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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Media General Communications, Inc. v. Rarenames, WebReg

Case No. D2006-0964

 

1. The Parties

The Complainant is Media General Communications, Inc., Richmond, Virginia, United States of America, represented by Dow Lohnes PLLC, United States of America.

The Respondent is Rarenames, WebReg, Washington, D.C. United States of America, represented by ESQwire.com Law Firm, United States of America.

 

2. The Domain Name and Registrar

The disputed Domain Name <wcmh.com> is registered with TierraNet Inc. d/b/a DomainDiscover.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2006. On August 2, 2006, the Center transmitted by email to TierraNet Inc. d/b/a DomainDiscover a request for registrar verification in connection with the Domain Name. On August 3, 2006, 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 for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 August 17, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September 6,  2006. The Response was filed with the Center on September 7, 2006.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on September 14, 2006. 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.

 

4. Factual Background

The Complainant, Media General Communications, Inc., owns and operates some 30 broadcast television stations in the United States, as well as newspapers and online publishing and interactive media ventures. In June 2006, the Complainant purchased substantially all of the assets of WCMH-TV, a television station in Columbus, Ohio, from NBC Universal, Inc.

NBC had used WCMH as a service mark associated with the network-owned Columbus television station since 1976. In 1998, the National Broadcasting Company, Inc. obtained trademark registration from the United States Patent and Trademark Office (USPTO, Reg. No. 2,176,978). On July 21, 2006, that trademark was assigned to the Complainant, as reflected in the USPTO database and a USPTO Trademark Assignment Abstract of Title furnished by the Complainant. Thus, the Complainant currently holds title to the registered WCMH mark and uses it (as did NBC) to brand the broadcast television services provided by WCMH-TV.

According to the Registrar and the WHOIS database, the Domain Name was registered in December 2003 in the name of “RareNames, WebReg,” showing an address in Washington, DC for the registrant and its administrative and technical contacts, as well as an email address in the ‘buydomains.com’ domain. Attached to the Response in this proceeding is the Declaration of Rochelle Hastings, who identifies herself as “the legal manager for NameMedia, Inc., WebReg, RN, a d/b/a/ of Rare Names, Inc., which is a wholly-owned subsidiary of NameMedia, Inc.” Ms. Hastings explains that the Respondent’s business is registering “domain names that become available for registration through expiration and deletion,” and then using them for websites or offering them for sale to the public.

In June 2006, when the Complainant acquired WCMH-TV, it learned that the Respondent had registered the Domain Name and was using it to redirect Internet visitors to a website at <techbuyer.com>, which advertises products for “tech professionals.” The WHOIS database shows that the <techbuyer.com> domain is registered to the Respondent. A screen shot provided by the Complainant shows that on June 27, 2006, the Domain Name resolved to the “www.techbuyer.com” website but also displayed a notice at the top of the page indicating that the Domain Name “is for sale $75,000.” On that same day, the Complainant’s counsel sent a cease-and-desist letter to the Respondent claiming infringement of the WCMH mark. Counsel for the Complainant followed this up by sending another letter dated July 13, 2006.

A screen shot dated July 19, 2006, shows that the notice at the top of the page at “www.techbuyer.com” to which the Domain Name resolved had been revised to state that the Domain Name was “1 of 670,000 premium domains,” listing a contact telephone number at “BuyDomains.com.” A screen shot on that date of the website at “www.buydomains.com” shows that the Domain Name was still being listed for sale for “$75,000.”

Subsequent telephone conversations between representatives of the Complainant and the Respondent failed to resolve the Complainant’s concerns, although the Domain Name was removed from the list of names for sale at “www.buydomains.com” and the reference to BuyDomains.com offering the Domain Name for sale was removed from the website at “www.techbuyer.com” to which the Domain Name resolved.

The Response does not detail the relationship between the Respondent and BuyDomains.com, which listed the Domain Name for sale. According to its website at “www.buydomains.com”, “BuyDomains.com” is a Delaware corporation that has been, since 1999, “the world’s leading domain market.” The Panel notes that BuyDomains Holdings, Inc. of Bethesda, Maryland is the registrant of the <buydomains.com> domain that was used for the email contact address associated with the Domain Name, as well as for the website listing the Domain Name for sale. BuyDomains Holdings, Inc. is also the registrant of <rarenames.com>, which resolves to a site advertising “Rarenames.com” as “buyers and sellers of the world’s finest Internet brands.”

