Murray Owen LLC v. Socio Corporation
Claim Number: FA1710001754304
Complainant is Murray Owen LLC (“Complainant”), represented by T. Blake Finney of Vorys, Sater, Seymour and Pease LLP, Ohio, USA. Respondent is SOCIO CORPORATION (“Respondent”), represented by Mike Rodenbaugh of RODENBAUGH LAW, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rocketnews24.com>, registered with eNom, LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Carol Stoner, Esq.
Ho-Hyun Nahm, Esq.
The Honourable Neil Anthony Brown QC (Presiding Panelist)
Complainant submitted a Complaint to the Forum electronically on October 17, 2017; the Forum received payment on October 17, 2017.
On October 19, 2017, venom, LLC; confirmed by e-mail to the Forum that the <rocketnews24.com> domain name is registered with eNom, LLC; and that Respondent is the current registrant of the name. eNom, LLC; has verified that Respondent is bound by the eNom, LLC; 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 October 24, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 17, 2017 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@rocketnews24.com. Also on October 24, 2017, 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 November 17, 2017.
On November 22, 2017, the Forum received a timely Supplementary Submission on behalf of the Complainant which was deemed to be complete.
The Panel has considered both supplementary submissions and taken them into account in reaching its decision.
On December 5, 2017, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Carol Stoner, Esq., Ho-Hyun Nahm Esq., and The Honourable Neil Anthony Brown QC (Presiding Panelist) 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 made the following contentions.
1. Complainant, Murray Owen LLC uses and its predecessor in interest Rocketinfo, Inc., has used the ROCKETNEWS mark for the service of providing a website featuring a media aggregator for Internet content, specifically for general news from around the world.
2. Complainant has rights in the mark based upon registration of the ROCKETNEWS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 5,258,881, registered Aug. 8, 2017). See Compl. Annex 5.
3. In addition to Complainant’s rights under the registered trademark, Complainant also has common law rights in the ROCKETNEWS mark through its predecessor in interest, Rocketinfo, Inc.
4. Rocketinfo, Inc. had those common law trademark rights since 2001 in connection with its operation of the ROCKETNEWS website from the domain name <rocketnews.com> website. See Compl. Annexes 1 & 3.
5. Complainant is now the owner of the <rocketnews.com> domain name.
6. Prior to the registration of the disputed domain name, ROCKETNEWS was a well known common law trademark identifying Complainant and before it, Rocketinfo, Inc.
7. Complainant acquired the <rocketnews.com> domain name in 2008. Since then, Complainant has continued the operation of the <rocketnews.com> website.
8. Respondent’s <rocketnews24.com> domain name is identical and confusingly similar to the ROCKETNEWS mark, as the domain name incorporates the mark in its entirety and merely adds the number “24.”
9. Respondent has no rights or legitimate interests in the <rocketnews24.com> domain name. Complainant has not authorized or licensed Respondent to use the ROCKETNEWS mark for any reason. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is using the name to host a commercial news site similar to Complainant’s.
10. The domain name is not of a purely generic or descriptive nature.
11. The ROCKETNEWS mark is recognised by the relevant public as a trademark of the Complainant.
12. Respondent registered and is using the <rocketnews24.com> domain name in bad faith. Respondent’s use of the domain name to redirect Internet users to a competing website takes predatory advantage of the reputation and goodwill of Complainant in its ROCKETNEWS mark, in order to disrupt Complainant’s business and attract users for commercial gain.
13. Additionally, Respondent’s choice of domain name indicates Respondent had actual knowledge of Complainant’s rights and reputation at the time it registered and subsequently used the <rocketnews24.com> domain name.
14. Diverting traffic trades on the goodwill of the Complainant and creates a mistaken belief that the Respondent sponsors or is affiliated with Respondent.
B. Respondent
Respondent made the following contentions.
1. The current dispute between the parties is outside the scope of the UDRP as it is a legitimate international trademark dispute. Moreover, the Complainant is attempting to use the UDRP in bad faith to hijack the Respondent’s domain name in the pursuit of that dispute. The Complaint should therefore be dismissed.
2. Respondent, Socio Corporation, is one of the most popular Japanese news services in the world. Its news service has 10 million users and has had 400 million users since 2008 when it launched and it has provided more than 3 billion page views.
