The Complainant is Workers United Union of New York, New York, United States of America, represented by Epstein Drangel Bazerman & James, LLP, United States of America.
The Respondent is Wesley Perkins of West Midlands, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Names and Registrar
The disputed domain name <workersunitedunion.com>,
<workersunitedunion.net> and <workersunitedunion.org> (the “Disputed Domain Names”) are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2010. On May 7, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Disputed Domain Names. On May 7, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact. 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 May 12, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 1, 2010. The Response was filed with the Center on May 31, 2010.
The Center appointed Alistair Payne as the sole panelist in this matter on June 11, 2010. 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, a union of 150,000 workers in the United States and Canada registered the Disputed Domain Names in early 2009 and actively used them to resolve to its principal website and for email until allowing them to inadvertently lapse after which date the Respondent registered them on April 14, 2010.
5. Parties' Contentions
A. Complainant
The Complainant says that it was formed in early 2009 and from formation was known as the “Workers United Union”. It registered and used the Disputed Domain Names to resolve to its main website from this time. It claims that as a result of use of it has developed a goodwill and reputation in its unincorporated name “Workers United Union” name and as a consequence of its use of this name as its trade name and as its service mark, it has developed rights in commerce throughout the United States sufficient to support a finding of trademark rights under the Policy. It says that the Disputed Domain Names are identical to its “Workers United Union” name.
The Complainant submits that there is no evidence that the Respondent is using the Disputed Domain Names for a bona fide offering of goods or services, has been commonly known by the Disputed Domain Names or is using them for a legitimate non-commercial purpose. The Complainant submits that the Respondent appears to buy and sell domain names, makes money from advertising links off websites at his domain names and has had two prior complaints under the Policy decided against him.
The Complainant submits that the Respondent has linked the Disputed Domain Names to a pornographic site, (“www.rudespace.com”) to garner business from the 150,000 members in the Complainant's organization who would previously have arrived at the Complainant's website. Further, the Complainant says that the Respondent's attempt to extort a very high price for the Disputed Domain Names is evidence of bad faith and inconsistent with any case that he has rights or legitimate interests.
The Complainant submits that the Respondent is in the business of buying and selling domain names at a price in excess of the out-of-pocket costs attached to the domain names. It says that the Respondent offered to sell it back the Disputed Domain Names for USD 30,000 which is far in excess of their cost and has a history of this kind of activity, for example in Elite Model Management Corporation v. Wesley Perkins, WIPO Case No. D2006-0297 and Smith & Nephew plc v. Wesley Perkins, Smith and Nephew Trading, WIPO Case No. D2008-1029. The Complainant further submits that the Respondent registered the Disputed Domain Names for this purpose and in order to prevent it from using them and with a view to disrupting its business or to attract Internet users to its website for commercial gain. As a result the Respondent both registered and used the Disputed Domain Names in bad faith.
B. Respondent
The Respondent first submits that the Complainant has not established adequate common law rights in its trading name and mark based on its evidence that it has used the name for one year. He submits that the name or mark is weak because it is comprised of three generic words and the Complainant has no exclusive rights in these words.
The Respondent says that he did not know of the Complainant when he registered the Disputed Domain Names, that he does not buy and sell domain names for a living but merely as a sideline and is entitled to do so. Essentially, he submits that considering the generic nature of the Disputed Domain Names, his lack of knowledge of the Complainant and the fact that he parked the Disputed Domain Names to the adult website as a temporary measure and without financial gain, it cannot be said that he has no legitimate interest in the Disputed Domain Names.
As far as bad faith is concerned the Respondent says that he responded to the Complainant's offer to buy the Disputed Domain Names and as he did not want to sell he suggested a high price at USD 28,000. He further says that he does not regularly buy and sell domain names in excess of their costs and that the two cited cases arose in circumstances where he made a mistake with the parking pages that the domain names resolved to and that these are only two examples in ten years in circumstances that he owns around 1,000 domain names. He reiterates that he makes no profit off the adult website parking page and that there is no evidence to suggest that he purchased the Disputed Domain Names primarily for the purpose of re-sale and neither is there any evidence that he did so for the purpose of diverting the Complainant's business. Overall the Complainant says that he registered the Disputed Domain names to promote his own activities which have nothing to do with the Complainant's business.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant does not have registered trademark rights but asserts that its use of its trading name or service mark WORKERS UNITED UNION over approximately a one year period amongst its 150,000 members in the United States and Canada has established a protectable goodwill and reputation such as amounts to unregistered trademark rights for the purposes of the Policy. For this purpose the Complainant has provided in evidence example copies of its promotional mailer to members and of its website.
Previous panels have found that a complainant has unregistered rights for the purposes of the Policy where a trade name or trademark has been shown to have been used widely amongst a particular constituency. For example, in Imperial College v. Christopher Dessimoz, WIPO Case No. D2004-0322, the panel found that the name THE IDEA LEAGUE used by four European universities to promote the development of joint activities between the universities had developed sufficient goodwill and reputation to support a finding of unregistered trademark rights for the purposes of the Policy.
