The Complainant is Building and Social Housing Foundation of Leicestershire, United Kingdom of Great Britain and the Northern Ireland ("United Kingdom"), represented by Keltie LLP, United Kingdom.
The Respondent is Domain Administrator, DomainMarket.com of Potomac, Maryland, United States of America ("United States"), represented by Erika L. Sullivan, United States.
The disputed domain name <worldhabitat.org> is registered with eNom, Inc. (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 22, 2017. On February 22, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 23, 2017, 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 7, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 27, 2017. The Response was filed with the Center on March 27, 2017.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on April 13, 2017. 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 a foundation established in the United Kingdom. Since 1985, it has been operating the World Habitat Awards in conjunction with the United Nations. The awards are open to people and bodies all around the world. The awards are announced on World Habitat Day at a ceremony at which the United Nations Center for Human Settlements presents its Habitat Scroll of Honour. World Habitat Day is apparently a "day" designated by the United Nations to promote interests in the state of our towns and cities and the basic right of all to adequate shelter.
Each year, the Complainant awards a World Habitat Award for the Northern Hemisphere and a separate World Habitat Award for the Southern Hemisphere.
Since the World Habitat Awards were initiated, there have been seven different winners of an award from the United States. The first winner was the Saint Vincent de Paul Village in San Diego, California in 1988. A further 10 participants from the United States have been runners-up.
The Complainant has two pending trademark applications in the United Kingdom:
- Trademark Application No. 00003205123 for WORLD HABITAT in respect of a wide range of goods and services in International Classes 9, 35, 36, 37, 41, 43 and 45; and
- Trademark Application No. 00003205132 for WORLD HABITAT AWARDS in respect of services in International Classes 36 and 41.
Both trademark applications were filed on January 5, 2017. It appears from information filed by the Respondent that both applications have been accepted and published for opposition on February 24, 2017 with the opposition period expiring on April 24, 2017. It is not clear on the record whether any opposition has in fact been filed.
The Respondent became the registrant of the disputed domain name sometime between October 2016 and February 2017. The actual date is not clear.
It appears from the record that the disputed domain name was first registered in 1999 by a World Habitat Inc. That registration appears to have ceased in about 2001. The current registration of the disputed domain name can be traced back to September 16, 2003. At that time, it was registered to one Michael Mann or one of his associated entities, "grassroots.org". The registration has been held since then by entities associated with Mr. Mann including MMBiz and Domain Asset Holdings LLC. According to the Response, these entities and the Respondent are all part of Mr. Mann's "company".
Registration details included in the WhoIs reports provide some support for that claim. Indeed, the email address for "MMBIz" was "[…]@domainmarketing.com". The Complainant also points out that the landing page to which the disputed domain name resolved on October 8, 2016 and for some years earlier, advertised the disputed domain name for sale by the present Respondent.
It also appears from the record that for some years until at least May 2007, the website to which the disputed domain name resolved was a website for either "planetearth.org, a grassroots.org 501c3 project" or "grassroot.org". The website included an invitation to subscribe to the monthly newsletter, Grassroots News. It also provided information and links to various articles related to environmental or sustainability issues. There were also links to Grassroots discussion forums. On or about May 8, 2006, it appears from Annex 5 to the Complaint that the disputed domain name resolved directly to the website of Grassroots.org, before reverting to the PlanetEarth.org page.
The Respondent is in the business of offering for sale domain names. There is evidence that it, or its associated entity, Domain Asset Holdings Inc., own many other domain names. Many of these appear to be or involve descriptive terms such as <dictionary.org> and <criminology.org>. Others, however, may be, or be similar to, registered trademarks, such as <claridge.org>.
When the Complaint was filed, the disputed domain name resolved to a website which offered the disputed domain name for sale for USD 100,000. In correspondence before the Complaint was filed, the Respondent rejected an offer from an agent acting for the Complainant to buy the disputed domain name for USD 3,000 and offered to sell it for USD 24,888.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant's trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
Bearing in mind that the Complainant's trademark applications have not yet crystallised into registered trademarks, the Complainant states that "for the avoidance of doubt, the Complainant relies on its unregistered rights in the WORLD HABITAT AWARDS trademark […] which pre-date the Respondent's registration of the [disputed domain name] by thirty two years."
