The Complainant is Supermac’s (Holdings) Limited of Galway, Ireland, represented by Tomkins & Co., Ireland.
The Respondent is Domain Administrator, DomainMarket.com of Potomac, Maryland, United States of America (“USA”), represented by Brian H. Leventhal, USA.
The disputed domain name <supermacs.com> is registered with eNom, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2018. On March 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 12, 2018, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 5, 2018. After a request from the Respondent, the Center extended the due date for the Response to April 9, 2018, in accordance with paragraph 5(b) of the Rules. The Response was filed with the Center on April 9, 2018.
The Center appointed Andrew F. Christie as the sole panelist in this matter on April 16, 2018. The Panel finds that it was properly constituted. 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.
The Complainant is an Irish fast food restaurant chain which originally opened in 1978 in County Galway, Ireland. As of 2018, the chain consists of a total of 108 restaurants throughout Ireland and the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”). It also operates a number of franchise outlets which are privately owned. The Complainant serves an average of 320,000 customers per week, and in 2013 had annual revenue of almost EUR 80 million. In January 2018, the Complainant announced the creation of 400 new jobs, and the opening of six new outlets by the end of June 2018.
The Complainant was the registrant of the disputed domain name between December 23, 2003, and April 4, 2016. Due to a combination of technical and administrative errors, the notification to renew the disputed domain name was erroneously directed to the spam folder of the person(s) responsible for renewing it. As a result, the Complainant’s registration of the disputed domain name was not renewed, and the disputed domain name was subsequently registered by the Respondent on June 12, 2016.
The Complainant owns a number of trademark registrations for the word trademark SUPERMAC’S, including an Irish trademark registration (Registration No. 205824, registered on July 1, 1996) and a European Union Trade Mark registration (Registration No. 12680591, registered on July 29, 2016). The Complainant is also the owner of the domain name <supermacs.ie> which was registered on December 1, 1998, and which has been continually owned and operated by the Complainant since that date.
The disputed domain name was registered on June 12, 2016. The Respondent’s business is the buying and selling of domain names comprising descriptive and generic terms, and combinations thereof. It does this through a secondary marketplace website located at “www.domainmarket.com”. The disputed domain name resolves to that secondary market website, where it is offered for sale for USD 19,888.
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights because: (i) it is identical to the Complainant’s registered word trademark SUPERMAC’S; (ii) the Complainant’s SUPERMAC’S trademark has a very high degree of acquired distinctiveness through its extensive use throughout Ireland and the United Kingdom for 40 years; and (iii) if any use of the disputed domain name by the Respondent takes place, there will undoubtedly be confusion amongst consumers, and damage to the business activities of the Complainant.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name because: (i) there is, and has been, no evidence of use of the disputed domain name by the Respondent other than to indicate that it is available for sale; and (ii) as the sole purpose of registering the disputed domain name is to sell it to the Complainant, or a competitor of the Complainant, for an amount advertised at USD 19,888, it can be fairly assumed that it has been registered without any bona fide reason.
The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) the disputed domain name has clearly been registered primarily for the purpose of selling it to either the Complainant, or to a competitor of the Complainant, for a valuable consideration in excess of the Respondent’s out of pocket costs related directly to the disputed domain name; (ii) the disputed domain name has been registered in order to prevent the owner of the trademark from reflecting the trademark in the corresponding domain name; (iii) the Respondent has engaged in a pattern of such conduct, either directly, or through its related companies, as it has been the respondent in nine previous actions under the UDRP filed with the Center and in each of those actions an order was made for transfer of the domain names in issue; (iv) when one visits the disputed domain name one is redirected to “www.domainmarket.com” where it is advertised for sale at USD 19,888, which is far in excess of the Respondent’s costs related to the disputed domain name; and (v) as there is no evidence of use of the disputed domain name by the Respondent, other than the offer to sell it for a vastly inflated price, it can be assumed that the disputed domain name has been registered in the full knowledge of the existence of the Complainant’s business, the Complainant’s reputation and the Complainant’s trademark SUPERMAC’S.
The Respondent contends that whilst the portion of the disputed domain name that precedes the generic Top-Level Domain (“gTLD”) designation would be identical to the Complainant’s trademark, but for the lack of an apostrophe, the Complainant’s trademark registrations are limited to countries outside of the USA, and therefore the Respondent takes no position as to the validity or enforceability of such trademarks, or as to whether the Complainant actually has protectable rights in such trademarks in the context of this proceeding.
