Wallace Media Pty Ltd of Balaclava, Victoria, Australia, which owns the domain cyclingtips.com.au, and was represented by Holding Redlich, Australia has been found guilty of Reverse Domain Name Hijacking (RDNH) on the domain name cyclingtips.com
The domain holder is CyclingTips CA of Quebec, Canada, was represented by ESQwire.com PC
The three member panel of Luca Barbero, Andrew F. Christie and The Hon Neil Brown Q.C.
The domain name cyclingtips.com.au was registered on April 19, 2009
The disputed domain name
The panel disagreed with the .Au company that they established common law trademark rights to the tern and on the basis of the .com being 7 years older than the .Au found RDNH.
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.
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 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
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 fide offering 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
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.