According to the business entity database operated by the Maryland Department of Assessments and Taxation, Rarenames, LLC and Buy Domains, LLC are Maryland limited liability companies, both registered at the same address in Bethesda, Maryland and showing Michael Mann as the registered agent. Media articles identify Mr. Mann as the president of “BuyDomains.com,” the “industry superpower” in the domain resale business.¹ As indicated in several UDRP cases cited by the parties and as acknowledged by the Respondent, the Respondent and “BuyDomains.com” are related, as are “RN WebReg,” “NameMedia,” and “Buy This Domain,” all apparently entities or trade names associated with the Respondent and its affiliates.

Thus, it appears that the Respondent used the Domain Name to direct traffic to a commercial website operated by the Respondent, while simultaneously advertising the Domain Name for sale through an affiliated company.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is identical to its WCMH mark and that the Respondent has no rights or legitimate interests in that mark. The Complainant grounds its assertions of bad faith on Policy, paragraphs 4(b)(i) (registering a domain name in order to sell it to the Complainant or a competitor for an amount exceeding out-of-pocket costs), 4(b)(ii) (a pattern of registering domain names in an effort to deceive Internet users and direct them to third-party websites), and 4(b)(iv) (misdirection for commercial gain).

B. Respondent

The Respondent does not concede or deny the identity of the Domain Name with the Complainant’s mark. The Respondent states that it registers “hundreds of thousands” of domain names in the hope of selling them and for interim use in displaying advertising links. The Respondent argues that these activities represent a bona fide offering of goods or services. The Respondent denies bad faith in registering and using the Domain Name. The Respondent denies knowing of the Complainant’s trademark when it registered the Domain Name and asserts that it did not target the Complainant or its mark and did not try to sell the Domain Name to the Complainant or its competitors. With hundreds of thousands of domain name registrations, the Respondent argues that some will be subject to challenge by trademark holders. But the Respondent points out that “there are only a few adverse decisions” against the Respondent and cites five UDRP decisions in favor of the Respondent or its “affiliates.”

 

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order for a Complainant to succeed under the Policy, the Complainant must demonstrate each of the following:

“(i) the 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 the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.”

Under paragraph 15(a) of the Rules,

“A Panel shall decide a 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.”

A. Identical or Confusingly Similar

The Domain Name (disregarding the immaterial top-level domain “.com”) is identical to the Complainant’s registered WCMH mark, a fact which the Respondent does not contest. Thus, the Complainant has satisfied the first element of the Complaint.

B. Rights or Legitimate Interests

The Complainant states, without contradiction, that it has no relationship with the Respondent and has not authorized the Respondent to use the WCMH mark.

The Policy, paragraph 4(c), provides a non-exhaustive list of other circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Respondent does not assert that it has been known by the Domain Name or that it has made legitimate noncommercial use of the Domain Name. Rather, it argues that it is in the legitimate business of registering, buying, and selling domain names. The Respondent cites KIS v. Anything.com Ltd., WIPO Case No. D2000-0770, where the panel commented on the intrinsic value of short domain names and concluded that offering such a name for sale was a legitimate business activity where the evidence did not suggest that the name was chosen because it corresponds to a trademark.

The website at “www.buydomains.com”, where the Respondent listed the Domain Name for sale, does reflect a regular business of registering, buying, and selling hundreds of thousands of domain names. This may well in itself be a legitimate business activity, but the Panel is not persuaded that it is described by paragraph 4(c)(i) of the Policy, since the Respondent does not use the domain names in connection with offering goods or services but rather sells the names themselves.

The Respondent also argues that using the Domain Name to direct traffic to a website with sponsored advertising links is a legitimate use. Again, the Panel is not persuaded that such use falls strictly within the scope of paragraph 4(c)(i) of the Policy, which seems to contemplate a bona fide offering of goods and services by the Respondent, rather than simply parking the domain where the Respondent or a third party can generate click-through advertising revenues from parties advertising their own goods and services. See Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; Gerber Products Co. v. LaPorte Holdings, WIPO Case No. D2005-1277.