The Respondent contends that it has rights and legitimate interests in the disputed domain name because: (i) the Respondent is in the business of buying and selling domain names comprising descriptive and generic terms and combinations thereof, through a secondary marketplace website located at “www.domainmarket.com”, and that reselling premium domain names has an accepted place in the domain name industry; and (ii) the disputed domain name was acquired by the Respondent on or about June 4, 2016, and has been used in connection with a landing page to offer it for sale for nearly two years without any complaint or other action taken by the Complainant.
The Respondent contends that it did not register, and has never used, the disputed domain name in bad faith because: (i) the Respondent was not aware of the Complainant’s alleged rights in the trademark SUPERMAC’S at the time it registered the disputed domain name; (ii) the disputed domain name was not registered with an intent to profit from, or otherwise abuse, the Complainant’s trademark rights; (iii) the Respondent registered the disputed domain name as part of its business model of creating or buying, and then selling, domain names consisting of combinations of descriptive and generic terms, just as it has done over 400 times since 2008 when it registered or purchased domain names beginning with “super” which also include one or more additional generic terms, acronyms or abbreviations; (iv) the Respondent has not engaged in any of the behaviors associated with the bad faith use or registration of the disputed domain name listed in the Policy; (v) operating a secondary domain name marketplace is a legitimate business conducted by many companies around the world, and as the Respondent’s business is buying and selling domain names, the disputed domain name has been registered for that purpose; (vi) the Complainant has not cited any evidence establishing that the Respondent was aware of the Complainant’s mark when the Respondent registered the disputed domain name; (vii) as the Respondent’s business is operated entirely within the USA, and as the Complainant has no operations or trademark rights in the USA that could have been discovered in a search of the US Patent and Trademark Office, there is no reason why the Respondent should have known about the Complainant; (viii) the Respondent never approached the Complainant, or any of its competitors, about selling the disputed domain name, and the mere offering of the disputed domain name for sale does not establish that it was registered for the purpose of targeting the Complainant or its competitors; (ix) the Complainant’s citation to a handful of adverse decisions under the Policy against the Respondent’s affiliate hardly establishes a “pattern” of bad faith registrations, and should be given limited or no weight, especially in the context of the Respondent having dealt with over 350,000 domain names over the past ten years; (x) the Complainant’s trademarks do not give it a complete monopoly on all uses of the phrase “super mac’s”, but merely entitles it to prevent others from using a confusingly similar mark in connection with the scope of use covered by those trademarks within the jurisdiction of such trademarks (which does not include the USA); (xi) the term “mac” is a widely used generic abbreviation and acronym used for many things across many industries; (xii) no reasonable person arriving at the landing page of the website resolving from the disputed domain name would believe the page had any association with the Complainant; and (xiii) unless a complainant can provide specific proof that a domain name was not acquired because of its generic or descriptive nature as part of a respondent’s bona fide business, there is no bad faith.
Once the gTLD designation is ignored (which is appropriate in this case), the disputed domain name consists solely of the Complainant’s registered word trademark SUPERMAC’S minus the apostrophe. The lack of the apostrophe (which is a character that cannot, in any event, be included in a domain name) does not lessen the confusing similarity of the disputed domain name with the Complainant’s trademark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
The substance of the Respondent’s claim to having rights or legitimate interests in the disputed domain name is that its business is buying and selling domain names comprising descriptive terms and the disputed domain name is such a domain name. The Panel recognizes that the business of buying and selling domain names containing descriptive terms is not per se illegitimate under the Policy. The Panel also recognizes that, for the purposes of the Policy, a person conducting such a business can have rights or legitimate interests in the domain names being bought and sold in the conduct of that business. It does not follow, however, that a person conducting such a business will have rights or legitimate interests in every domain name it buys and sells. A close consideration of the relevant facts – including, in particular, the nature of the complainant’s trademark, the characteristics of the disputed domain name, and the details of the respondent’s use of the disputed domain name – is required in each case.
In this case, both the Complainant’s trademark and the disputed domain are comprised partly of the term “super” and partly of the term “macs” (with the trademark also having an apostrophe between the last two letters). The Panel accepts the Respondent’s assertion that “super” is a descriptive term. The position with respect to the term “macs” is less clear. The Respondent asserted that the term “mac” is “a widely used generic abbreviation and acronym used for many things across many industries”, and gave a range of examples of words or phrases for which it is such, including “macro”, “machine address code”, media/medium access control/controller”, “magnetic/mass accelerator cannon”, and “mobile air conditioner”. The Panel is not persuaded that the typical Internet user would read “macs” as the plural of the abbreviation of “macro” or as the plural of the acronym for the terms suggested by the Respondent. More likely, in the Panel’s view, is that the typical Internet user would read “macs” in the disputed domain name as either: (i) the plural of the trademark MAC, for which there are numerous registrations by various parties around the world (including by the Apple computer company and by the Estee Lauder cosmetics company); or (ii) a non-descriptive term with no particular meaning. Accordingly, the Panel does not consider that the entirety of the disputed domain name is descriptive.