In the case at issue the evidence submitted by the Complainant supports a finding that the Complainant used the name WORKERS UNITED as the common trade name or trade mark for the trade union. There appears to be even stronger evidence in this case then was present in the Imperial College case noted above, in that here there is evidence that the 150,000 strong membership of the union in the United States and Canada knew it as WORKERS UNITED and this name was communicated and used in mail outs, on the website and constituted the substantive part of the union's e-mail address. In the Panel's view there is adequate evidence of use of the name WORKERS UNITED has developed the necessary degree of goodwill and reputation to be treated as an unregistered trademark right for the purposes of the Policy.
This Panel considers that the Disputed Domain Names are confusingly similar to the Complainant's WORKERS UNITED unregistered trademark. The fact that the descriptive term “union” was not used as part of the name as demonstrated in the evidence submitted by the Complainant is not a distinguishing factor. The distinctive element of the mark is WORKERS UNITED. Sometimes, no doubt, the union was referred to in full as the WORKERS UNITED UNION but most of the time as noted above it was simply called WORKERS UNITED. The Panel considers that neither the addition of the word “union” in the Disputed Domain Names, nor consistent with previous panels' views, the addition of the suffixes “.net”, “.com”, or “.org”, act as distinguishers.
Accordingly, the Complaint succeeds in relation to the first element of the Policy.
B. Rights or Legitimate Interests
Under the Policy the Complainant is required to make out at least a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Names and it is then for the Respondent to rebut this case.
In this case the Complainant submits that the Respondent is not using the Disputed Domain Names for a bona fide offering of goods or services, has not been commonly known by the Disputed Domain Names and nor is he using them for a legitimate non-commercial purpose. Effectively, it submits that the Respondent opportunistically acquired the Disputed Domain Names for re-sale, has a history of such prior conduct and has in fact attempted to re-sell the Disputed Domain Names for a price well in excess of its out-of–pocket costs. In addition the Respondent has parked the Disputed Domain Names so that they defer to a pornographic website which is indicative that it is attempting to garner website traffic to this site and has no rights or legitimate interests in the Disputed Domain Names. The Panel accepts that the Complainant has on this basis made out its prima facie case under this element.
The Respondent submits that considering the generic nature of the Disputed Domain Names, his lack of knowledge of the Complainant when he purchased the Disputed Domain Names and the fact that he parked the Disputed Domain Names to the adult website as a temporary measure and without financial gain, it cannot be said that he has no legitimate interest in the Disputed Domain Names.
Although previous panels agree that trading in domain names in certain circumstances is not per se contrary to the Policy, every case must be considered on its own facts and merits. Had the Disputed Domain Names merely constituted generic words without a history of immediate prior use and had the Respondent parked the Disputed Domain Names to a blank holding page his explanation might have been more credible. However in the circumstances that the Disputed Domain Names were not plainly generic and had been in immediate prior use and that the Respondent chose to defer the Disputed Domain Names to a pornographic website while demanding a considerable sum of money for their transfer, the Panel does not find that the Respondent has operated in such a way as to indicate that it has bona fide rights or a legitimate interest in the Disputed Domain Names. As a result the Respondent has not rebutted the Complainant's prima facie case and the Complaint succeeds under the second element of the Policy.
C. Registered and Used in Bad Faith
As noted above and in all the circumstances, the Panel considers that the Respondent's conduct in deferring the Disputed Domain Names to a pornographic site while seeking a very inflated transfer price was not bona fide or legitimate conduct. This view is only reinforced by the past case examples cited by the Complainant in which it was also found that the Respondent had acted in bad faith.
The Respondent freely admits that he acquires domain names for the purposes of trading and in this case and even though the Complainant approached him to request transfer, it did so immediately after realizing that its domain names had expired which is hardly surprising considering that many of its 150,000 members were probably still trying to contact on its email address using the Disputed Domain Names. The Complainant offered USD1000 which is not unreasonable and would appear to have more than doubly compensated the Respondent for its out-of-pocket costs, however the Respondent held out for his stated price of USD28,000. Meanwhile, every time that the Complainant's members tried to log onto its original website they were deferred to a blatantly pornographic website.
In these circumstances, the Panel is prepared to infer that the Respondent acquired the Disputed Domain Names for the purpose of seeking a consideration vastly in excess of the documented out-of-pocket costs under paragraph 4 (b)(i) of the Policy.
As a consequence the Complaint succeeds under the third 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 Disputed Domain Names <workersunitedunion.com>, <workersunitedunion.net> and <workersunitedunion.org> be transferred to the Complainant.
Alistair Payne Sole Panelist
Dated: June 20, 2010
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