The list of legitimate interests found in paragraph 4(c) of the Policy is not exclusive, however, and the Panel agrees with the conclusion of KIS and several other UDRP decisions that, in the absence of evidence suggesting name selection because of correspondence to a trademark, domain resale and the use of a domain to publish advertising links are both normally legitimate business enterprises. The panel in Incorp Services, Inc. v. RareNames, WebReg, FA0509000559911 (NAF), a case involving the same Respondent, concluded that the business of selling domain names consisting of generic or descriptive terms represents a legitimate interest in such domain names, at least where the names are not identical or confusingly similar to famous or distinctive marks. See also HP Hood LLC v. hood.com, FA0408000313566 (NAF) (domain speculation is a legitimate business interest absent evidence that the respondent was aware of the complainant’s trademark). As an early UDRP panel concluded in Shirmax Retail Ltd. v. CES Marketing, Inc., AF-0104 (e-Resolution):

“Where the domain name and trademark in question are generic — and in particular where they comprise no more than a single, short, common word — the rights/interests inquiry is more likely to favor the domain name owner. The ICANN Policy is very narrow in scope; it covers only clear cases of ‘cybersquatting’ and ‘cyberpiracy,’ not every dispute that might arise over a domain name. See, e.g., Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy (October 24, 1999).”

Similarly, the respondent in The Landmark Group v. Digimedia L.P., FA0406000285459 (NAF), registered “large numbers of dictionary words” and received revenue from pay-per-click advertising links, at least some of them related to the generic nature of the domain name. The panel in that case held that, “as long as the domain names have been registered because of their attraction as dictionary words, and not because of their value as trademarks, this business model is permitted under the Policy.” The panel in HP Hood LLC v. hood.com, FA0408000313566 (NAF) agreed, adding that “an established domain name resale enterprise that restricts its portfolio in a good faith effort to avoid misleading the public qualifies as a legitimate interest.”

In sum, reselling domain names or using them for advertising links can in certain circumstances represent legitimate interests for purposes of paragraph 4(c) of the Policy, but not in all instances. These practices are most likely to be deemed legitimate under the Policy when:

- the respondent regularly engages in the business of registering and reselling domain names, and/or using them to display advertising links;

- the respondent makes good-faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others;

- the domain name in question is a “dictionary word” or a generic or descriptive phrase;

- the domain name is not identical or confusingly similar to a famous or distinctive trademark; and

- there is no evidence that the respondent had actual knowledge of the complainant’s mark.

The Respondent here is clearly in the business of reselling domain names on a large scale and using them, at least in the interim, to point to websites with advertising links. But the Response does not indicate what steps, if any, the Respondent takes in good faith to avoid registering, using, and selling domain names that correspond to trademarks. The domain name in question is a short string of letters, but it is not a dictionary word or descriptive phrase. Rather, it is suspiciously identical to the Complainant’s arbitrary mark.

Thus, the determination of legitimacy in this case largely hinges on the question of bad faith, which is better addressed below in connection with the third element of thePolicy. If the Respondent registered and used the Domain Name, and offered it for sale, in good faith, then we must conclude that the Respondent had a legitimate interest in the Domain Name as it does in hundreds of thousands of other domain names in its portfolio. On the other hand, if the Respondent failed to act in good faith, by registering and using a non-generic domain name that it should have realized was likely to correspond to a trademark, then the Respondent has no legitimate interest in this particular Domain Name.

C. Registered and Used in Bad Faith

The Complainant cites three subparagraphs in the non-exhaustive list of circumstances indicating bad faith that is found in the Policy, paragraph 4(b):

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

The Complainant has not established that paragraph 4(b)(i) of the Policy applies in this case. The Respondent is in the business of selling hundreds of thousands of domain names to the public. A cursory review of listings on “www.buydomains.com” indicates that many apparently nonsensical three- and four-letter strings are offered for resale, often for tens of thousands of dollars. Presumably, shorter names are easier to advertise, remember, and enter into a browser or search engine, so they would naturally command a premium on resale. There is no evidence here that the Respondent approached the Complainant or one of its competitors about selling the Domain Name. Rather, it is undisputed that the Respondent routinely offers to resell many thousands of domain names for what the respective parties perceive as a fair market price. Thus, it cannot be determined from this record that the Respondent registered the Domain Name “primarily” for the purpose of selling it to the Complainant or one of its competitors.