Even if the entirety of the disputed domain name was descriptive words, it does not follow automatically that the Respondent thereby has rights or legitimate interests in it. Section 2.10.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that: “Panels have recognized that merely registering a domain name comprised of a dictionary word or phrase does not by itself automatically confer rights or legitimate interests on the respondent; panels have held that mere arguments that a domain name corresponds to a dictionary term/phrase will not necessarily suffice. In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights.”
The Respondent’s use of the disputed domain name is simply to offer it for sale, at a high price: USD 19,888. Notably, the Respondent is not using the disputed domain in any way that relates to any of the descriptive meanings that the Respondent asserts that the disputed domain name has. In the Panel’s opinion, the Respondent’s use of the disputed domain name – offering it for sale at USD 19,888 – is seeking to trade off third-party trademark rights, and in particular the trademark rights of the Complainant. While the Respondent is no doubt willing to sell the disputed domain name to any person willing to pay the price, in reality the Panel believes that the person to whom the disputed domain name has the greatest value – and, hence, the person most likely to be willing to pay the price – is the Complainant, since it is a person whose trademark rights the disputed domain name trades off, and it was the previous registrant of the disputed domain name (before failing to renew the registration through error). The Panel does not consider that the purpose of buying for re-sale a domain name that is identical or nearly identical to a trademark in which a third party has rights, is a purpose that, of itself, gives rise to rights or legitimate interests in the domain name, even if the domain name is partially or wholly descriptive. Absent some genuine use, or intended use, of the domain name in a way that relates to the asserted descriptive meaning, merely offering such a domain name for sale does not give rise to rights or legitimate interests in it.
For these reasons – namely, that the disputed domain name is not wholly descriptive, the Respondent is not using the disputed domain name in a way that relates to the asserted descriptive meaning of the disputed domain name, the disputed domain name is almost identical to a trademark in which the Complainant has rights, and that the Respondent is seeking to trade off third-party trademark rights – the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
Paragraph 4(b) of the Policy sets out a number of circumstances which, if found, are evidence of the registration and use of a domain name in bad faith. The Complainant asserts that two of those circumstances are present in this case – namely, that the Respondent registered the disputed domain name: (i) primarily for the purpose of selling it to the Complainant (being the owner of a trademark to which the disputed domain name is identical or confusingly similar), or to a competitor of the Complainant, for an amount in excess of out-of-pocket expenses; and (ii) to prevent the Complainant (being the owner of a trademark to which the disputed domain name is identical or confusingly similar) from reflecting its trademark in a corresponding domain name, with the Respondent having engaged in a pattern of such conduct. The substance of the Respondent’s reply to these assertions is that it could not have registered the disputed domain name for either of these purposes because it did not know, and had no reason to know, of the Complainant’s trademark rights. In support of that claim the Respondent points to the fact that “the Complainant’s trademark registrations are limited to countries outside the United States” then asserts that its “business is operated entirely within the United States”.
While the former is clearly correct (the Complainant does not claim any USA trademark registrations), the implication of the latter assertion (that the Respondent’s business is limited to the USA) is incongruous. The Respondent’s website is accessible from outside of the USA and there is nothing on the website limiting sales of domain names to USA-based entities. Indeed, the website self-proclaims it “is the world’s best online store”. Self-evidently, the Respondent operates worldwide, and does so proudly. In any event, for reasons elaborated below, even if the Respondent’s business was limited to a single jurisdiction and that jurisdiction was one in which the Complainant did not have a trademark registration, it does not follow that the Respondent is absolved from responsibility for an abusive domain name registration.
The Respondent’s claim to ignorance of the Complainant’s trademark rights may, or may not, be true. The fact is, however, that it is simply not possible for the Panel to know what was the Respondent’s subjective state of mind, assuming that it actually had one. Given that the Respondent is a corporation and registered the disputed domain name through automated means (“drop-catching” the disputed domain name upon the accidental failure of the Complainant to renew its more than 14-years long previous registration of it), the reality is that the Respondent really had no subjective state of mind – other than that it is was registering a domain name that began with the word “super” and that immediately prior had been held by another person.