The Respondent disputes that the Complainant has provided sufficient evidence of its use of the expression "World Habitat Awards" for it to have acquired secondary meaning. It is true that the evidence submitted by the Complainant does not go into the level of detail or address all the matters set out in decisions cited in paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
The evidence submitted by the Complainant does show, however, that there are "World Habitat Awards" which are promoted and awarded in conjunction with the United Nations and the latter's World Habitat Day. These awards have been offered, and awarded, for some 32 years. The evidence also shows that many different people or organisations from many countries around the world have applied to be awarded the awards.
As the Respondent contends, the evidence may not always make it clear that the Complainant is the source standing behind the "World Habitat Awards" What is clear is that there is some particular source responsible for the "World Habitat Awards", the Panel considers the Complainant has established it has sufficiently established common law or unregistered trademark rights in the expression WORLD HABITAT AWARDS for the purposes of the Policy.
The Panel agrees with the Respondent, however, that the evidence establishes such rights only in the expression WORLD HABITAT AWARDS and not to the more limited expression WORLD HABITAT.
The Respondent contends that the disputed domain name is not confusingly similar to WORLD HABITAT AWARDS because the disputed domain name contains only "world habitat" and not also "awards".
The Respondent's argument is misplaced. The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain ("gTLD") component as a functional aspect of the domain name system: WIPO Overview 2.0, paragraph 1.2. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
The words "world habitat" are the distinctive feature of the Complainant's trademark; it is those words in combination which instruct what type of "awards" are being referred to. Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant's trademarks and the requirement under the first limb of the Policy is satisfied.
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
It is not in dispute between the Parties that the Respondent is not affiliated in any way with the Complainant. Nor has the Complainant authorised the Respondent (or any of its associated entities including Mr. Mann) to use the disputed domain name. The disputed domain name is not derived from the Respondent's name nor, it appears, the name of any of the entities associated with the Respondent or Mr. Mann. At least for the last several years when the disputed domain name has been offered for sale, the Respondent cannot claim that its use has been noncommercial or fair use.
The Complainant accepts that it can be legitimate to register a domain name for the purposes of reselling it. It contends that this is not such a case. The Complainant accepts that the words "world" and "habitat" are by themselves ordinary English words which are not distinctive. It contends, however, that in combination they have no meaning and are distinctive. It says that the price which the Respondent offers the disputed domain name for sale shows that the Respondent is seeking illegitimately to take advantage of the trademark significance of the expression WORLD HABITAT. That is reinforced by the facts that the Respondent, or its associated entity Domain Assets Holdings LLC, offer other, similar domain names for sale for only a fraction of the price sought for the disputed domain name. In addition, the Respondent has directly linked the association between the disputed domain name and the United Nations' World Habitat day as justification for the very high price.
The Respondent, as already noted, disputes this and says that the words in combination are descriptive or generic.
The Panel notes that, even where the terms included in a domain name are potentially descriptive or potentially in conflict with an expression which has acquired secondary meaning, decisions under the Policy usually require evidence that the domain name in question is being used for its descriptive significance, or at least demonstrable preparations towards such use. It is unnecessary to reach a concluded view on this requirement under the Policy, however, having regard to the conclusion reached under the third limb of the Policy.
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see, e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
In the typical case, the position falls to be assessed at the date the Respondent became the registrant of the disputed domain name. That is, sometime between October 2016 and February 2017.
In the present case, however, the website to which the disputed domain name resolved was for many years the same or essentially the same as the website to which the disputed domain name resolved after the Respondent became the registrant. The registrant of the disputed domain name preceding the Respondent was also an entity related to the Respondent. In fact, the Response indicates that both the Respondent and its predecessor share common ownership under a Mr. Mann.
The Complainant invokes the history of the disputed domain name and the corporate relationship between the Respondent and its predecessor, Domain Asset Holdings LLC, as factors supporting a conclusion that the disputed domain name was registered in bad faith and is being used in bad faith.
Other UDRP panels have also noted that generally transfers between related parties do not constitute new registrations for the purposes of the Policy. In The Proprietors of Strata Plan No. 36, A Turks and Caicos Corporation v. Gift2Gift Corp., WIPO Case No. D2010-2180, the website to which the domain name in dispute resolved continued to operate in the same way as it had operated before the transfer of the domain name. Accordingly, the transfer of the domain name to a company under the control of the previous owners was not treated as a new registration.
