People and companies register domain names all the time. Sometimes you know exactly why you’re registering a domain name and you have very specific plans for it. Other times you don’t. However it’s a pretty safe bet that if somebody registers a domain that is an exact or very close match to their company name that they’re going to use it at some point. It’s also very clear to most that there’s no obligation to “use” a domain name immediately.
What exactly is “use” in the context of a domain anyway? In most cases I hear people stating categorically that a domain isn’t being used simply because they don’t see a website when they go to “www.domain.TLD”. However a LOT of people (and organisations) don’t use their domains for websites but for other services including, surprise, surprise, email.
As a silly little example check out log.ie:
http://log.ie/ – or http://www.log.ie will take you to a parking page
BUT
If you go to https://b.log.ie you’ll find an active website.
Why do I mention all of this? The puma.ie dispute which was recently decided troubles me deeply. So there’s a few things here.
The term “puma” is a dictionary term and is also used as part of multiple company names in Ireland and elsewhere. Yes there is a well known brand of sporting goods called Puma, but they aren’t the only “show in town” as it were.
Back in 2015 the limited company Puma Transport Ireland Ltd was incorporated and registered with the Irish companies office. In April 2016 the domain name puma.ie was registered by that company and at some point after that a rudimentary holder page was put online.
Whois output:
whois puma.ie
% Rights restricted by copyright; http://iedr.ie/index.php/mnudomregs/mnudnssearch/96
% Do not remove this notice
Domain: puma.ie
Domain Holder: PUMA TRANSPORT IRELAND LIMITED
Admin-c: AWJ804-IEDR
Tech-c: ABG704-IEDR
Account Name: Letshost.ie
Registrar Abuse Contact: Service not supported currently
Registration Date: 04-April-2016
Renewal Date: 04-April-2020
Holder-type: NonBillable
Locked status: NO
Renewal status: Active
In-zone: 1
Nserver: ns13.dnsireland.com
Nserver: ns14.dnsireland.com Now if you have a few minutes to spare why not read the WIPO decision on this case. There are a few elements from the complaint and the decision that give me goosebumps, but not in a good way!
The domain name registrant did not respond to the complaint, which is seen to be almost an admission of wrongdoing – emphasis added:
While the Registrant’s website is somewhat basic and has always been in a state of construction, it was open to the Registrant to come forward and argue that it nonetheless constituted demonstrable good faith preparations to use the disputed domain name. Or the Registrant might have provided evidence of other such preparations. But the Registrant has not appeared in this proceeding to make such a case, notwithstanding the Complainant’s assertion that the disputed domain name was not registered for the purposes of a genuine business.
Furthermore, the fact that the website has been under construction for such a long period – some three years – without explanation is itself an indicator that the website is not a genuine precursor to a good faith offering of goods or services.
For the above reasons, the Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Registrant.
Or how about this gem:
Amongst other things, the Panel would have wanted to know why the Registrant selected a domain name consisting of the word “puma” alone, i.e. without adding the term “transport”.
How about the fact that:
- the domain was available to register
- it is shorter
- it is more memorable
Yes in terms of trademark disputes they might have had to defend it, but the fact that the Irish Companies office had no issue with the company name being registered was not even taken into consideration.
And this conclusion is truly bizarre:
the Panel concludes that, on balance, the Registrant registered the disputed domain name in order to target the Complainant’s mark in an unfair manner, most likely with a view to selling the disputed domain name to the Complainant for a substantial sum
Where is the evidence of this? While it is possible that somebody would register the domain simply to try and sell it, the likelihood that they would go to the trouble of registering a limited company and file annual accounts for more than 3 years AND NOT attempt to sell the domain name to Puma seems highly unlikely.
It is a terrible pity that the registrant did not file a response, but even with a response the way that this was argued both by the complainant and the panelist should be disturbing to a lot of dispute watchers.
One of the difficulties in evaluating UDRP decisions is that we do not have access to the actual filings and evidence, but must rely on the panel’s own description of what the filings were. Of course, it would be unusual for a panelist to characterize the evidence in a way that does not support the outcome decided by the panel. It’s like the time I was out with a friend looking for a place to eat and he said “This place has good food.” I asked him how he knew that, and he said “It says so right on the sign in the window.”
Here, there is the obvious problem that the domain name is registered to what presents as a business named “Puma” and the respondent is “Stephen Connell, Puma Transport Ireland Limited”. So, prima facie, it is a case of the respondent being known as the domain name. There have been cases of this sort in which the respondent presents as having a name corresponding to the domain name, and the panel has pointed out that the complainant presented no evidence or persuasive argument to the effect that the respondent was anything other than what the respondent presented to be.
Here, the complainant does seem to have made some kind of effort in that direction. The decision intriguingly states:
“Amongst other things, the Complainant has questioned the validity of the contact details used on the website, pointing out that the telephone number relates to an entirely different kind of business. The Complainant has also claimed that the Registrant failed to follow through on a promise to provide a written response to the Complainant’s pre-action communication to the Registrant (which has not been provided to the Panel).”
It would be nice to know what those “other things” may have included, beyond what may perhaps have been a stale telephone number.
There is a split among panelists as to how much “digging” a panelist should do in these situations. Personally, given that there is sometimes a failure of notice, I wouldn’t think it to be out of line for a panelist to consider whether there was a lack of notice and perhaps make an appropriate effort of some kind. However, the last sentence quoted above shows that the respondent at least had some reason to believe a dispute was brewing, since it is suggested that the respondent did reply, with a promise to reply, to a pre-filing notice of some kind.
Aside from perhaps looking to see whether the respondent company was actually registered, Google maps and streetview can be surprisingly useful tools in these sorts of situations. Looking at the address in question, there does seem to be at least one other trucking company in that business park, and other businesses (such as the one in “unit 4” as opposed to “unit 4a”) appear to be labeled in Google maps, at least, but not this one. Clearly the address exists, but one still can’t confirm that the business is located there. Do you go a step further and ring up the folks in Unit 4 to ask them what they might know about a Unit 4a? Reasonable minds could differ on how far is “enough”.
It’s not entirely unheard-of for a party to take various steps to construct a facade of legitimacy, but this doesn’t look much like that. The situation looks most as if the name may have simply fallen into disuse, and that the registrant simply didn’t feel like bothering with it. Taking the other clue here, the personal name now enshrined on the never-forgetting GDPR-exempt website of a treaty organization with diplomatic immunity, there does seem to be a person by that name who is a lorry driver for what appears to be a family run transport business. So, there again is something that is readily findable which suggests that the person named in the complaint may very well be connected with a transport business.
Overall, some poking around suggests there was, in all probability, a legitimate reason for the domain name registration – as if it were the burden of the respondent to prove that, or if it were the responsibility of the panelist to do some independent digging beyond whatever unidentified “other things” were done by the complainant. While some domain registrants do engage in somewhat elaborate ruses to construct a facade of legitimacy, this one doesn’t strike me that way. But it is difficult to evaluate the decision without access to the “other things” provided by the complainant, or precisely what was the tenor or contents of the pre-dispute correspondence, which appear to have been two of the factors which persuaded the panel otherwise.