In situations such as this, where the registration is automated, previous panels in cases under the Policy have approached the issue of knowledge objectively, rather than subjectively – that is to say, by considering what the Respondent should have known, rather than what it actually did or did not know. This, in turn, has led panels to recognize that the registrant of a domain name may have a duty to establish whether registration of the domain name will infringe on the trademark rights of a third party. As stated in section 3.2.3 of WIPO Overview 3.0: “Panels have held that especially domainers undertaking bulk purchases or automated registrations have an affirmative obligation to avoid the registration of trademark-abusive domain names. Panelists will look to the facts of the case to determine whether such respondent has undertaken good faith efforts to screen such registrations against readily-available online databases to avoid registration of trademark-abusive domain names.”
The Respondent is a domainer who undertakes bulk purchases and automated registrations, including in particular by “drop-catching” previously-registered domain names. The Panel is of the view that the knowledge (and, for that matter, the intention) of such a domainer generally should be judged objectively. Thus, what may be observed here is that the Respondent registered the disputed domain without concern as to whether doing so abused the trademark rights of a third party, and without any apparent effort to avoid so doing. As it happens, the Respondent’s registration of the disputed domain name did abuse the trademark rights of a third party – namely, those of the immediately-prior registrant, the Complainant.
In this case, the Respondent “drop-caught” a domain name that contained a descriptive term (“super”) that the Respondent had pre-determined gave value to a domain name with that term. However, it seems clear that the disputed domain name has the greatest value to the Complainant, given that the Complainant has trademark rights in the string to which the disputed domain name is almost identical, and given that the Complainant was the immediately-prior previous registrant of the disputed domain name (before failing to renew the registration through error). Thus, it can be seen that the value of the disputed domain name derives primarily from the fact that it is the Complainant’s trademark, rather than from the fact that it contains arguably a descriptive term. In these circumstances, and absent any attempt by the Respondent to avoid registering a domain name that is another person’s trademark, the Respondent must accept that, judged objectively, it will be considered to have registered the disputed domain name for the primary purpose of selling it to the Complainant – which is deemed by the Policy to be evidence of registration and use in bad faith.
The Respondent must also accept that, judged objectively, it will be considered to have registered the disputed domain name to prevent the Complainant from reflecting its trademark in a corresponding domain name – which is also deemed by the Policy to be evidence of registration and use in bad faith, so long as the Respondent has engaged in a pattern of such conduct. The Complainant identified a number of previous actions under the Policy brought successfully against the Respondent. In the Panel’s view, those actions establish that the Respondent has engaged in the requisite pattern of conduct, as explained below.
The Complainant asserted that the Respondent’s affiliate has been the respondent to nine previous actions under the Policy filed with the Center, and in each action the outcome was an order for transfer of the domain name in issue to the complainant: Facebook, Inc. v, Domain Asset Holdings, WIPO Case No. D2011-0516; Training Channel, S.A. v. Domain Asset Holdings, WIPO Case No. D2011-0875 (“Training Channel”); Lifetime Assistance, Inc. v. Domain Asset Holdings, LLC, WIPO Case No. D2011-2137 (“Lifetime Assistance”); Universal Assistance S.A. v. Domain Asset Holdings, LLC, WIPO Case No. D2012-2547 (“Universal Assistance”); Tracy Anderson Mind and Body LLC v. Domain Asset Holdings, WIPO Case No. D2013-0699 (“Tracy Anderson”); Take-Two Interactive Software, Inc. v. Domain Asset Holdings, WIPO Case No. D2013-1434; WesTrac Pty Ltd v. Domain Asset Holdings, LLC, WIPO Case No. D2014-2032 (“WesTrac”); Pullmantur, S.A. v. Domain Asset Holdings, LLC, Domain Administrator, WIPO Case No. D2015-0053 (“Pullmantur”); Société Nouvelle Del Arte v. Domain Administrator, Domain Asset Holdings, LLC, WIPO Case No. D2016-1859 (“Del Arte”); Arne Jacobsen Designs I/S v. Domain Administrator, DomainMarket.com, WIPO Case No. D2017-0552 (“Arne Jacobsen”). Given the nature of the Respondent’s business, it is certain that the Respondent and its affiliates have been the respondent in a very large number of actions under the Policy, filed with various service providers. For the purpose of this aspect of the decision, however, the Panel has limited its consideration of other cases involving the Respondent to those pleaded by the Complainant.