3. Respondent has rights in the ROCKETNEWS24 mark based upon its Japanese and European Union trademark registrations (e.g. JAPAN (JPO)—Reg. No. 5602677, registered July 26, 2013; European Union (EUIPO)—Reg. No. 011690021, registered Dec. 10, 2013). See Resp. Annex 4. Respondent formerly owned a USPTO registration of the ROCKET NEWS24 mark, but allowed it to be cancelled at Complainant’s request in 2017. See Resp. Annex 5.
4. Respondent also has common law rights in the ROCKET NEWS24 trademark in Japan and has had those rights since at least December 2008. It has also had those rights in the US since February 2009 when it launched its English-language version.
5. Complainant has failed to substantiate its alleged common law rights in the United States or anywhere, or that it properly acquired such rights from its “predecessor in interest,” as it merely offers bare, conclusory statements of its claimed rights.
6. Complainant has not provided any or any adequate evidence of the sort usually expected by UDRP panels to establish a common law trademark.
7. Complainant also fails to prove confusing similarity because the parties’ respective marks have co-existed for nine years, almost exclusively in different trade channels, and with no evidence of actual confusion.
8. There is also no likelihood of confusion, on the evidence, as the Respondent’s audience is overwhelmingly in Japan, while the Complainant provides no evidence on the location of its audience.
9. Complainant has failed to allege a prima facie case that the Respondent has no right or legitimate interest in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Respondent is commonly known by the <rocketnews24.com> domain name, as it corresponds precisely to Respondent’s primary brand, which it has registered in Japan and the European Union, and prominently displays to over nine million unique users—in just Japan—each month. See Resp. Annexes 1 & 4.
10. Respondent also has a right or legitimate interest arising from paragraph 4(c)(i). It registered the <rocketnews24.com> domain name in 2008 and made prominent, bona fide use of the domain name for at least eight years before any notice of dispute with Complainant. See Resp. Annex 1.
11. Moreover, Respondent’s valid, unchallenged trademark registrations in Japan and the EU further demonstrate Respondent’s rights and legitimate interests in the domain name because the trademarks correspond to its primary brand.
12. Complainant has failed to prove the <rocketnews24.com> domain name was registered or has been used in bad faith. Complainant has not and cannot prove it had any strong reputation in the news field to support the allegations that Respondent must have had actual knowledge of Complainant’s rights in the ROCKETNEWS mark. Social media evidence demonstrates that, despite it purported widespread, global recognition since the year 2000, Complainant to date has only achieved a meagre web presence. In particular, there is no evidence that the Complainant’s trademark had any recognition in Japan in 2008 when the disputed domain name was registered. Further, Complainant’s long delay in pursuing this action is evidence Respondent did not register or use the domain name in bad faith.
13. In any event there is simply no evidence of bad faith.
14. The Panel should make a finding against the Complainant of reverse Domain Name Hijacking. Complainant, which is represented by counsel, has made only conclusory allegations to each element of the Policy, and has failed to mention prior USPTO litigation against Respondent, which indicates it has attempted to use the UDRP to gain leverage in the parties’ broader trademark dispute. Complainant thus is engaging in attempted reverse domain name hijacking.
C. Additional Submissions
COMPLAINANT
Complainant made the following further submissions in a Supplementary Declaration by Murray Owen.
1. Prior to 2008, ROCKETNEWS was a well-known common law trademark identifying Rocketnews.com. Rocketnews.com had a significant and influential web presence before and after the Respondent’s registration of the disputed domain name.
2. The same conclusion is justified by the frequency at which Rocketnews .com was archived by archive .org’s Wayback Machine.
3. It is not true to suggest that Complainant and Respondent appeal to different audiences as Rocketnews.com’s popularity and recognition were and are international. Some 45% of it comes from outside the US as do 60% of its sales transactions.
4. The disputed domain name is highly likely to cause confusion as the two sites provide similar services. The Respondent is even changing the name of its English language news site to “SoraNews24”.
RESPONDENT
Respondent made the following further submissions.
1. Complainant has still not provided evidence of its claimed common law trademark or how it inured from Complainant’s predecessor in interest.
2. Archiving by the Wayback Machine does not indicate trademark usage but only that webpages were published.
3. There is no evidence that Rocketnews.com’s popularity and recognition were and are international. The evidence offered is not evidence of trademark usage.
