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NewsRepublic.com Saved In UDRP As Complainant Doesn’t Even Allege Bad Faith

Posted on the 02 May 2014 by Worldwide @thedomains

Mobile’s Republic (MR) of Bordeaux France, just lost its attempt to grab the domain name NewsRepublic.com in a UDRP

The domain holder was represented by ESQwire.com

MR was represented by in-house council.

The domain holder offered to sell the domain for $45,000 to MR who then filed this UDRP.

The domain was purchased by the domain holder on October 3, 2012 from a third party, and domain name was going to a parked page as it was by the previous owner

Basically the three member panel found that News Republic was a generic term and the it seems the counsel for the trademarkholder did a pretty poor job of representing the case not even alledging bad faith of the domain holder much less proving it.

Here are relevant the facts and findings by the three member panel:

The Complaint whose website is at mobilesrepublic.com/newsrepublic-fr/ developes “news applications for smartphones, tables and other mobile devices. One of our major application is ‘News Republic’, which trademark has already been registered in several countries.

‘News Republic’ has been registered in UK, USA, Benelux, Germany, Spain, Italy, France and is ongoing in Canada.

“The domain name is identical to the trademark ‘News Republic’ in which Mobile’s Republic has rights. We would like to create a website “www.newsrepublic.com” so as to enhance the communication for our application ‘News Republic’ and develop the usage of our application.”

“It seems that the domain name was registered for the purpose of selling it. There is apparently no website, no product . . .

And the respondent asked for at least 45,000 USD to sell us the domain name. Please refer to annex 2.”

Respondent says that it purchased the disputed domain name at auction, and that it owns hundreds of domain names.

“There is simply no basis for transferring the disputed domain name, (the ‘Disputed Domain’) to Complainant. Respondent has a legitimate interest in the Disputed Domain and there is absolutely no evidence of bad faith registration or use.

“In fact, Respondent purchased the Disputed Domain from its prior owner in October 2012, and it has continually used the Domain Name in good faith in connection with its common, descriptive meaning with links related to ‘news.’

“The Panel does not agree, however, that Respondent has no rights or legitimate interests in the disputed domain name”.

In respect of rights or legitimate interests, the Complaint alleges only that Respondent has not acquired trademark rights relating to the disputed domain name.

The Complaint is devoid of any other allegations or evidence respecting rights or legitimate interests.

The Panel accepts the Complaint’s uncontroverted allegation that Respondent has no trademark rights.

This does not, however, end the inquiry, since paragraph 4(c) of the Policy indicates that a respondent can establish rights or legitimate interests in several other ways.

On the record before it, the Panel is of the view that having failed to consider any of those other ways, the Complainant fails even to make a prima facie case showing that Respondent lacks rights or legitimate interests, as required under the Policy.

Even assuming, however, that the Panel were to accept that the Complaint establishes a prima facie case, the Panel concludes that Respondent’s evidence is sufficient to rebut the prima facie case, as elaborated below.

The Panel accepts generally that a respondent may have a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive term, even when the domain name is confusingly similar or identical to a complainant’s registered mark.

However, that domain name must have been registered because of its attraction as a dictionary word or combination of descriptive terms, and not because of any value corresponding to a trademark; the use of the domain name must also be consistent with its attraction as dictionary words or descriptive terms.

Respondent avers that it purchased the disputed domain name on October 3, 2012 from a party that used it for several years to route to a website displaying news articles and links to other news services.

Annexes to the pleadings show that Respondent displays a website using the disputed domain name in a manner consistent with its prior use (however, instead of posting news articles directly, Respondent’s site only displays links to other news services).

Turning to the descriptive meanings of the terms “news” and “republic,” it is obvious that the use of the website to refer to current events or news stories is consistent with a principal dictionary meaning of the word “news” in common use. Also, the term “republic” has commonly come to mean more than its technical political definition; “republic” has also come to refer to a specific gathering or body of persons, or a meeting place, when associated with another word. The prior and current uses of the website are in line with the descriptive meaning of the disputed domain name as a combination of dictionary terms, the words “news” and “republic.”

The Panel finds that the use of the website to gather in one place links to news sites is consistent with the ordinary meanings of the terms combined to form the disputed domain name. In the Panel’s view, these uses of the disputed domain name are bona fide offerings of goods or services under the Policy, confirming a right or legitimate interest on Respondent’s behalf.

Complainant makes no allegations respecting how well known its trademark is, although the Panel accepts that as of mid- to late 2010, the mark was registered in the USA and a handful of European markets. The Complaint provides no evidence from which it could be inferred that Respondent, in Korea, was even aware of the trademark.

As Respondent points out, the disputed domain name was already in use for a similar website even before Complainant registered its trademark and launched its product. Having also registered a number of other domain names that include the word “news,” the Panel finds that Respondent has established, by a preponderance of the evidence, that it chose the disputed domain name as a dictionary or descriptive term – not because of its trademark value.

The Panel concludes, therefore, that the Complaint fails to make a prima facie showing; even so, Respondent’s evidence is sufficient to rebut any showing that Respondent lacks rights or legitimate interests to the disputed domain name under the Policy, paragraph 4(c)(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”).

C. Registered and Used in Bad Faith

Having concluded that Respondent has rights or legitimate interests in the disputed domain name, it is not, strictly speaking, necessary to address the requirements of Policy, paragraph 4(a)(iii) in detail.

First, however, the Panel notes that Complainant erroneously avers that “There is apparently no website.” The Panel is presently able to view the website on-line.

Second, the Panel finds that Respondent acquired the disputed domain name to use in a fashion similar to the use made by the prior registrant. That use, as elaborated above, is consistent with the disputed domain name’s dictionary or common meanings and is bona fide under the Policy. It is hard to understand how Respondent’s purchase to continue making bona fide use of the disputed domain name can amount to bad faith registration.

There is no evidence that Respondent approached Complainant to propose a sale of the disputed domain name; in fact, Complainant solicited Respondent. In light of the conclusion that Respondent has rights or legitimate interests, the Panel finds that Respondent’s offer to sell the disputed domain name in response to Complainant’s unsolicited inquiry is of no significance under Policy paragraph 4(b)(i).

Also, the Complaint does not even address the issue of use in bad faith, an element required by the Policy.

In summary, the Panel finds that the Complaint also fails to establish bad faith under the Policy.

7. Decision

Nasser A. Khasawneh
Presiding Panelist

Assen Alexiev
Panelist

The Hon Neil Brown Q.C.
Panelist


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