The Panel has reviewed the decision in each of the cases involving the Respondent that was cited by the Complaint. While not every one of these case shares facts similar to this case, most of them do. The facts in WesTrac, in particular, are highly similar to the facts of this case. In WesTrac, the domain name in issue (<westrac.com>) was effectively identical to the complainant’s trademark, it had previously been registered by the complainant who had allowed the registration to lapse through error, and no use of it had been made by the Respondent other than to offer it for sale at high price (USD 50,000). The Respondent asserted that it registered the domain name because the first part contained a descriptive geographic term (“west”) and latter part “could be the abbreviation for a number of organizations and entities”, and that it had no knowledge of the complainant’s trademark due to the complainant’s trademark registrations being limited to countries outside the USA. The three-member panel in WesTrac made the following observation, which is equally applicable in this case: “[I]t is possible for a domain name dealer to acquire rights and legitimate interests in respect of its domain names on the basis of a bona fide business offering, but intentionally to price those domain names on the basis of their trade mark value goes beyond the bounds of a bona fide offering”. In the WesTrac case, the three-member panel found that the Respondent’s pricing of the domain name on the basis of its “trade mark value” indicated that the Respondent had actual knowledge of the complainant’s trademark. Consequently, the panel found that the domain name was registered and was being used in bad faith.
Similar findings of a lack of rights and legitimate interest, and of registration in bad faith, on the basis of the “exorbitant” price (USD 200,000) at which the Respondent offered the domain name for sale were made in Tracy Anderson. In that case, another three-member panel concluded that: “The Respondent’s argument that it was unaware of Complainant’s existence or celebrity when it purchased the Disputed Domain Name cannot credibly account to the Panel for the fact that the Disputed Domain Name is offered at a price with is nearly ten times that of other domain names for sale by Respondent which also include ‘Anderson’.” Similarly in Arne Jacobsen, the “high price” (USD 24,888) at which the Respondent offered the domain name (<arnejacobsen.com>) for sale contributed to the panel’s finding that it was “not willing to accept the claimed lack of knowledge of the Complainant and its trademark”.
Even in cases where the domain name might be considered highly generic or descriptive, the panels have found that the Respondent’s registration of the domain name was in bad faith when that domain name was also the trademark of the complainant. In Lifetime Assistance, as in this case, the previous registrant of the domain name in issue (<lifetimeassistance.com>) was the complainant, who had inadvertently allowed the registration to lapse. The panel found bad faith registration on the basis that: “Respondent registered the Domain Name virtually immediately after Complainant’s registration lapsed, while a trademark or Internet based search would easily have disclosed Complainant’s trademark rights and long-established use of the Lifetime Assistance term. Moreover, Respondent used the Domain Name in connection with a parked website, while demanding USD 30,000 for sale of the Domain Name to Complainant …”. In each of Training Channel (concerning <trainingchannel.com>), Universal Assistance (concerning <universalassistance.com>) and Del Arte (concerning <pizzadelarte.com>), the panels found that the Respondent’s offering of the domain names for sale (at USD 5,000, USD 50,000, and USD 4,000, respectively) demonstrated that the Respondent registered the domain names for the purpose of selling it to the complainant or one of its competitors.
As can be seen from the above previous cases involving the Respondent, there is substance to the Complainant’s assertion that the Respondent engages in a pattern of conduct of registering a domain name for the purpose of selling it to the person whose trademark is contained in the domain name. That is not to say that all domain name registrations by the Respondent are for this purpose. The Panel acknowledges that many of the Respondent’s domain name registrations will be for bona fide purposes, where the value of the domain name derives primarily from its generic or descriptive meaning. However, the situation is different where (as in this case) the domain name contains another person’s trademark and the value of the domain name derives primarily from that. In the latter situation, it is correct to say, as did the panel in Pullmantur: “[T]he most likely explanation for the registration and holding of the Domain Name was to take some form of unfair advantage of the association of the term embodied in the Domain Name with the Complainant’s trade marks”.
The Panel in this case reaches the same conclusion as did the panel in Pullmantur, and the panels in each of the other cases discussed above, in relation to the purpose for which the Respondent registered the disputed domain name.
The Panel emphasizes that critical to its reasoning and its conclusion in this case is that the Respondent acquired the disputed domain name through drop-catching. Registration of a domain name in that circumstance is not the same as “ordinary” registration of a domain name (i.e., registration of a domain name which is not held by another person immediately prior to registration). Where registration occurs through drop-catching, the registrant is objectively aware that another person held the registration immediately prior. This, in effect, puts the registrant on notice that another person (the immediately prior registrant) may have rights in a trademark to which the domain name is identical or confusingly similar. Where, as in this case, the drop-catching registrant fails to take any steps to determine if such rights exist, then the registrant is taking the risk that such rights do exist. Where such rights do exist, where the value of the domain name derives primarily from those rights, and where the registrant’s only meaningful use of the domain name is to offer it for sale, then the registrant is liable to be considered as having registered the domain name primarily for the purpose of selling it to the person who has those rights.
For these reasons, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <supermacs.com> be transferred to the Complainant.
Andrew F. Christie
Sole Panelist
Date: May 7, 2018