In the matter of Aero Club v. Domain Admin – DomainGrabber.com (Case No. D2013-1656), the matter was filed before the UDRP panel by Aero Club of New Delhi, India who own a large number of trade mark registrations featuring the name “Woodland” in one shape or form, some of them being WOODLAND word marks in Europe, Africa, Jamaica, Venezuela in addition to India. Indian trade mark Registration No. 710548 dated back to July 23, 1996, for a device mark comprising the name “Woodland”, the device of a tree and the slogan “leather that weathers” and also another Indian trade mark Registration No. 573949 dated May 25, 1992. Both registrations are in class 25 and cover footwear and other clothing.
The Response was filed on behalf of Emphasys Technologies, Inc. of Texas, USA, who denied that the Domain Name is identical or confusingly similar to the Complainant’s trade mark on the basis that the Complainant’s trade mark is a dictionary word, such marks are only afforded very limited protection and members of the public would not be confused. Members of the public would see the Domain Name as use of the dictionary word rather than the Complainant’s trade mark.
The Respondent contends that its use of the Domain Name as part of a web development business founded in 1992 helps to establish its legitimate interest in respect of the Domain Name, which is an ordinary dictionary word. The Respondent denies that the Domain Name was registered and is being used in bad faith. The Respondent’s fundamental position is that none of the Complainant’s allegations of bad faith stand up because when the Respondent registered the Domain Name in 1999, it was unaware of the Complainant’s brand and was not under any obligation to conduct trade mark searches in India to see if the name was registered.
The Respondent asserts that the fact that the Complainant waited 14 years before filing this Complaint is evidence that the Complainant does not believe that its claims are truly warranted. The Respondent reacted with commendable restraint to the outrageously misconceived and unsupported allegations of bad faith directed at it and has not requested a finding of Reverse Domain Name Hijacking.
However, as this Panel recently stated in Timbermate Products Pty Ltd v. Domains by Proxy, LLC/Barry Gork, WIPO Case No. D2013-1603:
“For a finding of Reverse Domain Name Hijacking (“RDNH”) it is not necessary that the Respondent should have sought such a finding. As can be seen from paragraph 15(e) of the Rules, if the Panel finds that the Complaint was brought in bad faith, he is under an obligation to so declare in his decision. See Goway Travel Limited v. Tourism Australia, WIPO Case No. D2006-0344 (“The Rules specifically put the burden on the Panel to determine whether a complainant has tried to use ‘the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.”). For a finding under this head, the Panel must conclude that the Complaint was brought in bad faith whether to deprive the Respondent of the Domain Name or to harass the Respondent or for some other reason.”
As with the Timbermate case, in this case too, the Complainant’s representative has cited previous UDRP decisions in support of its case. One of those cases was Veuve Clicquot Ponsardin, Maison Fondée en 1722 v. The Polygenix Group Co., WIPO Case No. D2000-0163 and one only needs to look at the facts of that case to see how different they were from the facts of this case. Unlike this case, the complainant’s trade mark was not a dictionary word and unlike this case it is apparent that the complainant produced a wealth of detail to substantiate the fame of its mark. Moreover, unlike this case, the evidence showed that the respondent was a serial cybersquatter. Another case cited by the Complainant was Playboy Enterprises International, Inc v. Hector Rodriguez, WIPO Case No. D2000-1016, another case with a materially different factual background to this case. The domain names clearly targeted the complainant (<playboychannel.com> and <playboynetwork.com>), the complainant’s trade mark would have been very well-known to the respondent (both parties being USA residents) and the respondent’s explanation was found by the panel to lack credibility. Moreover, the evidence before the panel was such as to lead the panel to go so far as to state: “In this connection the Panel notes that in its opinion, the Respondent’s actions in registering and now retaining both of the contested domain names evince bad faith in violation of the Anti-Cybersquatting provisions of the Lanham Act (15 USC § 1125(d)(1) with various factors indicative of ‘bad faith’ given in 15 USC § 1125(d)(1)(B)(i) though limited by 15 USC § 1125(d)(1)(B)(ii).”
Delay in filing a complaint under the UDRP is not necessarily fatal to the complaint, because there may be any number of understandable reasons for the delay. For example, the complainant may have had no reason to be aware of the existence of the domain name in issue. In this case, however, as the Panel has found (on the basis of the evidence annexed to the response to Procedural Order No.1), by 1999 the Complainant’s WOODLAND trade mark was an established brand in the Indian sub-continent. In 2002 the Complainant decided for the first time to register a domain name featuring its WOODLAND trade mark. It registered <woodlandworldwide.com>. Is it credible that the Complainant went straight for that domain name without first checking the availability of the Domain Name (<woodland.com>)? The Panel finds on the balance of probabilities that the Complainant was aware of the existence of the Domain Name in 2002 when it registered <woodlandworldwide.com> and knew then that it had no basis for attacking the Domain Name. The fact that a potentially objectionable advertising link appeared in August 2013 cannot, in the view of the Panel, in these circumstances sensibly be used to question the bona fides of the Respondent back in 1999.
Taking all the above into account, the Panel finds that in levelling manifestly wild and unsupported allegations of bad faith against the Respondent some 14 years after the Domain Name was first registered by the Respondent, the Complainant has brought the Complaint in bad faith and abused this administrative proceeding.
For the foregoing reasons, the Complaint is denied and the Panel makes a finding of reverse Domain Name Hijacking.
For complete text, please visit: http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2013-1656