4. Respondent reiterates other arguments advanced in its Response.
Preliminary Issue: Trademark Dispute Outside the Scope of the UDRP
Respondent requests the Complaint be dismissed, on the ground that the dispute is part of an ongoing broader global trademark dispute between the parties. Respondent requests that the Panel nonetheless consider Respondent’s complaint of Reverse Domain Name Hijacking. See Resp., at 10.
This case comes about because both sides claim rights to a trademark that will determine in part the entitlement of the Complainant or the Respondent to the disputed domain name. Complainant claims rights in a trademark it has for ROCKETNEWS that is based upon registration of the mark with the USPTO (Reg. No. 5,258,881, registered Aug. 8, 2017). See Compl. Annex 5. Complainant also claims common law rights in the mark, based upon continuous use—by itself and its predecessor in interest—since 2001. See Compl. Annexes 1, 3. Complainant claims it has established secondary meaning in the mark based upon internet traffic to its site showing high numbers (over five million hits per month in 2005) and on two industry awards for which the Complainant was nominated. See Compl. Annex 1.
Respondent claims rights in the ROCKET NEWS24 mark based upon registration of the mark with the Japanese Patent Office (“JPO”) and European Union Intellectual Property Office (“EUIPO”) (e.g. JPO—Reg. No. 5602677, registered July 26, 2013; EUIPO—Reg. No. 011690021, registered Dec. 10, 2013). See Resp. Annex 4. Respondent claims it has established a secondary meaning in the mark, as it has served more than three billion page views to more than 400 million unique users since launching its service in 2008. See Resp. Annex 1, ¶ 2. Respondent also claims a previous dispute with the USPTO between the parties resulted in extensive settlement discussions and the cancellation of Respondent’s mark with the USPTO.
In sum, Complainant asserts rights in the ROCKETNEWS mark and Respondent asserts rights to the ROCKET NEWS24 mark, as part of an ongoing trademark dispute between the parties. Where that is the only dispute, some panels have been inclined to determine that the dispute falls outside the scope of the Policy, and therefore not to hear the dispute but dismiss it. In Commercial Publishing Co. v. EarthComm, Inc., FA 95013 (Forum July 20, 2000), for instance, the panel indicated that legitimate disputes should be decided by the courts:
“The adopted policy establishes a streamlined, inexpensive administrative-dispute resolution procedure intended only for the relatively narrow class of cases of “abusive registrations.” Thus, the fact that the policy’s administrative dispute-resolution procedure does not extend to cases where a registered domain name is subject to a legitimate dispute is a feature of the policy, not a flaw. The policy relegates all “legitimate disputes” to the courts. Only cases of abusive registrations are intended to be subject to the streamline [sic] administrative dispute-resolution procedure.
Previous panels have chosen to dismiss UDRP complaints which centered upon legitimate trademark disputes. See, e.g., Abbott Labs. v. Patel, FA 740337 (Forum Aug. 15, 2006) (holding that assertions of trademark infringement are “entirely misplaced and totally inappropriate for resolution” in a domain name dispute proceeding because the UDRP Policy applies only to abusive cybersquatting and nothing else); see also Stevenson Indus., Inc. v. CPAP-PRO Online, FA 105778 (Forum Apr. 25, 2002) (“If the existence of [rights or legitimate interests] turns on resolution of a legitimate trademark dispute, then Respondent must prevail, because such disputes are beyond the scope of this proceeding.”). It is therefore open to the Panel to dismiss the instant Complaint.
On the other hand, the Panel may determine its own jurisdiction and choose to consider the Complaint in the normal way and, after considering the evidence and submissions, give a decision. See Weber-Stephen Prod. Co. v. Armitage Hardware, D2000-0187 (WIPO May 11, 2000) (“Like any other tribunal, however, this Panel can determine whether it has jurisdiction only from the facts and arguments presented to it. In this case, Complainant did allege bad-faith use and registration of the domain name at issue. Had Complainant proved those allegations, there would be no proper question as to this Panel’s jurisdiction.”); see also Telebrands Corp. v. Khalid, FA 467079 (Forum May 31, 2005) (decided to proceed with the dispute over the <telebrandspakistan.com> even though both the complainant and the respondent had registered marks in TELEBRANDS and TELE BRANDS PAKISTAN, respectively, because the panel thought it would be unfair and costly to treat the case as a trademark dispute when the “gravamen” of the proceeding was the alleged misuse of the domain name in dispute).
