UDRP for gtms.com denied and RDNH found – Complaint used as the last resort to acquire the domain

Complainant filed for a UDRP for the domain gtms.com because Respondent didn’t reply to their interest of purchasing the domain name. The domain was registered 8 years before Complainant registered its “gtms” trademark. Complainant used the UDRP as the last resort to acquire the domain. The Reverse Domain Name Hijacking ruling came naturally.

Complainant was [GTMS] Global Transmission Media Solutions from Utah, USA. Respondent was Renny Thomas, represented by Zak Muscovitch of The Muscovitch Law Firm, Canada.

Complainant submitted the Complaint to the National Arbitration Forum on October 4, 2012. The National Arbitration Forum appointed Francine Tan as Panelist.

Respondent registered the disputed domain name, gtms.com, in 1999.

Complainant has used the trademark GTMS since 2006. Complainant owns the United States Federal Trademark Reg. No. 3,351,273 that was registered in 2007. That is 8 years after the domain name registration.

The Complainant after accusing the Respondent of causing loss of revenue and not replying to their expression of interest of purchasing the domain name made a somewhat strange “excuse” as to why it started these proceedings:

There was no response from Respondent. As the new lapse date for the disputed domain name is December 2012, Complainant felt that it was necessary to act now to secure its interests.

So according to Complainant’s rationale when someone doesn’t reply to your emails to buy a domain you should file for a UDRP. And especially if it approaches the expiration date then Complaint should hurry and hijack the domain before it is renewed. They had the Reverse Domain Name Hijacking (RDNH) coming for a long time.

Respondent said:

Respondent is a 51-year old Canadian citizen who registered the disputed domain name in 1999 for the reason that he was interested in starting his own business in financial planning and investment areas, particularly for immigrants to Canada from India, given his own Indian heritage and successful experience as an immigrant to Canada. He conceived in 1999 the unregistered business name, Global Trade Management Services, from which “GTMS” is derived. […]

In 2003, he decided to get more serious about this and printed business cards for Global Trade Management Services, reflecting <gtms.com> as the web address.

The Panel found in favor of the Complainant in the first element of the UDRP: Identical and/or Confusingly Similar. Panel found that the disputed domain name is identical to the Complainant’s trademark.

The Panel found in favor of the Respondent in the 2nd element of the UDRP:

Whilst Complainant has made various statements towards supporting its claim that Respondent has no rights or legitimate interests in respect of the disputed domain name, the Panel is of the view that Respondent has provided admissible and relevant evidence which demonstrates that he has a legitimate right and interest therein, namely the evidence submitted showing the use of the dispute domain name for e-mail purposes and the printing of his business cards for the Global Trade Management Services business in 2003. The Panel agrees that the use of a domain name for e-mail is a legitimate interest within the meaning of the Policy (see Tesla Industries, Inc. v. Stu Grossman d/b/a SG Consulting¸ FA 547889 (Nat. Arb. Forum Dec. 5, 2005). In arriving at its conclusion, the Panel has taken into consideration the fact that the disputed domain name consists of a combination of letters which is generic and which any number of other persons could choose to adopt and register as a domain name. In view of this, there is no reason why anyone should be precluded from registering a domain name such as this one on a “first come, first served” basis.

The Panel found that Complainant failed to establish that the disputed domain name was registered in bad faith. The Panel agreed that there was no way the disputed domain name could be said to have been registered in bad faith when it was registered so many years before Complainant was incorporated as a company and before it commenced use of the GTMS design mark.

Since Complainant failed to establish the first requirement under paragraph 4(a)(iii), namely the registration of the disputed domain name in bad faith, there was no need for the Panel to consider the issue of use in bad faith.

The Panel concluded that the complaint shall be DENIED.

Reverse Domain Name Hijacking (RDNH)

The Panel made a finding, pursuant to Paragraph 15(e) of the Rules, that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceedings.

This is what the Panel said:

What is rather clear from the contents of the Complaint is that the main motivation for the commencement of these administrative proceedings stems from a frustration on the part of Complainant in not having been able to obtain the domain name <gtms.com> which corresponds to the initials of its company name and the letters in the GTMS design mark, its attempts to contact Respondent to negotiate a transfer of the domain name having failed. Complainant was clearly aware that the disputed domain name had been registered since December 1999 and should have realised from that fact alone that it had no basis whatsoever  for alleging bad faith registration on the part of Respondent, which is one of the essential elements required by the Policy. To use the UDRP administrative proceeding as Complainant’s last resort to “[securing the domain name] for [its] branding to match with [its] trademark” and because of its concern “that a growing number of [its] potential customers will be unable to connect with [them]” constitutes an abuse of the proceedings. As was stated in the case of ELK Accessories Pty Ltd v. Parnaz Farahani Elk.com, D2012-0455 (WIPO May 15, 2012).

“Initiating domain name dispute resolution proceedings necessarily involves putting the parties to a considerable expenditure of time and in many cases cost and the Policy must not be used unless the complainant has a reasonable and credible belief it is entitled to succeed. In particular, proceedings must not be commenced in an unjustifiable attempt to pressure a domain name owner into releasing a legitimately held domain name predating any trademark rights held by the complainant, see Sustainable Forestry Management Limited v. SFM.com and James M. van Johns “Infa dot Net” Web Services,WIPO Case No. D2002-0535.

[…]

Finally, it should also be said that it was the Complainant who, on no evidence at all, accused the Respondent of acting in bad faith. That, itself, is an act of bad faith and is part of the reason why the Panel has made the finding of Reverse Domain Name Hijacking. Such allegations should not be made lightly or without cogent evidence to support them and certainly not where, after obtaining instructions, it must have been apparent to the Complainant that no such allegation could properly be made against the Respondent.”

This was a Complaint that should never have been filed. Complainant knew that the disputed domain name was registered at least around seven years before it was incorporated and before it acquired registration rights in the GTMS design mark.