201905.12

Thesun.com: “the sun shines for everyone”

Can trademark owners such as “The Sun” prohibit third parties from registering domain names that are identical to those trademarks? The issue raised is that of weakly distinctive trademarks because of the genericity of the word or words of which they are composed. Owners of such trademarks are inexorably exposed to stiff competition in the domain name market. This competition is most often legitimate insofar as it derives from the freedom to register a domain name, which itself derives from the freedom of trade or from freedom of expression. Basically, the problem is not that different from that of acronym trademarks (on this point, see Trademarks and domain names: it’s hard to be an acronym trademark!”, iptwins.com, 2019-04-24).

Recent UDRP decisions are illustrative of the problem that parties and panelists may face in the presence of a weak trademark. Remember that the panel’s mission is to render an adjudicatory decision. Although its powers are significantly limited (eg, it can not decide on the costs of the proceedings, or award damages to a party, or even issue injunctions), the fact remains that its decision is binding on the parties —in a limited way for reasons related to the lack of exclusivity that characterizes the UDRP mechanism— and that the resulting outcome inevitably leads to a change in the assets of both parties (decision of rejection or transfer) or of one of them (cancellation decision). Ordinarily, the abusive nature of the registration and use of the domain name leaves little room for doubt. More rarely, it is not the registration or use of the domain name that is abusive, but the UDRP complaint (eg,  WIPO, D2019-0084, News Group Newspapers Limited v. Privacydotlink Customer 2383026 / Blue Nova Inc., April 10, 2019, thesun.com, rejected). In the latter case, the panelists recognized the abusive nature of the proceedings, with the aim of dispossessing the respondent of a domain name that he legitimately holds (this is called “reverse domain name hijacking”). Since they cannot do more (if they go ultra petita, their decision might be canceled), the panelists have to be content, within the strict framework of the UDRP, with putting the unscrupulous complainant to the pillory.

The owner of the British tabloid “The Sun” was trying to obtain the transfer of the domain name thesun.com which had been registered in 2001 by a domain name investor. In 2016, the complainant approached the respondent anonymously to purchase the domain name for US$ 300,000. The respondent replied that it would not accept any offer below US$ 700,000. In 2018, the complainant offered US$ 600,000. This new offer was also rejected, the respondent estimating the value of the domain name at US$ 2.5 million. In desperation, News Group Newspapers Limited has initiated a UDRP procedure. The complainant was trying to tell the commission, consisting of three panelists, that the respondent had demanded a “ransom”.

The first question that arose was the one raised by the respondent as to the admissibility of the claim, eighteen years after the respondent had registered the domain name. In response, the panel relied on WIPO Jurisprudential Overview 3.0 4.1, para 4.17. It is established that there is no time bar period. Neither the UDRP Principles nor the UDRP Rules contain such provisions. However, it must be emphasized that time can erode the strength of the arguments, to the extent that the demonstration of the lack of legitimate interest and the existence of bad faith can be made more difficult. The commission says: “a complainant would need very good arguments why it has waited for 18 years to file a Complaint under the UDRP.”. In this case, there is hardly any argument likely to vigorously establish that a company could arrogate to itself an exclusive right to the word “sun” with or without the definite article “the”. The commission opined as follows:

The Complainant has not presented any compelling evidence for the alleged bad faith on the part of the Respondent. To the contrary, the Respondent’s evidence which is not contradicted by the Complainant establishes that the disputed domain name was registered because it referred “to the star that our planet orbits” in our solar system and that the Respondent believed no party could claim exclusive rights in the word ‘sun'”.

The Commission goes on to say that the tactic of anonymity in attempting to acquire the domain name demonstrated that the plaintiff was aware of the respondent’s legitimate interest and, consequently, of the weakness of its legal position. The argument does not carry conviction. Indeed, the choice of anonymity, whose main objective is to reduce the cost of the transaction, is especially recommended for domain names that are identical to generic words. By revealing its identity, the aspiring purchaser would reveal his own commercial aspirations, which would certainly provoke an increase in the price. However, in exceptional cases, the domain name and the proposed amount of money leaves only a few candidates, as in this case.

It remained to solve the question of the abuse of procedure (reverse domain name hijacking). The committee has stated in the following terms:

Against the factual background set forth above, it is apparent in the Panel’s view that the Complaint has been filed abusively, in an attempt to wrest the disputed domain name from the Respondent’s control after failed negotiations with the Respondent to acquire the disputed domain name for a reasonable market price.”

It must be admitted that the commission’s recognition of the abusive nature of the proceedings has little effect on the indelicate party. The aggrieved parties should be entitled to seek at least reimbursement of costs incurred before state courts (see also “Frivolous UDRP Complaints: Time to Claim Damages”, iptwins.com, 2018-08-03).

In terms of portfolio management, the weakness of such trademarks should be offset by a meticulous administration of domain names.

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