In the present case there is a dispute that clearly involves trademarks. But all UDRP cases concern trademarks, as they are the basis of the standing to sue, and a panel cannot shy away from its responsibilities simply because there are two rival trademarks. Moreover, it is not the validity of either trademark that is at issue; from what the Panel understands the case will be decided not on the validity of the two rival trademarks but whether the Respondent was entitled to register and use its domain name and whether it registered and used it in bad faith.
The Panel has given careful attention to this issue and finds that, although the dispute is complicated, the Panel is able to hear and determine the dispute without trespassing on any issues that are outside the jurisdiction of the UDRP. The Panel will therefore proceed to hear the dispute in the normal manner.
1. Complainant is a United States company involved in running a news website at www.rocketnews.com.
2. Respondent is a Japanese company that owns and operates a news website at www.rocketnews24.com.
3. Complainant has established its registered trademark rights in the ROCKETNEWS mark by virtue of its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 5,258,881, registered Aug. 8, 2017).
4. Respondent has established its registered trademark rights in the ROCKETNEWS24 mark by its registration with the Japanese trademark authority (JAPAN (JPO)—Reg. No. 5602677, registered July 26, 2013) ; and with the European Union (EUIPO)—Reg. No. 011690021, registered Dec. 10, 2013).
5. Respondent registered the disputed domain name on November 29, 2008 and uses it in the operation of the news website at www.rocketnews24.com.
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 first question that arises is whether the Complainant has a trademark or service mark on which it may rely in this proceeding. The Complainant submits that it has both a registered and an unregistered or common law trademark. As to the registered trademark, Complainant submits that it has rights in the ROCKETNEWS mark based upon its registration of the mark with the USPTO (Reg. No. 5,258,881, filed on June 7, 2016, registered Aug. 8, 2017). Registration of a mark with the USPTO is clearly sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel therefore finds that Complainant’s registration of the ROCKETNEWS mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
In that regard, the Panel points out that the trademark application for ROCKETNEWS was filed by Complainant on June 7, 2016 and the trademark was registered on August 8, 2017, both of which dates were considerably later than the date when the disputed domain name was registered, namely November 29, 2008 and, indeed, that the trademark was registered eight years after the domain name. That sequence of events poses, as will be seen, considerable problems for the Complainant in the consideration of whether the Respondent had a right or legitimate interest in the domain name and whether it registered and used the domain name in bad faith. But for present purposes, Policy ¶ 4 (a) (i) requires only that the complainant “has” a trademark, not that it had one at an earlier time. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).
Thus, Complainant’s registered trademark for ROCKETNEWS suffices for the purposes of Policy ¶4 (a) (i) and the Panel so finds.
The next question that arises is whether the Complainant has a common law or unregistered trademark for ROCKETNEWS, as it submits it does, through its ”predecessor in interest” and dating back to the first use of the mark in commerce in 2001. It is now well established that a common law trademark is sufficient to establish a proceeding under the UDRP and the terms of the Policy do not distinguish between registered and unregistered trademarks. However, as with every other requirement of the UDRP, credible proof must be pro-offered. Common law rights have typically been found through a showing that a secondary meaning in the mark has been created in the minds of the public. That is so because, although the primary meaning of a generic or common word may simply describe the object at issue and therefore not operate as a trademark, a secondary meaning of the same word, acquired by conduct and usage, may link the object to the complainant, identifying the complainant as the source of the goods or services in question. See AOL LLC v. DiMarco, FA 1275978 (Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”).
The type of evidence needed to establish a common law trademark is: evidence of sales under the name in question, records and vouchers, advertising to promote the name, whether the public see the name as a trademark and how they have demonstrated that recognition through the media or consumer surveys. That type of evidence is likely to be known only by the claimant. Here, Complainant has produced little upon which the Panel may make a judgment as to whether or not Complainant’s trademark has acquired distinctiveness through secondary meaning in the mind of consumers.
