WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Informa Business Information, Inc. v. Privacydotlink Customer 640040 / Domain Manager, Web D.G. Ltd.
Case No. D2017-1756
1. The Parties
The Complainant is Informa Business Information, Inc. of New York, United States of America ("United States"), represented by Stobbs IP Limited, United Kingdom of Great Britain and Northern Ireland ("United Kingdom").
The Respondent is Privacydotlink Customer 640040 of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom / Domain Manager, Web D.G. Ltd. of Hong Kong, China, represented by Wiley Rein LLP, United States.
2. The Domain Name and Registrar
The disputed domain name <pinksheet.com> is registered with Uniregistrar Corp (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 12, 2017. On September 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 15, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 19, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 22, 2017.
The Center verified that the Complaint together with the amended 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 September 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 18, 2017. On October 17, 2017, the Respondent requested for four days' automatic extension of the Response. The Response due date was therefore extended to October 22, 2017. The Response was filed with the Center on October 20, 2017.
The Center appointed Alistair Payne, David H. Bernstein and Tony Willoughby as panelists in this matter on November 20, 2017. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On November 21 2017, the Complainant made a supplemental filing and on November 22 2017, the Respondent submitted a supplemental filing to the Center. In each case the Center indicated that the parties' supplemental filings would be admitted at the discretion of the Panel.
The Panel requested under its Panel Order of November 28, 2017 that the parties make further submissions concerning the date of registration of the disputed domain name. The Panel Order stated as follows:
"The Panel wishes to clarify an issue arising from a discrepancy between the formal pleadings and the Parties' respective unsolicited filings. In the Amended Complaint the Complainant asserts that the disputed domain name was registered by the Respondent on February 24, 2016 and that this is supported by Annex 10. While the Panel remains unconvinced that Annex 10 does in fact support this assertion, the Respondent makes no denial in its Response. By contrast in the Complainant's unsolicited filing, the Complainant submits that the Respondent registered the disputed domain name in April 2002. By way of reply in its unsolicited filing, the Respondent refers twice to the Complainant's concession that the Respondent registered the disputed domain name in April 2002 but provides no confirmation or evidence of its actual date of registration.
The Panel invites each of the parties to submit an explanation concerning the discrepancy between their respective formal pleadings and unsolicited filings in relation to the date of registration of the disputed domain name by the Respondent and to confirm, with supporting evidence if available, the date on which the Respondent registered the disputed domain name.
The Parties should each file their submissions by December 5, 2017, one week from the date of this Panel Order. The Panel extends the decision due date to December 14, 2017."
Both parties filed responses to the Panel Order on December 5, 2017,
4. Factual Background
The Complainant is a global provider of business information services. One of its businesses is to provide regulatory information and insights under its brand name THE PINK SHEET to clients operating in the biopharma sector. The Complainant owns a United States trade mark registration 72069517 for its mark "THE PINK SHEET"1 which was registered in 1960. In 2013, the Complainant set up a website under this mark at the domain name "pharmamedtechbi.com".
The disputed domain name was first registered according to the WhoIs records in 2001. The Respondent, a domain name broker, subsequently acquired the disputed domain name and arranged for it to resolve to a place keeper page that invites offers for its acquisition.
5. Parties' Contentions
A. Complainant
The Complainant submits that it owns registered trade mark rights in the "THE PINK SHEET" mark and asserts that, as a consequence of use, its "THE PINK SHEET" mark has developed considerable goodwill and renown and is one of the leading brands providing regulatory information and commentary to companies in the biopharma space. As a consequence, says the Complainant, its "THE PINK SHEET" mark can have no other significance to the public than in relation to the Complainant's information service. In this regard, it provides the results of a Google search showing the Complainant's mark at the top of the search results. It says that the disputed domain name is clearly identical or confusingly similar to the Complainant's "THE PINK SHEET" mark.
The Complainant submits further that the Respondent is not commonly known by the disputed domain name, is not using it in relation to a bona fide offering of goods and services, and has no legitimate rights to it. It says that, considering the very substantial reputation and goodwill attaching to its "THE PINK SHEET" mark and the degree to which people recognize this mark in relation to the Complainant's information services business, it is unbelievable that the Respondent registered the mark other than to take advantage of the Complainant's rights. The Complainant also says that the fact that the disputed domain name has for many months resolved to a parking page at which there is an invitation to obtain a quote to purchase the disputed domain name only serves to reinforce the view that the Respondent has no legitimate rights or interests in the disputed domain name.
In summary, the Complainant submits that the Respondent's conduct in registering the disputed domain name and having it resolve to a holding page at which Internet visitors are invited to make offers for purchase of the disputed domain name, its use of a privacy service, and the Respondent's subsequent conduct in requesting the inflated price of USD 100,000 following the Complainant's enquiry, is evidence of the Respondent's bad faith under any of paragraph 4(b)(i), 4(b)(ii), 4(b) (iii) or 4(b)(iv) of the Policy.
