Unbiased Ltd trading as unbiased.co.uk v. DEVELOPMENT MANAGER
Claim Number: FA1506001623887
Complainant is Unbiased Ltd trading as unbiased.co.uk (“Complainant”), United Kingdom. Respondent is DEVELOPMENT MANAGER (“Respondent”), represented by Ari Goldberger of Esqwire.com, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <unbiased.com>, registered with UNIREGISTRAR CORP.
The undersigned certify that they have each acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Hon. Neil Brown, Henrik af Ursin, Paul M. DeCicco, as Panelists.
Complainant submitted a Complaint to the Forum electronically on June 11, 2015; the Forum received payment on June 11, 2015.
On June 11, 2015, UNIREGISTRAR CORP confirmed by e-mail to the Forum that the <unbiased.com> domain name is registered with UNIREGISTRAR CORP and that Respondent is the current registrant of the name. UNIREGISTRAR CORP has verified that Respondent is bound by the UNIREGISTRAR CORP registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 11, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 1, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@unbiased.com. Also on June 11, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on July 1, 2015.
On July 10, 2015, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Hon. Neil Brown, Henrik af Ursin, Paul M. DeCicco as Panelists.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant owns the UNBIASED.CO.UK mark through its registration with the United Kingdom Intellectual Property Office (“UKIPO”) (e.g., Reg. No. UK00002422000, registered March 23, 2007), establishing its rights in the mark.
Complainant uses the mark in connection with its financial services.
Until recently, the <unbiased.com> domain name has been used by a financial adviser called Financial Fitness Network, based in Ohio, and Respondent may have acquired the domain name in 2012 or 2013.
Respondent’s <unbiased.com> domain name is confusingly similar to the UNBIASED.CO.UK mark as it merely drops the multi-level country-code top-level domain (“ccTLD”) identifier “.co.uk” and substitutes the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <unbiased.com> domain name as Respondent is neither commonly known by the disputed domain name, nor is it using the website in connection with any bona fide offering of goods or services or for any legitimate noncommercial or fair use. Rather, the resolving website is merely a click-through page with hyperlinks to competing businesses.
Through its inclusion of competing hyperlinks, Respondent has registered and used the <unbiased.com> domain name in bad faith in an effort to disrupt Complainant’s legitimate business purposes under Policy ¶ 4(b)(iii). Further, as Respondent presumably gains click-through revenue from said hyperlinks, Policy ¶ 4(b)(iv) bad faith attraction, for commercial gain has been demonstrated.
B. Respondent
Respondent purchased the <unbiased.com> domain name in 2010, which predates Complainant’s registration of its wordmark by three years. Respondent cannot be subject to Complainant’s design mark as it is not relevant.
Complainant does not own the trademark registration for “unbiased”, which is a descriptive term connoting unbiased financial advice.
Respondent acquired the <unbiased.com> domain name as it is a single-word domain name and as such is inherently valuable. Respondent engages in a business practice of registering common word domain names which is not in violation of the Policy. As part of its model, Respondent hosts underdeveloped domain names with domain name parking services, and has done so with the <unbiased.com> domain name.
As millions seek financial advice, it is incorrect to project onto Respondent that it intended to target the business of Complainant to disrupt it and profit from Internet user confusion.
Complainant has rights in the UNBIASED.CO.UK mark through its registrations of such mark with the UKIPO.
The term “unbiased” is generic.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent is in the business of buying and selling generic domain names.
Respondent registered the at‑issue domain name without awareness of Complainant’s rights in the relevant trademark.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant establishes rights in the UNBIASED.CO.UK mark, for the purposes of Policy ¶ 4(a)(i) and otherwise, through its registrations of such mark with the UKIPO. Complainant’s two relevant composite trademark registrations –which prominently feature the stylized text “UNBIASED.CO.UK” along with a distinctive logo-- are each sufficient evidence of Respondent’s Policy ¶ 4(a)(i) rights, as is Complainant’s additional UNBIASED.CO.UK word mark registration. See Park Place Entertainment Corporation v. Mike Gorman, D2000-0699 (WIPO, Sept. 5, 2000) (finding that since a domain name does not include design elements, it cannot be identical to the stylized versions of complainant’s mark; however, complainant can establish the first element of the test when the dominant portion of complainant’s word and design mark is a term that would be used by consumers and the press in referring to the complainant.); see also DatingDirect.com Ltd. v. Turner, FA 349013 (Nat. Arb. Forum Dec. 16, 2004) (finding that the panel recognizes the distinctive nature of the complainant’s DATINGDIRECT.COM mark through registration with the United Kingdom Patent Office). Complainant’s rights exist notwithstanding that Respondent may operate outside the jurisdiction of the trademark’s registrar. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
In forming the at-issue domain name the term “.CO.UK” is struck from Complainant’s trademark and the top-level domain name “.com” appended to the resulting string. First, it is well settled that top-level domain name affixations are irrelevant to a Policy ¶ 4(a)(i) determination. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Additionally, although Complainant’s UNBIASED.CO.UK trademark contains the multi-level country code “.co.uk.” which makes Complainant’s trademark something apart from simply UNBIASED, the at-issue domain name nevertheless appropriates a substantial and dominant part of Complainant’s mark. Therefore, the Panel finds that the <unbiased.com> domain name is confusingly similar to Complainant’s UNBIASED.CO.UK mark. See Allied Building Products Corp. v. Richard Henkel, FA 827652 (Nat. Arb. Forum Dec. 11, 2006) (“Respondent’s <alliedbuilding.us> domain name is confusingly similar to Complainant’s ALLIED BUILDING PRODUCTS CORP. mark as it contains the dominant portion of Complainant’s mark and merely deletes “products” and “corp.” from the end of the mark.”)
