WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Quality Logo Products, Inc. v. Get On The Web, Ltd.
Case No. D2013-1691
1. The Parties
The Complainant is Quality Logo Products, Inc. of Aurora, Illinois, United States of America, represented by Golan & Christie LLP, United States of America.
The Respondent is Get On The Web, Ltd. of Rickmansworth, Hertfordshire, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by John Berryhill, Ph.d., Esq., United States of America (“US”).
2. The Domain Name and Registrar
The disputed domain name <qlp.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2013. On September 30, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 30, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response on October 24, 2013. The Response was filed with the Center on October 24, 2013.
The Center appointed Jonas Gulliksson, Christopher K. Larus and Richard G. Lyon as panelists in this matter on November 20, 2013. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is an American company engaged in customized printing services. Furthermore, the Complainant is the holder of, inter alia, federal trademark registrations in the United States of America for several service marks which contain the letters “QLP”. E.g., The Complainant is the owner of the trademark QLP at the United States Patent and Trademark Office with the Registration number 3,311,183. The earliest of these registrations issued on October 16, 2007.
The Respondent is a UK company specialized in web development.
The disputed domain name was registered on November 24, 1999.
5. Parties’ Contentions
A. Complainant
According to the Complaint:
The Complainant began using the trademark QLP and a design mark containing a stylized version of the initials “QLP” on January 1, 2006. On May 7, 2007, the Complainant began using another design mark that incorporated the initials “QLP”. These marks have been actively and continuously used in commerce for customized printing services on promotional and advertising products on the goods of others, and they contain identical lettering to the disputed domain name.
Furthermore, the disputed domain name is identical to several registered service marks owned by the Complainant. Inter alia, the Complainant is the holder of the American federal trademark registration for a service mark which contains the letters “QLP” in a simple design.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent’s business name, trademarks and domain name are wholly unrelated to the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name. In fact, based on a visit to the Respondent’s website, the Respondent’s primary business purpose appears to be purchasing and selling domain names. The Respondent has never used the disputed domain name in connection with any bona fide offering of goods or services. The Respondent obtained the disputed domain name in July 2005, and has not, to this date, used it for an active site.
Currently, the Respondent’s website states that “the domain name QLP.COM is for sale” and lists the “price US $125,000”. The Respondent is a speculator in the disputed domain name, as the Respondent’s only purpose in obtaining and maintaining the disputed domain name is to sell it for profit. Therefore, the Respondent is not making any legitimate commercial or non-commercial use of the domain name.
The Complainant has attempted to settle the present issue with the Respondent directly, and has reached out to the Respondent on several occasions to purchase the disputed domain name for a reasonable price. However, the Respondent has been unwilling to accept a reasonable purchase price.
The disputed domain name was registered and is being used in bad faith. Based on a visit to the Respondent’s own website, it is apparent that the Respondent is in the business of selling, renting or otherwise transferring domain names and is an abusive registrant. The Respondent obtained the disputed domain name in July 2005, and prior to the Respondent’s ownership of the site, “www.qlp.com” was maintained and utilized by “www.health-club.net”, a health portal. Since the Respondent obtained the disputed domain name, the Respondent has only ever offered it for sale. Over the years, the price of the disputed domain name has gone up.
While the Respondent may not have initially registered the disputed domain name to sell it to the Complainant, the Respondent only registered it to sell it for a profit to some party. The Complainant offered to purchase the disputed domain name for a reasonable price, USD 19,500. The Respondent acted in bad faith when it was unwilling to accept a reasonable price, even though the Respondent has absolutely no legitimate use or purpose in holding the disputed domain name.
B. Respondent
According to the Response:
The Complainant claims that the Respondent obtained the disputed domain name in 2005. In point of fact, the Respondent has been the original registrant of the disputed domain name since 1999.
The Complainant has referred to a number of US registered trademarks, all relating to custom printing service. All but one are further limited to a composite graphical or stylized subject mark. All of these trademark registrations are many years junior to the Respondent’s registration of the disputed domain name.
The Complainant is not exclusively or famously associated with the letters “QLP” per se. The acronym QLP is used by numerous parties as a business name and in domain names worldwide.