In its response to the Panel Order, the Complainant asserts that, contrary to the statement made in its supplemental filing that the Respondent registered the disputed domain name in 2002, on further review of the matter, the earliest link which can be made between the Respondent and the disputed domain name is December 2, 2015 on the basis that records before this time use a different privacy service, and prior to that time, there were different registrants noted in the WhoIs record for the disputed domain name.
B. Respondent
The Respondent submits that these proceedings amount to an attempt by the Complainant to obtain control of a generic domain name because the Complainant is not prepared to pay the Respondent's asking price. The Respondent adds that the disputed domain name has never been used by the Respondent to target the Complainant and therefore this Complaint is a misuse of the Policy.
The Respondent submits that the Complainant has not provided any evidence that it owns a mark identical or confusingly similar to "THE PINK SHEET". It says the United States trade mark registration 0697138 for "THE PINK SHEET" is neither identical nor confusingly similar to the disputed domain name. Neither, says the Respondent, has the Complainant demonstrated that it owns common law rights in the disputed domain name. In view of the generic nature of the disputed domain name, the Respondent asserts that the Complainant has not established that there is any confusion between the disputed domain name and the Complainant's "THE PINK SHEET" trade mark registration and as a result the Respondent maintains that the Complaint should fail under the first element of the Policy.
As far as rights or legitimate interests are concerned, the Respondent maintains that it has the right to use a descriptive term such as "THE PINK SHEET" in relation to services other than for which it is used by the Complainant and it says that it is generic and refers to "a daily listing of over-the-counter stocks and their prices" or "any of a group of lightly traded over-the-counter stocks" and notes that the Merriam Webster dictionary defines it in this way. Further, the Respondent submits that the Complainant has not made out a case that the Respondent registered the disputed domain name to exploit the Complainant's rights and therefore says that it has failed to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
As far as bad faith is concerned, the Respondent says that the Complainant has not demonstrated that the Respondent's main purpose in registering the disputed domain name was to sell it to the Complainant at an excessive price or that the Respondent registered the disputed domain name with the Complainant in mind so as to take advantage of its trade mark rights, rather than for its generic or descriptive meaning. In these circumstances, the Respondent says that the fact that it offered to sell the disputed domain name to the Complainant for USD 100,000 or that it included a "for sale" page on its website is not indicative of bad faith, particularly where the disputed domain name is composed of generic elements. Neither, says the Respondent, does the use of a privacy service necessarily impute bad faith for the purposes of paragraph 4(b) (ii) of the Policy. In addition, it notes that the Complainant is not a competitor of the Respondent under paragraph 4(b) iii of the Policy. As far as paragraph 4(b) (iv) of the Policy is concerned, the Respondent submits that, in circumstances where there is no evidence of targeting by the Respondent of the Complainant's trade mark or of potential Internet user confusion, then this element cannot be made out. In summary, the Respondent says, it registered the disputed domain name for its generic or descriptive value and has not used it in a manner that trades off the Complainant's trade mark rights.
In its response to the Panel Order, the Respondent asserts that the disputed domain name has since December 15, 2002, been owned by a succession of entities in the same corporate family all under the control of Mr. Edgar Carillo. This, says the Respondent, means that changes in ownership between members of the group should not be treated as new registrations for the purposes of the Policy and therefore that the date of the Respondent's acquisition is December 15, 2002.
6. Discussion and Findings
The Panel has considered the parties' respective supplementary filings referred to above under Part 3. In neither case do they raise special circumstances or matters that could not have been addressed in the original filings such as might justify their admission to the record. Further, neither of the supplementary filings address new issues that change the Panel's view of the proceedings. Accordingly, in the ordinary course of events, the Panel would have declined to admit either of the supplementary filings. However, as indicated above, those filings were read by the Panel and led to the Panel Order. To that very limited extent they can be taken to have been admitted to this administrative proceeding.
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns a United States trade mark registration 72069517 for "THE PINK SHEET" that was registered in 1960. The disputed domain name contains the main distinctive element of this trade mark, namely the words "pink sheet" but omits the definite article and quotation marks. The Panel finds that these omissions are not significant and that therefore the disputed domain name is confusingly similar to the Complainant's trade mark registration. The Panel notes that the Complainant claimed that it owns common law rights in its mark THE PINK SHEET but, apart from the results of a Google search, provided no further evidence of goodwill or reputation in support this claim. In any event, as the Panel has found that the disputed domain name is confusingly similar to the Complainant's United States trade mark registration 72069517, the Complaint succeeds under this element of the Policy.
B. Rights or Legitimate Interests
In view of the Panel's findings concerning bad faith under part C below, it is unnecessary for the Panel to consider this element of the Policy further.
