A three member UDRP panel found that “The Preferred Prepaid, Inc. d/b/a TPP represented by Clifford D. Hyra, of Virginia, engaged in Reverse Domain Name Hijacking (RDNH) in attempting to grab the three letter domain name TPP.com which was registered in 1994 by Thomson Reuters.
The three member panel of The Honourable Neil Anthony Brown QC, Clive Elliott, QC and Darryl C. Wilson found the facts of this case “present overwhelming evidence that Complainant has engaged in reverse domain name hijacking”.
Here are the highlights:
“Respondent Thomson Reuters Global Resources is a global leader in providing information for professionals in the fields of finance, law, tax and accounting, science and media. Respondent, formed as a result of a 2007 merger, employs approximately 55,000 people in more than 100 countries.
Prior to 2007 Thomson and Reuters were two separate companies owning a variety of assets including domain names. Thomson Professional Publishing was one of the companies on the Thomson side and the owner of the domain name tpp.com which it registered in 1994.
Respondent stopped hosting an active site for the domain name in 2002 and in 2015 decided to offer the domain name for sale to the public.
Complainant argues that Respondent’s domain name is identical / confusingly similar to the TPP mark as it incorporates the mark entirely and merely appends the gTLD “.com.”
The Complainant has NOT met this burden.
Respondent’s proofs demonstrate that it has had rights in the domain name since at least 1994, and its use has constituted a bona fide offering as the TPP mark was used as an acronym for “Thomson Professional Publishing.”
Complainant does not dispute the time of the domain name’s registration but instead seeks to have the Panel treat changes in Respondent’s business structure along with concomitant changes in its use of the domain name as a series of new transactions leading up to the most recent offer for public sale in August 2015.
The Panel refuses Complainant’s invitation to engage in such a charade to enable Complainant to claim that it’s trademark rights were not predated by Respondent’s registration and use of the disputed domain. Although Complainant should have known of the folly of its position through due diligence prior to filing this case, it is beyond question that Complainant was made fully aware of Respondent’s position through correspondence with Respondent.
It is patently obvious that Respondent has demonstrated it has been commonly known by the disputed domain name through its bona fide offerings as “Thomson Professional Publishing” or “TPP.”
Respondent also argues that the tpp.com domain name is common and generic/descriptive, and therefore, Complainant does not have an exclusive monopoly on the acronym, TPP, on the Internet. Complainant’s only argument regarding the nature of its mark is that it cannot be generic because it does not denote a genus.
This rather farcically myopic statement clearly illustrates a misstatement, misunderstanding and/or purposeful misdirection in regards to fundamental trademark law. Marks that are used to indicate a genus are indeed one type of mark deemed generic but those certainly are not the only type of generic marks.
Complainant fails to undertake the substantial, and necessary, burden of defending its three letter acronym as distinctive. In light of Respondent’s evidence of TPP’s common usage by others, Complainant does correctly state that such use does not automatically equate to a finding that its mark is generic. But again instead of indicating why its mark is distinctive Complainant favors circumvention, essentially stating that even if its mark is generic Respondent’s failure to actively use the disputed domain recently should outweigh that trait.
In light of the evidence provided by Respondent and Complainant’s failure to directly address Respondent’s assertions, the Panel finds it agrees with Respondent that Complainant’s mark is generic here, and thus Respondent through its prior use in association with Thomson Professional Publishing has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).
Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Respondent contends that Complainant is attempting to deprive Respondent, the rightful, registered holder of the domain name, of its rights to use the disputed domain name. Respondent has shown that it notified Complainant in writing that it had registered the domain name in 1994 in connection with its Thomson Professional Publishing business.
Further, Respondent argues that Complainant did not use its purported mark until May 2013, almost twenty (20) years after Respondent demonstrated rights in the TPP mark.
Additionally, the domain name consists of a generic three (3)-letter term that has legitimately been used by Respondent and many others prior to Complainant’s trademark registration.
Therefore Respondent’s registration and use cannot be said to constitute deliberate targeting of Complainant and its alleged rights.
Finally, after filing this case, Complainant inexplicably contacted Respondent with an offer to purchase the disputed domain name further raising confusion as to Complainant’s good faith and intentions regarding this proceeding. The Panel finds that Complainant clearly knew or should have known that it was unable to prove that Respondent lacked rights or legitimate interests in the domain name or that Respondent registered and is using the disputed domain name in bad faith.
The Panel finds the facts of this case present overwhelming evidence that Complainant has engaged in reverse domain name hijacking.
