Panel does not consider that it is in a position to resolve these contradictions or to come to any conclusion as to exactly why the disputed links appeared.

However, it is not necessary to do so.

In view of the lack of evidence of US activity by the Complainant in 2004, the obvious generic meaning of the disputed domain name, the Respondent’s expressed purpose for the disputed domain name in 2004 based on that generic meaning, and the subsequent lengthy use (2005 to 2013) for sponsored links partly related to sand recreation, but in any case unrelated to the Complainant, the Panel does not consider that the comparatively recent appearance of disputed footwear-related links, however they were triggered, can be treated as evidence that the Respondent had the Complainant or its trade marks in mind on acquisition of the disputed domain name in 2004/2005.

For the above reasons, the Panel does not consider that the Complainant has established that the disputed domain name was registered in bad faith.

Richard G. Lyon filed a separate Concurring Opinion:

“I concur in the result. When one registers a generic term as a trademark, one must expect that the test for bad faith is more strict than if one registers as a trademark a unique or stylized term. “Dune” is often used as an adjective to describe something well-suited to sandy conditions, such as in “dune buggy.” Indeed, “dune” is used as an adjective in relation to boots, as in “Justin Dune Tractions Snake Boots,” “Tex Dune Boots,” and “Earth Dune Boots,” and these constitute only three examples of boots currently available on the market. It is difficult to apply the “willful blindness” concept used in the traditional analysis of bad faith registration and use1 to a generic domain name used in conjunction with a parking site without some evidence that the registrant knew or should have known that a significant number of users would identify the generic term with the complainant’s goods or services.”

“Applying the “unitary” view, that good faith registration and use is a concept that demands one look at all the facts and circumstances of the case to determine whether the respondent has acted in bad faith to profit from the good will established in complainant’s mark, one has a difficult time finding bad faith in this case, especially where inserting the search term “dune shoes” into the search box on the Respondent’s web site gives as the top-listed result an identified link to Complainant’s web site.”

“It is worthy of note that the Respondent’s counsel, who has a reputation as being a particularly knowledgeable and successful representative of respondents in domain name cases, seems to implicitly recognize this unitary concept in the Response filed. ”

“The Respondent places considerable emphasis in his Response on the fact that the Respondent included in the lease agreement a statement of intent to use the domain name for a purpose other than targeting Complainant’s trademark

The Respondent also argued that the Complainant had somehow falsified the results that the Complainant obtained when visiting the Respondent’s web site.

In its Supplemental Filing, the Respondent shifts ground in the face of the Complainant’s later submitted evidence to the contrary, and argues that a recent change to a new parking service provider altered the equation.

Respondent attaches as Annex B to its Supplemental Filing a declaration from an employee of the new parking service provider, stating that since the Respondent switched to the new service, the Respondent elected a “2-CLICK” landing page.

The employee describes a “2-CLICK” landing page as “avoid[ing] having any ad listing or sponsored results displayed that do not pertain specifically to [the Respondent’s] intended use of the domain [name].”

This, also, would be an unnecessary assertion if one were to adopt the approach of the majority in this case and find that the domain name was not registered in bad faith.

The most interesting aspect of the declaration attached as Annex B to the Respondent’s Supplemental Filing is that it indicates that there is a simple landing page configuration (“2-CLICK”) that a parking service can employ at the request of a domain name registrant that would eliminate all ad listings or sponsored results other than those identified with the use intended by the registrant. This is described in the Respondent’s Supplemental Filing as follows:

“Utilizing a 2-CLICK configuration, the client can ensure that only its intended targeted categories are displayed, to which a visitor on the page can then click on the category of his/her choice from amongst those displayed, to then see a list of sponsored results (i.e. ad listings) relating only to that category chosen. It is then only from this second page or ‘results page’, can the visitor choose to click again, on an actual sponsored listing or ‘advertising link’ […]

This configuration is often ideal, where the client specifically wishes to avoid any issues of having unintended content on its pages, and to thus avoid having any ad listings or sponsored results displayed that do not pertain specifically to its intended use of the domain(s).”

If this is indeed true, it appears that its use by registrants should eliminate the problems experienced with advertising pages that would otherwise capitalize on third party trademarks. Indeed, it may be that the failure to use such a “2-CLICK” solution should be considered in any evaluation of bad faith. This panelist would look forward to further education on this point by experienced parties and domain name counsel.

M. Scott Donahey
Panelist (Concurring)

1 The traditional view is that one must establish that the respondent registered the domain name in bad faith and that the respondent used the domain name in bad faith.

2 It is questionable at best how this could be of assistance to a respondent, since one could designate any purpose it chose to designate, and then use the domain name in a fashion entirely inconsistent with the designated purpose.

Theoretically, one might assume that in the traditional view that if one is required to establish both bad faith registration and bad faith use as separate propositions, a respondent might argue that the registration of the domain name was made in good faith since the purpose indicated in a provision in an agreement or in some other document made at or before the time of registration indicated a purpose other than one of bad faith, but that claim, without more, should not, I believe, be taken as true without additional evidence that establishes that the assertion is indeed true.”