Paragraph 4(b)(ii) of the Policy requires a showing that the Respondent has engaged in a “pattern” of registering domain names “in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name.” UDRP panels have reached differing conclusions on this point with respect to this Respondent and its affiliates. The panel in Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304, for example, concluded that,

“where a respondent has registered a domain name consisting of a dictionary term because the respondent has a good faith belief that the domain name’s value derives from its generic qualities, that may constitute a legitimate interest and the offer to sell such a domain name is not necessarily a sign of bad faith. Where, in contrast, a respondent registers large swaths of domain names for resale, often through automated programs that snap up domain names as they become available, with no attention whatsoever to whether they may be identical to trademarks, such practices may well support a finding that respondent is engaged in a pattern of conduct that deprives trademark owners of the ability to register domain names reflecting their marks.

On the record of this case, the Panel believes it a fair inference that Respondent’s conduct falls into the latter category. Respondent has been a respondent in a number of UDRP proceedings; in the majority of those cases, the domain names have been transferred. Moreover, the Domain Name in this case, MOBILCOM, is not a dictionary word, and even a cursory search on search engines like Yahoo! and Google would have shown that MOBILCOM is a trademark. The Panel thus concludes that Respondent has registered this Domain Name to prevent Complainant from reflecting its mark in the corresponding .com Domain Name, and that Respondent is engaged in a pattern of such conduct.”

By contrast, the panel in Imperial Chemical Industries PLC v. RareNames, WIPO Case No. D2006-0124, which appears to be the most recent UDRP decision involving the Respondent (decided in May 2006), declined to find a pattern of preclusive registrations. The panel found that the domain name in that case (<icidulux.com>) had been registered and used in bad faith for purposes of paragraph 4(b)(iv) of the Policy, where the domain name combined two of the complainant’s marks and was used to redirect visitors to a website advertising competing home-improvement products. But the panel also concluded that there was insufficient evidence of a “pattern” of abusive registrations for purposes of paragraph 4(b)(ii).

The Complainant here cites five prior UDRP proceedings in which the Respondent and/or related entities were ordered to transfer domain names to a complainant. The Panel is aware of four others. Some but not all of these adverse decisions reach a conclusion of bad faith under paragraph 4(b)(ii) of the Policy. The Respondent, for its part, cites five UDRP decisions in which panels denied complaints against the Respondent or one of its affiliates. The Respondent and its affiliates handle an extraordinary volume of domain registrations, and it is perhaps not surprising that a relatively small number of these have engendered Policy complaints. The Respondent is not a competitor of the Complainant with a direct interest in preventing the Complainant from using its mark in a domain name. On balance, the Panel finds insufficient evidence that the Respondent has engaged in a pattern of intentionally registering domain names to deprive trademark owners of their use.

The Complainant also relies on paragraph 4(b)(iv) of the Policy (misleading Internet users for commercial gain). This is more clearly apposite in a case such as Imperial Chemical, supra page 8, where the domain name incorporated two famous marks and was used to advertise competing products. The Respondent, based in the Washington, DC area, denies prior knowledge of the Complainant and its mark, and it is likely that the mark is best known in the Columbus, Ohio broadcast area of WCMH-TV. As the Respondent points out, “WCMH” is not used exclusively to refer to the Complainant’s television station. The domain name <wcmh.info> resolves to the website of the World Congress on Men’s Health and Gender, while <wcmh.org> resolves to a website operated by Windham Hospital in Connecticut. Further, there is no evidence in the record that the Domain Name has been used to direct Internet visitors to websites advertising the services of competitors of the Complainant or, indeed, relating to television programs or broadcast services offered by the Complainant or any other party. Thus, in contrast to some of the UDRP cases decided against the Respondent or its affiliates, the Panel is not convinced that the Respondent used this Domain Name in a way that suggests it was deliberately attempting to mislead Internet users and capitalize on the Complainant’s mark.

However, the list of instances of bad faith in Policy, paragraph 4(b) is explicitly non-exclusive. The Panel must consider, as have several previous UDRP panels, whether the Respondent’s apparent disregard for the likelihood that the Domain Name corresponded to a distinctive trademark is itself evidence of bad faith in the registration and use of the Domain Name.

Many if not most of the domain names acquired by the Respondent and its affiliates are registered automatically (reportedly within minutes) when the Respondent’s software detects an expired or deleted domain name in a registrar’s database. Other domain names, to judge from the website at “www.buydomains.com,” are purchased directly from registrants and may involve negotiation by email or telephone between human agents.