In the present case, it appears that the disputed domain name was used by Mr. Mann and his associated interests for some years in connection with his "Planet Earth" / "Grassroots.org" activities. So far as the record in this case shows, the Panel is not in a position to dismiss those activities as a subterfuge or cloak to the real purpose for the registration.
As noted above, however, some time in about 2008, Mr. Mann re-purposed the focus of the website, offering the disputed domain name for sale through the current Respondent and by 2009 the registration had been transferred into the name of Domain Asset Holdings Inc. before being transferred more recently into the Respondent's name.
In some decisions, a learned sole panel has held that a change in registration involving transfers within a corporate group do not generally constitute a new registration for the purposes of the Policy, meaning that the question of registration and use in bad faith fell to be determined at the date of first registration within the corporate group. These decisions have typically involved, as is the case here, dealings between entities based in the United States and noted that the United States courts generally disregard dealings within corporate groups. See for example Hultafors Group AB v. my domain limited, WIPO Case No. D2014-0597.
Paragraph 3.7 of the WIPO Overview 2.0 is to similar effect, but in more general terms. However, some UDRP panels have noted that there are exceptions to that rule. See, e.g., Bounz B.V. v. Whois Privacy Services Pty Ltd. / Stanley Pace, WIPO Case No. D2015-1230. Thus, in BMEzine.com LLC v. Gregory Ricks / Gee Whiz Domains Privacy Service, WIPO Case No. D2008-0882, the panel considered that the transfers by a seasoned domainer through various privacy services were undertaken to conceal the respondent's identity and so found that a transfer after the date knowledge of the complainant's trademark had been obtained was in bad faith.
The Panel considers that in the circumstances of this case it is appropriate to take into account the history of common ownership and control of the disputed domain name including before the Respondent became its registrant. The original registration and the way the disputed domain name was used by Mr. Mann and his associated interests for several years on the record in this case was not in bad faith. However, that is not all.
It is clear that the interests associated with Mr. Mann, including the Respondent and its immediate predecessor (at least) are experienced domainers. The Respondent has also not advanced a clear explanation for the transfers of the disputed domain name between his various corporate interests once he decided to capitalize on the potential value of the disputed domain name.
In the present case, the Panel also notes the high price which the Respondent is seeking for the disputed domain name and the linkage of that high price to the United Nations and its World Habitat Day offered by the Respondent.
All of these matters are considerations which give rise to serious pause. Nonetheless and after anxious consideration, the Panel is unable to conclude that these matters are attributable to a taking advantage of the Complainant's trademark. The trademark the Complainant has been using is WORLD HABITAT AWARDS. The disputed domain name does use the first two elements of that trademark. Those two elements in combination, however, are at least as significant for their association with the United Nations' World Habitat Day. The Complainant's evidence falls well short of establishing that a usage of "World Habitat" necessarily refers to its awards (when the word "awards" is not also used) as opposed to World Habitat Day or, for that matter, any other "world habitat".
The Panel recognises that the Complainant appears to be on the verge of registering a trademark in the United Kingdom for WORLD HABITAT alone. Any registration from that application will date back to January 5, 2017. That is well after the Respondent began offering the disputed domain name for sale while it was registered by its related entity, Domain Asset Holdings Inc. As noted in Section 4 above, the evidence does not show that the Complainant had generated a secondary meaning at that time in the expression WORLD HABITAT alone.
Having regard to these matters, the Panel does not infer that the disputed domain name has been registered in bad faith to take advantage of the Complainant's trademark. In these circumstances, the Panel finds that the Complainant has not established that the disputed domain name has been registered and used in bad faith.
The Respondent has sought a ruling that the Complainant has engaged in reverse domain name hijacking.
The Panel is not prepared to make that finding. The circumstances surrounding the dealings in the disputed domain name by the entities affiliated with Mr. Mann were opaque. Moreover, there was as has been discussed above a drastic change in the way those interests used the disputed domain name. The suggestion that the Complainant acted unreasonably in bringing the Complaint is untenable.
For the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Sole Panelist
Date: April 27, 2017