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
Respondent has rights in respect of the at-issue domain name. Although Respondent is neither authorized to use Complainant’s trademark in any capacity nor commonly known by the domain name, the term “unbiased” is generic and there is no clear indication that Respondent registered the domain name with Complainant’s mark in mind.
The Panel notes that this is not simply a case where the at-issue domain name’s registrant chose a generic or common word for its domain name and then unequivocally used it to promote goods and services generally coming within the meaning of such generic or common word, or alternatively used the domain name in an arbitrary manner like Apple, Inc.’s Apple trademark. Here, the evidence shows the domain name, through the <unbiased.com> website, promotes goods and services that are remarkably close to those marketed by Complainant in the field of financial services under its UNBIASED.CO.UK trademark. That evidence leaves Respondent open to a finding that Respondent has used the domain name for its value as a trademark, as that use potentially attracts business for Respondent in fields covered by Complainant's trademark. On the other hand and although Respondent’s use of the domain name may be actionable in other forums as infringing upon Complainant’s trademark, the <unbiased.com> domain name seems to have been registered primarily because of its descriptive value, namely that it describes those goods and services that can fairly be described as being “unbiased” in their nature or because of its ease to remember as an arbitrary name for a website. Importantly, there is no compelling evidence indicating that Respondent --at the time it registered the at-issue domain name-- had Complainant's trademark in mind.
Indeed, it is difficult for a UDRP panel to reach conclusions on issues of motivation and intention when it does not have the forensic tools needed to reach such conclusions, such as discovery and direct evidence from those involved. Accordingly given the record before us, the Panel is unable to find that Respondent's intentions at the time it registered the domain name were inappropriate or targeted Complainant. On the available evidence, Respondent’s registration of the <unbiased.com> domain name appears to have been designed to exploit “unbiased” for its generic or common use rather than its trademark value. Given the foregoing, Respondent’s ongoing generic word domain name business serves to demonstrate its rights and interests in the at-issue domain name pursuant to Policy ¶ 4(c)(i). See Eastbay Corp. v. VerandaGlobal.com, Inc., FA 105983 (Nat. Arb. Forum May 20, 2002) (finding that using a domain name consisting of a common descriptive and generic expression as a portal to a website featuring various advertisements and links is a bona fide offering of goods or services).
Finally, since Respondent has rights and legitimate interests in the <unbiased.com> domain name pursuant to Policy ¶ 4(a)(ii), the issue of Respondent’s bad faith under Policy ¶ 4(a)(iii) is moot. See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Reverse Domain Name Hijacking
Respondent requests a finding of reverse domain name hijacking against Complainant. However, even though the Panel holds that Complainant fails to satisfy its burden under the Policy a finding of reverse domain name hijacking does not necessarily follow. See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”)
Here, it appears that Complainant’s UDRP filing was motivated to protect its UNBIASED.CO.UK trademark. Notably, Complainant prevails under Policy ¶4(a)(i) and it is not apparent from the record that Complainant knew or should have known to a reasonable certainty that it would fail under either Policy ¶ 4 (a)(ii) or Policy ¶ 4(a)(iii)). Therefore, the Panel finds that Complainant did not engage in reverse domain name hijacking. See Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy); see also Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Respondent’s request for a finding of Reverse Domain Name Hijacking is likewise DENIED.
Accordingly, it is Ordered that the <unbiased.com> domain name REMAIN WITH Respondent.
Hon. Neil Brown, Henrik af Ursin, and
Paul M. DeCicco (Chair)
Panelists
Dated: July 23, 2015
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