C. Registered and Used in Bad Faith
The onus is upon the Complainant to demonstrate that the Respondent registered the disputed domain name and has subsequently used it in bad faith. In the circumstances of this case, there are two key concerns for the Panel. Firstly, the date of registration of the disputed domain name for the purposes of this case, in respect of which the Panel sought further submissions from the parties in its Panel Order of November 28, 2017, and whether the Respondent would have most likely been aware of the Complainant's mark at this date. Secondly, whether there is evidence that the Complainant has been targeted by the Respondent, or not.
Registration Date and Respondent's Knowledge
The further submissions received from the parties in response to its Panel Order of November 28, 2017 are somewhat conflicting. Contrary to the Complainant's earlier concession, as referred to in the Panel Order that the disputed domain name was registered in 2002, it subsequently submitted that the history of ownership and the use of differing privacy services means that the earliest link between the Respondent and the disputed domain name appears to be December 2, 2015. On the other hand, the Respondent submits that the past entities that have owned the disputed domain name since 2002 were all controlled by the director of the current Respondent, Mr. Edgar Carillo and therefore intra company group transfers of the disputed domain name should not be treated as new registrations for the purposes of the Policy.
Upon the Panel's review of the evidence on the record, the Respondent is currently directed by Mr. Carillo; various other entities that have controlled the disputed domain name since 2002 appear to have also been directed by Mr. Carillo. Although the detailed history of domain name ownership is somewhat unclear, there is also evidence from the WhoIs records that, in 2002, Mr. Carillo was the administrative and technical contact for the disputed domain name, which at that time was owned by Video Images Productions, a company also controlled by Mr. Carillo. On this basis the Panel is prepared to infer that Mr. Carillo has been the "moving spirit" and controller of the disputed domain name since 2002 and that none of the transfers of the disputed domain name since that time between entities that he has directed should be treated as new registrations for the purposes of the Policy.
Although the Complainant's United States trade mark, "THE PINK SHEET" was registered in 1960 and, according to the Complainant, is one of the leading brands providing regulatory information and commentary to companies in the biopharma space, there is no evidence on the record to support the Complainant's submission that it was so well known by the date of the Respondent's acquisition of the disputed domain name in 2002 that the Respondent must have acquired it with knowledge of the Complainant's mark. While the Complainant provides the results of a Google search showing the Complainant's mark at the top of the search results, the Panel notes the Complainant's submission that it only developed its web presence using this mark in 2013.
The Complainant's mark, "THE PINK SHEET", is comprised of common English words. According to the Respondent and based on evidence that it provided, this expression is also generic as it is described by the Merriam Webster dictionary as referring to "a daily listing of over-the-counter stocks and their prices" or "any of a group of lightly traded over-the-counter stocks". In this light and noting that there is nothing in the record to suggest that the Complainant's mark was so well known in 2002 in relation to its biopharma regulatory information service that the Respondent must have been aware of the Complainant's trade mark and information service, the Panel finds that it is more likely than not that the Respondent was unaware of the Complainant's trade mark or information service when it acquired the disputed domain name in 2002.
Therefore, the Panel infers that the acquisition of the disputed domain name in 2002 was not made in bad faith under the Policy.
Has The Complainant Been Targeted By the Respondent?
There is nothing in the record to suggest that the Respondent, a domain name broker, competes in business with the Complainant, or that it has sought to trade off goodwill attaching to the Complainant's trade mark.
Since acquisition by the Respondent or its associated group entities, the disputed domain name appears to have resolved to a place keeper site that features an invitation to purchase the disputed domain name. As the Respondent is in the business of domain name broking, this is hardly surprising. Neither is the fact that the Respondent requested a purchase price of USD 100,000 following the Complainant's unsolicited enquiry of it in August 2017. As in any market for commodities, domain name broking is about matching supply with demand; in the absence of any indicia of bad faith, there is nothing wrong per se with what the Complainant characterises as an "excessive offer."
In summary the Panel finds that the Respondent has not targeted the Complainant and that the Complainant has failed to demonstrate that the Respondent has registered and used the disputed domain name in bad faith. Accordingly, the Complaint fails under this element of the Policy.
7. Reverse Domain Name Hijacking
The Respondent submitted that this Complaint amounts to a case of reverse domain name hijacking. Although the Complainant maintains that the true date of registration of the disputed domain name was unclear (and the Panel notes the Complainant's change of position in this regard), there is no evidence on the record that the Respondent set out to target the Complainant. With the benefit of experienced intellectual property advisors, the Complainant should have been aware that, in these circumstances, its Complaint could not succeed. However and presumably in an effort to acquire the disputed domain name with minimal cost, it proceeded with the claim regardless. This is an abuse of the Policy and the Panel therefore finds this to be a case of reverse domain name hijacking.
8. Decision
For the foregoing reasons, the Complaint is denied.
Alistair Payne
Presiding Panelist
David H. Bernstein
Panelist
Tony Willoughby
Panelist
Date: December 11, 2017
1 Quotation marks appear around the trademark in the original trademark registration.
