Nova Holdings Limited, Nova International Limited, and G.R. Events Limited, of Newcastle upon Tyne, of the UK represented by Bond Dickinson LLP, the United Kingdom (the “Complainants”) was just found guilty of Reverse Domain Name Hijacking on the domain name GreatRun.com

On the issue of Reverse Domain Name Hijacking the one member panel of Gabriela Kennedy found

“the evidence presented by the parties demonstrates conclusively that the Disputed Domain Name could not have been registered in bad faith by the Respondents. On the contrary, there are several indications that the Complainants were acting in bad faith, as follows:

The Panel notes that the Complainants used the Unregistered Mark in their own domain name, , which was registered in 2002.

It is the Panel’s opinion that the Disputed Domain Name is likely to have been the first domain name the Complainants would have wished to register and the fact that they chose is simply because someone else had gotten there first and obtained the “.com” domain name they wanted.

It appears to the Panel that the Complainants’ business is not typical of one which would seek a “.org” domain name.

This extension is usually reserved for noncommercial organisations.

It seems likely that the Complainants wanted to acquire a “.com” domain name, but settled for the next best thing, a domain name.

This raises the question as to why they did not seek to recover the Disputed Domain Name at the time they registered .

The Panel infers that most likely, the Complainants knew or had been advised that they did not have enough goodwill in the Unregistered Mark at the time, or that it was clear that, at most, such goodwill was restricted to the United Kingdom, and given the generic nature of the Disputed Domain Name, they would not be able to overcome a bona fide registration of a domain name consisting of generic or descriptive terms.

There is lack of evidence to show that the Complainant or its Unregistered Mark has had a strong reputation or has enjoyed worldwide fame since its alleged inception in 1981, or even since the date of the registration of the Disputed Domain Name.

In light of the correspondence between the Complainants and the Respondents, occurring both before and after the filing of this Complaint, it is clear that the present proceeding was commenced in an attempt to pressure the Respondents into releasing a legitimately held domain name consisting of descriptive terms that was acquired without the Respondents having any likelihood of knowing of the existence of the Unregistered Mark given the limited geographical area in which the Complainants operated at the time.

Between August 2014 and April 2015, the Complainants contacted the Respondents to try and purchase the Disputed Domain Name. The Respondents initially had no intention of selling the Disputed Domain Name, but given the Complainants’ insistence, the Respondents agreed to discuss a sale.

On November 28, 2014 the Complainants contacted the Respondents and threatened to commence UDRP proceedings if their offer of $3,000 was not accepted within 7 days. The Respondents contend that this use of UDRP proceedings to attempt to force the Respondents to sell the Disputed Domain Name is clearly an abuse of the UDRP proceedings.

The Panel, therefore, finds that the Complaint was made in bad faith as an attempt at Reverse Domain Name Hijacking, constituting an abuse of this administrative proceeding.””

Here are the rest of the highlights from the decision:

The Complainants did not have any registered trademark on the term Great Run which it was registered.

The Complainants are companies that organise sporting events, namely running, in the United Kingdom. The Complainants own of a series of United Kingdom and European Community word and figurative marks containing the words “great” and “run” (the “Trade Marks”), the earliest of which was registered in the United Kingdom on February 28, 2003.

The Respondents are Manheim Equities, Inc. and Product Reports, Inc., both United States companies. The Disputed Domain Name is currently inactive.

The Complainants rely on their unregistered trade mark rights in the word mark GREAT RUN (the “Unregistered Mark”), which has been used consistently in relation to sporting events since approximately 1981.

The Complainants also rely on the Trade Marks which feature the stylised words “great” and “run”. T

The Respondents claim to have initially registered the Disputed Domain Name for use by their product report business. No evidence of preparations for such a business have been adduced. As such, and in accordance with Groupe Auchan V Eveniy v. Volyk, WIPO Case No. D2014-1968, it cannot be said that the Disputed Domain Name is being used in connection with a bona fide offering of goods or services.

It is widely accepted that where a complainant owns trade mark registrations for a generic or descriptive term that has been incorporated in the disputed domain name, this does not necessarily mean that the disputed domain name should be automatically transferred to the complainant

Paragraph 2.2 of the WIPO Overview 2.0 sets out factors to be taken into account when determining whether or not a respondent may have rights or legitimate interests in a generic domain name. These factors include the fame of the trade mark in question; whether the respondent has registered other domain names incorporating generic terms; and whether the domain name is used in connection with a purpose relating to its generic meaning.