The evidence produced is evidence of having been “nominated” for a search engine award and a news site award and reliance upon archived web page material noted by the Wayback Machine at www.archive.org. Those nominations, won or not, are of course significant in the media industry, but this Panel is charged with determining the state of the minds of the consuming public rather than the minds of award dispensing judges. Thus, for example, no evidence has been pro-offered that consumers viewed the archived material relied upon. And awards nominations are presented by news gathering peers, not by consumers. The Panel rules that this alleged “usage” does not qualify as a “distinctive identifier” which consumers assign to products and services, identifying one provider from another. Therefore, Complainant has not established any common law rights in the trademark.
The Complainant alleges that they were acquired by its “predecessor in interest” and that trademark rights then “inured” to the Complainant. However, the evidence is silent on just how RocketNews Inc. came to be the Complainant’s predecessor in interest, of what interest it passed on to the Complainant and how this was done. Here, the Panel has not been presented with such enlightening evidence as transactions that dispose of companies or intellectual property and accompanied by documentation that shows how and why one company became a predecessor in interest to another and how a party comes to have rights such as trademark rights. That evidence is absent in this case. At one stage, the Complainant submits that “Since 2001, Complainant and its predecessor have continued to use the ROCKETNEWS mark to operate the rocketnews.com website.” In other words, the allegation is that Rocketnews Inc. is still operating the website today. If that is true, it raises doubt as to whether Rocketnews Inc. is the Complainant’s predecessor at all.
The Complainant has therefore not established that it has or had a common law trademark for ROCKETNEWS. It may therefore only rely on its registered trademark.
The question therefore remains whether the domain name is identical or confusingly similar to the registered ROCKETNEWS mark. In other words, is the <rocketnews24.com> domain name identical or confusingly similar to the ROCKETNEWS mark? It is now well established that the addition of a number (in this case, 24) or a generic Top Level Domain ( in this case “.com”) cannot negate a finding of confusing similarity which is otherwise present. The Panel notes that the domain name also appends the “.com” generic top-level domain (“gTLD”), although Complainant does not argue this. Addition of numbers and a gTLD to a mark do not distinguish a resultant domain name from the mark to negate Policy ¶ 4(a)(i). See Novartis AG v. boggs, william, FA 1570988 (Forum Aug. 25, 2014) (finding that the <freshlook2.com> domain name was confusingly similar to the complainant’s FRESHLOOK mark because the domain name contained the mark in its entirety and merely added the number “2”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Here, the disputed domain name contains the whole of the mark and non-distinguishing features of the number 24 and the Tld. “.com”. The Panel concludes that , consistent with prior UDRP decisions cited above, the disputed domain name and the registered trademark are confusingly similar.
The Complainant has thus established the first of the three elements it must establish under the Policy (4) (c) (i).
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Having regard to those considerations, the Panel finds that the Complainant has not made out a prima facie case as the Respondent has a clear right and legitimate interest to register and use the disputed domain name. That is so for several reasons.
First, Respondent claims rights and legitimate interests in the domain name, as it corresponds precisely to Respondent’s primary brand. It will be recalled that the disputed domain name is <rocketnews24.com> and it is clear on the evidence that the Complainant registered the domain name to use it in its business of providing a fast news service operating 24 hours a day under the brand ROCKETNEWS24. The domain name thus reflects accurately what the Respondent was proposing to do in business and what it subsequently did and therefore at the outset, gives the Respondent the appearance and substance of legitimacy. It also reflects the name that the Respondent adopted for its business and as its brand from the time it started the business, namely in 2008. At that time, it was to be an additional eight years before the Complainant even applied for its trademark, which of course was not for ROCKETNEWS24, but for ROCKETNEWS; thus, at the time the domain name was registered, the Respondent was not trespassing on any registered or common law trademark of the Complainant. Moreover, the domain name is an exact replica of two trademarks registered by the Respondent in Japan, Respondent’s home jurisdiction, and at the European Community; namely, trademarks JPO—Reg. No. 5602677, registered July 26, 2013; and EUIPO—Reg. No. 011690021, registered Dec. 10, 2013) and a USPTO trademark that was subsequently cancelled at Complainant’s request in 2017. Each of those trademarks was for ROCKETNEWS24, the same terminology Respondent had used as its brand and in registering its domain name on November 29, 2008 and since.