In either event, the Panel finds that paragraph 2 of the Policy implicitly requires some good-faith effort to avoid registering and using domain names corresponding to trademarks in violation of the Policy. Paragraph 2 of the Policy, “Your Representations,” is incorporated by reference in the registration agreements of ICANN-approved registrars. It reads as follows:

“By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.”

The Respondent and its affiliates advertise “premium domains.” In many cases (including this one), they assign asking prices to the individual domain names. These facts strongly suggest that even where the acquisition process is automated, there is a degree of human review and evaluation of some or all of the domain names, evidently including the Domain Name at issue here. It is entirely fair to expect that this review would entail, for example, some effort to avoid illegality, trademark infringement, and violation of the Policy, as suggested by paragraph 2 of the Policy and by the Respondent’s own statements. Thus, the panel in HP Hood LLC, supra, spoke of restricting a reseller’s portfolio in “a good faith effort to avoid misleading the public”; otherwise, the reseller’s registration of a domain name could not be considered a “legitimate” business activity or one carried out in good faith. The panel in Mobile Communication Service, supra page 5 and 7, contemplated at least a minimal degree of due diligence in deciding against a respondent where the domain name “is not a dictionary word, and even a cursory search on search engines like Yahoo! and Google would have shown that MOBILCOM is a trademark.”

There is no evidence in the record that the Respondent in the present case engaged in any such review before registering the Domain Name, listing it for sale for $75,000 (one of its more expensive listings), and using it to redirect visitors to a website filled with advertising links. According to the Declaration of Rochelle Hastings submitted with the Response, “We only register domain names which incorporate common words, descriptive terms, and/or words and terms to which we believe no single party has exclusive rights.” But the Domain Name at issue in this proceeding is not a common word or descriptive term, and the Respondent does not indicate what efforts it made to determine that its registration would not violate the Policy. The Domain Name is an arbitrary string of letters that is, in fact, registered as a US trademark. A search engine query of “WCMH” predominantly displays results referring to the Complainant’s WCMH television station and its news and entertainment programs.

Such a query might not be considered necessary in registering a “dictionary” domain name, but the likelihood of infringing the rights of a third party or creating a likelihood of confusion as to source is clearly greater where the domain name is not a dictionary word or descriptive phrase. This is particularly true for three- or four-letter strings beginning with “W,” since these are used as distinctive call signs for hundreds of licensed broadcast television and radio stations in the United States,² many of which are trademarked. It is not credible that the Respondent was unaware of this practice, as it is evident to anyone watching American television or listening to American radio; this is one of the principal means of branding sources of American broadcasting services. Therefore, a four-letter string beginning with “W” should have triggered some further investigation to ensure that the registration would not “infringe upon or otherwise violate” the rights of a third party or deprive it of the opportunity to use a domain name corresponding to its mark.

The Respondent now argues that the Complainant does not have “exclusive” rights to the mark WCMH. But the Respondent does not indicate that it explored the possibility of third-party rights in any way before registering the Domain Name and offering it for sale. And the Complainant need not have an exclusive right to use WCMH in every possible context in order to show a violation of the Policy.

The fact that the Complainant’s mark is an easily discovered, US-registered trademark of exactly the kind frequently trademarked by the owners of US broadcast stations leads the Panel to conclude that the US-based Respondent, when registering the domain name, acted in disregard of the rights of third parties and therefore in bad faith. In the circumstances of this case, if the Respondent did not know of the Complainant’s mark, it should have known. Paragraphs 2 and 4 of the Policy impose a degree of responsibility even for a business that automates the process of rapidly registering expired or deleted domain names. The Panel concludes, therefore, that the Complaint in this case has satisfied the third, as well as the second, element of the Policy.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <wcmh.com> be transferred to the Complainant.

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W. Scott Blackmer
Sole Panelist

Dated: September 23, 2006

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¹ See, e.g., R. Jackson, “Superhero or Archvillian? The Secret Identity of Super Mann,” Domain Name Journal (archived September 17, 2003 and available online at www.dnjournal.com/columns/coverstory8.htm.

² See, e.g., “Call Sign,” Wikipedia, available online at www.wikipedia.org.