The Respondent, Get On The Web Ltd. is a UK registered company formed on October 6, 1998. It is a web development company, and one of its aims, recalling the circumstances of the Internet in 1998, was to assist small businesses to obtain visibility on the Internet. The principals believed that health clubs and leisure facilities would be a desirable market for the Respondent’s services. Shortly after formation, the Respondent acquired the domain name <health-club.net>. <health-club.net> has at all relevant times been owned by the Respondent.
In addition to the main site at “www.health-club-net”, which provides listings of health-clubs, gyms and other recreational facilities on different locations in the UK, the Respondent registered a number of short, acronymic domain names for use with locally-targeted results. In the late 90’s and the early years of this century such segregation of subsets of results from the main site would, in accordance with search engine behavior at that time, boost the relevance of those local content sites in response to searches including the names of such localities. The Respondent registered the disputed domain name among the other domain names to use for locally-directed portals to the “www.health-club.net” site. The Respondent ultimately configured the disputed domain name to direct to a web page stating “Quality Leisure in Poole – Welcome to the Poole & Dorset section of Health-Club.net, the definitive guide to gyms, aerobics, fitness and health clubs in the UK”. The acronym “QLP” in the disputed domain name stood for “Quality Leisure in Poole”. The Respondent established a number of these acronymic gateways to “www.health-club.net”.
As search engines became more sophisticated, the Respondent’s strategy of seeking high placement by the use of multiple domain names feeding into the “health-club.net” directory ceased to be an effective optimization strategy. Accordingly, the Respondent did indeed decide to sell off domain names for which the Respondent had no further use. As noted above, the acronym “QLP” may be desirable to any number of parties, and the Respondent is legitimately entitled to sell a business asset which the Respondent legitimately obtained and used long prior to the Complainant’s junior trademark claims for custom imprinting services. Having acquired and use the disputed domain name for a legitimate purpose, the Respondent is entitled to dispose of the disputed domain name on any terms whatsoever.
In this case, a willful intent to exploit a known mark is chronologically impossible. The disputed domain name was originally registered by the Respondent in 1999. The Complainant has not shown evidence of a legally enforceable right pre-dating acquisition of the disputed domain name, and thus cannot demonstrate possession of a chronologically relevant right against which a bad faith intent have been exercised by the Respondent when registering the disputed domain name.
The Complainant’s various approaches seeking to purchase the disputed domain name since 2006 cannot be understood as evidence of the Respondent’s purpose in having registered the disputed domain name in 1999. The Respondent has posted the disputed domain name for general public sale. Three-letter domain names are indeed inherently valuable, as they are suitable for use by any number of parties, or even individuals who might desire their own monogram, and there is nothing inherent in the general offer to sell the disputed domain name which can be inferred to be bad faith targeting of the Complainant.
The Complainant wants the Panel to decide that the Respondent had an obligation to accept the Complainant’s USD 19,500 offer. Presumably, the Panel is supposed to act as a price arbitration board and determine that bad faith registration and use does not exist at any price up to USD 19,500, but that a penny more renders the disputed domain name to have been registered and used in bad faith. This is, however, an abuse of the Policy as a negotiating tactic, which UDRP panels have seen and addressed many times before.
For the foregoing reasons, the Respondent submits that the Complainant has not proven a single element of the Policy and the Complaint accordingly should be denied.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is the holder of American federal trademark registration for a service mark which contains the letters “QLP” in a design.
The disputed domain name consists of the letters “qlp” with the addition of the generic Top-Level Domain (gTLD) “.com”. According to well-established consensus among UDRP panels, the gTLD is generally not distinguishing. Moreover, as figurative, stylized or design elements in a trademark are generally incapable of representation in a domain name, such elements are typically disregarded for the purpose of assessing identity or confusing similarity, with such assessment generally being between the alpha-numeric components of the domain name, and the dominant textual components of the relevant mark. Thus, the Panel finds that the difference between the disputed domain name and the Complainant’s trademark is insufficient to avoid a finding of confusing similarity under the first element of the Policy.
B. Rights and Legitimate Interests
In view of the finding below, it is unnecessary for the Panel to make a finding with respect to the second element of the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The disputed domain name was registered on November 24, 1999, which is more than six years before the Complainant began using the QLP trademark, and almost eight years before the oldest of the Complainant’s trademark registrations. Furthermore, the Respondent has demonstrated that it operates a web page providing listings of health-clubs in the UK. The Respondent has also provided credible information regarding its legitimate motive to register the disputed domain name.