In this case, the Disputed Domain Name consists of the generic words “great” and “run”, which, in combination, remain generic and descriptive, i.e., the words might be used to describe a very enjoyable, a very hard, or a very long run. The Panel notes, however, that the Disputed Domain Name is currently inactive despite the Respondents having indicated that they intend to use the Disputed Domain Name in conjunction with their product report business. However, on the facts before the Panel, it cannot be concluded that the Disputed Domain Name is currently being used for such a descriptive purpose.

Consequently, the Panel finds that the Complainants have satisfied paragraph 4(a)(ii) of the Policy in respect of the Disputed Domain Name and the Respondents have failed to rebut the Complainants’ prima facie case that that they lack rights or legitimate interests in respect of the Disputed Domain Name.

The Complainants must satisfy the Panel that the Respondents knew or were likely to have known of the Complainants’ Trade Marks and/or Unregistered Mark at time of registration of the Disputed Domain Name. As the Trade Marks had not yet been registered at the time of registration of the Disputed Domain Name, the Respondents could not have been aware of them.

The Complainants contend that the Unregistered Mark was very well-known at the time the Disputed Domain Name was registered, and had been in use since 1981.

The Complainants rely on screenshots from their own website showing a timeline of Great Run events.

However, the Panel notes that this evidence does not support the Complainants’ contentions that the Unregistered Mark was well-known (merely that it was used), particularly in so far as its fame extended beyond the United Kingdom.

None of the Complainants’ Great Run events were held outside the United Kingdom before the registration of the Disputed Domain Name and only three Great Run events have been held outside the United Kingdom since that time (Ethiopia: 2001; Ireland: 2003; and Australia: 2008).

No Great Run events have ever been held in the United States.

Absent such evidence, the Panel is unable to find that the fame of the Unregistered Mark was such that the United States-based Respondents were more likely than not aware, or had knowledge, of the Complainants’ mark at the time of registering the Disputed Domain Name.

Further, the words “great” and “run” are generic, whether separate or in combination. T

herefore, any use of the term “great run” in the Disputed Domain Name does not in itself act as evidence that the Respondents must have been aware of the Unregistered Mark when the Disputed Domain Name was registered, and therefore that the registration was made in bad faith. The situation may have been different if the term in question was unique or made-up, having no ordinary meaning outside of the Unregistered Mark, or if the Complainants could show that the Unregistered Mark was well-known in the United States or that the Respondents were involved in the same industry as the Complainants – however, none of these scenarios apply here.

The Panel now turns to the email correspondence between the parties preceding the filing of this Complaint in which the Respondents suggested they would sell the Disputed Domain Name to the Complainants for substantial consideration. This correspondence needs to be viewed in context. The Respondents only took part in this correspondence after the Complainants had made several approaches seeking to acquire the Disputed Domain Name, without initially suggesting they had rights entitling them to acquire the Disputed Domain Name, or to prevent the Respondents from using it. The Complainants’ initial approach was essentially an anonymous enquiry (the email from a Nova International account on August 21, 2014, for example, had no reference to the Great Run events, other than a link in the signature strip to (the Complainants’ domain name)). Even when the sender was properly identified, the Complainants did not seek to suggest they had any relevant rights. In the email of September 4, 2014 the Complainants stated “Hi, I work for Nova International who organise the Great Run Series in the UK. We are just reviewing our domain names and see that you currently own the greatrun.com URL. We would like to discuss buying this from you to make sure we cover the full batch of domain variances (.org, .co.uk, etc). Please let me know your thoughts. Thanks”.

Eventually the Respondents acceded to the Complainants’ requests and agreed to discuss a price for selling the Disputed Domain Name. The fact that the price was high does not in itself amount to use in bad faith. The Panel can readily infer that value in the Disputed Domain Name arises from its highly generic nature and the fact it would be an attractive name for many businesses to use in relation to many different services (taking into account that “run” could be suggestive of, or associated with, a number of businesses relating to sports, leadership, or management consultancy, to name just a few).

The Panel accordingly finds that the Complainants have failed to discharge the burden of proving that the Respondents registered and used the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has not been satisfied.

The Respondents request a finding of Reverse Domain Name Hijacking.

7. Decision

For the foregoing reasons, the Complaint is denied and the Panel finds that the Complainants engaged in Reverse Domain Name Hijacking.

Gabriela Kennedy
Sole Panelist
Date: April 23, 2015