SNCF Voyageurs, the French national railway company, operates a public transport service in France called TER (Transport express régional). The company filed a UDRP against the valuable TER.com domain name at the World Intellectual Property Organization. The decision was published today, and the UDRP was denied.
While it almost always seems that a complainant in a 3 letter .com UDRP is overreaching to nab a valuable asset via legal means rather than purchasing it, I thought the complainant may have had a puncher’s chance of winning this case. From my vantage point, the biggest issue for the domain registrant was the existence of pay per click (PPC) links related to the complainant. Here’s what the complainant reported:
“As of June 21, 2021, the disputed domain name resolved a parking page with the following pay-per-click (“PPC”) categories: “Train SNCF” (linking to a list of websites including “www.thetrainline.com”), “Amtrack Train Tickets” (linking to a list of websites including “www.mytrainpal.com”), “Tickets Rail” (linking to a list of websites including “www.omio.com”), “Parcel Service Tracking”, “Tankcar”, and “Amtrack Train Fares”.”
The domain registrant did not deny the existence of these PPC links. In fact, he coherently explained why he parked the domain name, how those links came to be shown, and why he felt they should not impact his ability to retain the domain name:
“Pending resale, and to recoup some of the cost, the Respondent decided to resolve the disputed domain name to an English-language landing page with PPC advertising links for a wide variety of products and services, generated by a third party service without any control from the Respondent. The Respondent was confident that this would be an innocuous step, given the generic nature of the disputed domain name and the advanced algorithms used by PPC services to screen out trade marks from PPC-generated links.
In any case, it is bad faith for the Complainant to claim that consumers who see the disputed domain name will necessarily assume that the PPC page is linked to the Complainant. Consumers are more sophisticated than they used to be. They will have seen PPC pages before and will understand that that they are not related to any business.
While the PPC page does include links to websites of the Complainant’s competitors, it also has links to unrelated subjects, some of which may be subject to the same type of claim as that made by the Complainant, namely that the Respondent is intentionally creating a likelihood of confusion with the Complainant’s trade mark. If so, even if the Respondent is acting in bad faith (which is denied), he is not actively targeting the Complainant’s trade mark.”
In denying the UDRP, the panelist, Adam Taylor, reviewed all aspects of the case and came away with the belief that the domain registrant did not register the domain name in bad faith. While considering the issue of PPC links related to the complainant, the panelist referenced the KIS.com decision, the SNF.com decision, the MNG.com decision and the TDS.com decision to reach his conclusion that this UDRP did not meet the required burden.
I thought this was a well written decision, and the panelist made the right call. I also think domain registrants, particularly those who hold valuable short acronym domain names, need to make a good effort to avoid infringing PPC links. While these are automatically generated by parking services and upstream providers, most companies allow keyword targeting to avoid infringing links. That said, no system is perfect so this is a risk that should be considered.
I would not have been surprised had the panelist ruled in favor of the complainant in this case. It would have been easy to see the PPC links and assume the worst of the domain registrant. I commend Mr. Taylor for giving a thorough review of the entire case. TER.com is a valuable domain name, and it seems clear to me that the complainant acquired it for its generic nature as a valuable three letter .com domain name.
the idea that any 3 letter domain name is registered in bad faith is bizarre.
Why do you think he dodged a bullet?
Several top domain holders have been placing their short domain names in PPC and in recent years they have defended successfully against UDRPs brought in on the same basis.
Even if there are links to a complainant’s business or his competitors, what difference this has from having a website related to a certain subject and have it populated by PPC that may also generate links to complainant’s business? Both cases are using a complaint’s mark and business or his competitors to make a blindfold profit.
Actually, there should be a discussion on how the responsibility has been shifted to rest solely on the domain holder as this not seem logical and fair. If the sale of domains and the making profit from publicity on domains are consider legitimate businesses then how can a domain holder be the only one accountable for what is publicize on his domains while other parties also profit from the business and when the domain holder has limited option on how he can tailor what is shown on that publicity (for instance, to block a keyword the domain holder must be aware of the keyword in the first place)
I think he dodged a bullet because had I seen the parked page with infringing links before reading the factual background of the case, I would have thought the complainant had a decent chance of winning. In addition, had the complainant won this case, I would not have been surprised. It’s not that I think the domain registrant should have lost, but I think it could have gone the other way had a different panelist presided.
If a case doesn’t look like an easy-ish defense for the domain investor from the outset, I tend to think it is dodging a bullet.
I think this was a much closer case than the ETC.com UDRP, for example: https://domaininvesting.com/created-in-1992-etc-com-is-subject-of-udrp/