The fact that the Respondent is offering the disputed domain name for sale can not as such be deemed to indicate that the disputed domain name was registered, or is being used, in bad faith. This is particularly the case when the negotiations for sale of a domain name have been initiated by the Complainant. Neither is there any evidence that the Respondent otherwise has registered or used the disputed domain name in bad faith.
Accordingly, the Panel finds that the Complainant has failed to satisfy the third element of the Policy. Thus, there is no reason for the Panel to discuss the remaining elements of the Policy. The Complaint must be dismissed.
7. Decision
For the foregoing reasons, the Complaint is denied.
Jonas Gulliksson
Presiding Panelist
Christopher K. Larus
Panelist
Richard G. Lyon
Panelist
Date: December 4, 2013
CONCURRING OPINION
I join the Panel’s Decision denying the Complaint, but believe that the Panel should go further and include in its Decision a finding that the Complaint was brought in bad faith and constitutes an abuse of this administrative proceeding.
Applicable standard. The Rules, paragraph 1, define Reverse Domain Name Hijacking (RDNH) as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name,” and (paragraph 15) direct a panel “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.” According to the Rules, then, this is a matter that the Panel should address on its own initiative, even if not requested by the respondent. See, 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.”)1; Pick Enterprises, Inc. v. Domains by Proxy, LLC, DomainsByProxy.com / Woman to Woman Healthcare / Just Us Women Health Center f/k/a Woman to Woman Health Center, WIPO Case No. D2012-1555 (“This Panel firmly believes a UDRP panel may make this inquiry in an appropriate case even if not so requested by the respondent, and indeed should do so fully to discharge its obligations under the Rules”); Goway Travel Limited v. Tourism Australia, WIPO Case No. D2006-0344. See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.17., has similar language: “The fact of default by a respondent does not necessarily prevent a finding of Reverse Domain Name Hijacking in appropriate cases, and WIPO panels have on occasion entered such findings on their own initiative.”
A general test for RDNH is summarized in the WIPO Overview 2.0, paragraph 4.17, is “the complainant in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP.” A second example given there is “the complainant knew that the respondent used the disputed domain name as part of a bona fide business for which the respondent obtained a domain name prior to the complainant having relevant trademark rights.”
This proceeding. Both those circumstances appear from the face of the Complaint in this proceeding. While not acknowledging the 1999 registration date of the disputed domain name, the Complainant pleads
that it was registered in 2005, more than one year before the Complainant’s trademark rights accrued. The Complainant’s own theory of the case thus precludes transfer under well-established Policy precedent, see WIPO Overview 2.0, paragraph 3.1., Consensus View. The facts set out in the Response regarding the Respondent’s prior use of the disputed domain name are public and could have been discovered by the Complainant with minimal due diligence. To my mind these two circumstances belie the Complainant’s undertaking, required by paragraph 3(b)(xiv) of the Rules, that “Complainant certifies that […] the assertions in this Complaint are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.” Particularly is that so when as here the Complainant is represented by counsel. Spy Optic, Inc. v. James Lee, WIPO Case No. D2013-1411.
And there is more. The Complainant’s asking this Panel to base its decision in part on the Complainant’s evaluation that the disputed domain name was worth a certain amount and no more goes far beyond the Panel’s limited brief under the Policy and far beyond its powers in this limited administrative proceeding. It also smacks of using the Policy to increase bargaining leverage in negotiations to acquire the disputed domain name, “a highly improper purpose.” See Wall-Street.com, LLC v. Marcus Kocak / Internet Opportunity Entertainment (Sports) Limited, Sportingbet PLC, WIPO Case No. D2012-1193.
The filing of this groundless Complaint has put the Respondent to considerable time and expense, including payment of the necessary fee for a three-member panel. We owe it to this Respondent to chastise the Complainant and its representative for their irresponsible conduct. We owe it to the integrity of the UDRP process to call out patent abuses such as I believe this case to be.
Richard G. Lyon
Panelist
Date: December 4, 2013
1 The Timbermate case includes a very useful summary of various grounds upon which panels have found RDNH