Nor could it be said that the registration of the domain name was a mere formality or a speculative device, as the Respondent has always used it in its established business of providing a news service, obtaining more than 3 billion page views from over 400 million unique users since 2008. In summary, the registration and use of the domain name since 2008 has reflected the actual business name and brand of Respondent’s business and the registration of two current trademarks. The evidence also shows that every article syndicated by Respondent to its distribution partners includes the Rocketnews24 brand name, which is of course the same as the domain name.
The registration and use of a domain name to reflect the registrant’s brand has frequently been recognized as giving rise to a right to register the domain name and thus to acquire a legitimate interest in it. See for example Navigant Consulting, Inc. v Bradley Shive / Navigant Technologies, FA 1587953 (Forum Dec. 17, 2014) (finding that respondent had rights and legitimate interests in the <naviganttechnologies.com> and <naviganttech.com> domain names because respondent had provided evidence of doing business as “Navigant Technologies” “before Complainant’s registration of its NAVIGANT marks and before receiving a notice of [the domain] dispute”). See Resp. Annex 5.
The Respondent therefore has a right or legitimate interest in the domain name as it has a right to register a domain name that reflects the name under which it conducted and has continued to conduct a legitimate business in a legitimate manner.
Secondly, the above analysis of the facts brings the case squarely within the provisions of paragraph 4(c) (i) of the Policy which is that the registrant of a domain name has a right and legitimate interest in it if it used the domain name in connection with a bona fide offering of goods and services and did so before it received notice of the dispute. The persuasive evidence is that the Respondent conducts and has conducted since 2008 a bona fide business of disseminating news and carrying advertisements and that it did so for several years before any notice to it of the dispute that the Complainant has now initiated. Moreover, Respondent has offered persuasive evidence that it has invested heavily in its business. For some eight years, Complainant did not object to the Respondent’s conducting its own business under the name Rocketnews24, even if, as the Complainant now contends, the Respondent’s business was “similar” to its own.
For the above mentioned reasons, the Panel rules that the Complainant has failed to make out a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4 (c) (ii).
The Complainant has thus not made out the second of the three elements that it must establish under the Policy.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was neither registered nor used in bad faith. That is so for the following reasons.
First, the Panel has already found that Respondent has rights or legitimate interests in the <rocketnews24.com> domain name pursuant to Policy ¶ 4(c)(i). As the Respondent was within its rights to register the domain name and has used it in a proper manner since then, it cannot then be established that the domain name was registered or used in bad faith. 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 (Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”). The Panel expressly finds that there is no evidence pro-offered to show that Respondent was motivated by bad faith when registering and using the disputed domain name. The Panel so holds in the present case.
Secondly, Respondent contends that its registration of the <rocketnews24.com> domain name predated Complainant’s rights in the ROCKETNEWS mark by some eight years and the proffered evidence is persuasive to that effect. Evidence of registration which predates a complainant’s registration of a mark can defeat a finding of bad faith and there is a very large number of UDRP panel decisions to that effect. See, for example, Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark). The significance of this issue is considerable, as the allegation of bad faith is a serious one and it can only be demonstrated if there were some known object to which the bad faith could be directed at the time the domain name was registered.
Thirdly, Respondent argues that Complainant’s long delay in commencing and pursuing the present Complaint is evidence that Respondent did not register or use the <rocketnews24.com> domain name in bad faith. Though the doctrine of laches may not be a defense under the Policy, allegations of delay may support an absence of bad faith registration and use per Policy ¶ 4(a)(iii). See Meat & Livestock Comm’n v. Pearce, D2003-0645 (WIPO Oct. 27, 2003) (“Although laches is not a defense in itself under the Policy, the absence of any complaint over a long period of time in which domain names are in active use can suggest that such use does not give rise to a serious problem.”). Complainant has waited nine years to bring the present dispute, which suggests that Complainant during that time did not seriously contend that there was a serious problem and that due to the delay the Respondent was entitled to assume there was no dispute. The Panel therefore finds that Complainant’s delay gives rise to a presumption that Respondent did not register or use the domain name in bad faith.
Finally, as already noted, the Complainant is entitled to rely on general bad faith as well as the specific criteria of it set out in the Policy. In the present case and having regard to the totality of the evidence, the Respondent neither registered or used the domain name in bad faith in accordance with UDRP Policy ¶ 4 (c) (iii).
REVERSE DOMAIN NAME HIJACKING
The Respondent has requested that the Panel make a finding of Reverse Domain Name Hijacking (“RDNH”).
The power of a panel to make such a finding comes from Rule 15(e) of the Rules made under the Policy, which provides that if after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
One of the most recent decisions on this issue is De Lage Landen International B.V. v. Steve Thomas, WIPO Case No. D2017-2045 (Dec.7, 2017) where the panel considered the circumstances where a panel might make such a finding in a case having similarities to the present case. The panel said as follows:
“ In Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing, WIPO Case No. D2005-0309, the majority of the three-member panel noted that the onus of proving that a complainant has acted in bad faith is on the respondent, and that mere lack of success of the complaint is not of itself sufficient to constitute reverse domain name hijacking. The majority went on to note that: “Allegations of reverse domain name hijacking have been upheld in circumstances where a respondent’s use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy (see Goldline International, Inc v. Gold Line, WIPO Case No. D2000-1151). See also Deutsche Welle v. DiamondWare Limited, WIPO Case No. D2000-1202, where an allegation of reverse domain name hijacking was upheld in circumstances where the complainant knew that the respondent used the at-issue domain name as part of a bona fide business, and where the registration date of the at-issue domain name preceded the dates of the complainant's relevant trademark registrations.”
The three-member panel in Yell Limited v. Ultimate Search, WIPO Case No. D2005-0091 noted that whether a complainant should have appreciated at the outset that its complaint could not succeed will often be an important consideration.
In the view of the Panel this is a complaint which should never have been launched. The Complainant should have appreciated that establishing registration and use in bad faith in respect of a domain name which had first been registered many years previously and which was a three-letter acronym was likely to involve difficult considerations. The Complainant appears to have ignored any such considerations and based its case entirely upon conclusory allegations unsupported by any evidence. It ought to have been apparent to the Complainant or its advisers that its case to have rights in the term “DLL” as at the date the Disputed Domain Name was registered was (on the evidence presented to the Panel) non-existent, and it should then either have sought further and better evidence or decided not to proceed with the Complaint. Instead it did proceed with the Complaint and simply relied upon unsupported conclusory allegations. Further if the Complainant had made sensible further enquiries (such as searching “archive.org”) it would have found out the Respondent had a case of legitimate interest. In addition had it approached the Respondent openly before launching this Complaint it would also likely have been informed of this position – instead it made an anonymous unsolicited approach to purchase the Disputed Domain Name and when that was rebuffed simply launched the present Complaint.
…. In all the circumstances the Panel agrees with the Respondent that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
There are a number of features of that case that have counterparts in the present case and which have tended towards a conclusion by the Panel in the present case that a finding of RDNH is appropriate. This is particularly so with respect to the fact that most of the Complainant’s case was devoid of evidence and consisted almost solely of making conclusory allegations and assertions. Moreover, the Complainant must have been able to work out that if the domain name was registered before the trademark relied on was registered, it would be impossible to prove bad faith registration, unless the case came within strictly limited exceptions. These factors tend to suggest that a finding of RDNH may be appropriate.
On the other hand, on a fair appraisal of the evidence, it is conceivable that the Complainant was motivated by a desire to defend what it saw as its trademark and did not conclude it would be impossible for it to prove the constituent elements of the claim. It can be considered to be a matter of zealous advocacy. There is, however, one matter which cannot be explained away by such a charitable assessment. That is the information that the Complainant was obliged to give in Section 9 of the Complaint of other legal proceedings related to the disputed domain name. The Complainant said that it was unaware of any such legal proceedings. But there was one proceeding of which it was aware because it instituted the proceeding itself. That was the Cancellation proceeding it took to cancel the Respondent’s USPTO trademark for ROCKETNEWS24. Respondent consented to cancellation of its trademark rights in the US to avoid the costs of litigation it faced to defeat the proceedings. This has to be seen as related to the domain name and should have been disclosed. Panels depend on a full and frank disclosure of relevant material to maintain the integrity of the UDRP.
Weighing up both sides of this argument, and exercising its discretion, the Panel will not make a finding of RDNH but sanctions the Complainant for the Section 9 omission.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <rocketnews24.com> domain name REMAIN WITH Respondent.
The Honourable Neil Anthony Brown QC ( Presiding Panelist)
Carol Stoner, Esq.
Ho-Hyun Nahm, Esq.
Panelists
Dated: December 27, 2017
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