UDRP for Gooru.com denied but no RDNH – Owner declined selling domain registered 13 years before trademark

*UDRP Panelist Gabriela Kennedy is also working for a law firm and often submits UDRP complaints on behalf of her customers. Her fellow Panelists decide on her cases.*

The UDRP complaint for the domain names gooru.biz, gooru.com, gooru.net and gooru.org was denied but Panelist *Gabriela Kennedy* didn’t make a Reverse Domain Name Hijacking finding and gave no explanation about her decision.

She only said:
“The Panel, on the balance, finds that the Complaint was not made in bad faith as an attempt at Reverse Domain Name Hijacking.”

The “on the balance” part was her full discussion as to why this wasn’t a Reverse Domain Name Hijacking. And that was clearly a contradiction of what she said earlier on the discussion of the 2nd element of the UDRP.

The Complainant is a non-profit organization established in 2011, and based in the United States of America, that operates a free search engine via its domain name <goorulearning.org>, for teachers and students to search for learning materials, such as multimedia resources, digital textbooks, videos, games and quizzes (“Complainant’s Website”). The Complainant holds a trade mark registration for GOORU in the United States of America since March 27 2012.

The Respondent is based in Italy. The Disputed Domain Names were registered as follows: <gooru.com> on December 9, 1999 and <gooru.biz>, <gooru.net> and <gooru.org> respectively on February 21, 2003. The Disputed Domain Names <gooru.org> and <gooru.biz> currently resolve to parking pages that includes sponsored links, and <gooru.com> and <gooru.net> are currently inactive and resolve to a website that states that the site is under construction.

This is what the Panelist said:
“In addition, the Complainant has provided copies of email correspondences with the Respondent dated January 18, 2011 and February 22, 2013, whereby the Complainant had asked the Respondent if he was interested in transferring the Disputed Domain Names to the Complainant. The Panel notes that the Respondent informed the Complainant that he was unwilling to transfer the Disputed Domain Names to the Complainant, as he intended to use the Disputed Domain Names for his own business projects. Further, if the intent of the Respondent was to make a profit from the Disputed Domain Names, the Panel believes that it would have been logical for the Respondent to try to negotiate with the Complainant in order to sell the Disputed Domain Names to the Complainant for profit. Contrary to this, the email correspondence provided by the Complainant shows that the Respondent had no desire to enter such negotiations. The Panel finds that this further supports the Respondent’s contention that he is making preparations to use the Disputed Domain Names for a bona fide offering of services, rather than to misleadingly divert consumers for commercial gain.

Lastly, the Panel notes that the Complainant first approached the Respondent in January 18, 2011, around the time that the Complainant was first established; over a year before it registered its trade mark GOORU in the United States of America, and 12 years after the first Disputed Domain Name was registered. The Complainant had therefore been aware of and knew that the Respondent was unwilling to transfer the Disputed Domain Names, and intended to use the Disputed Domain Names for its own business purposes, before the Complainant registered and began using the GOORU mark.

For the foregoing reasons, the Complaint was denied but Gabriela Kennedy refused the Reverse Domain Name Hijacking finding.

This was a clear cut Reverse Domain Name Hijacking attempt but Panelist Gabriela Kennedy has never made a RDNH finding and she is not about to start now. More on this on another post.

*UDRP Panelist Gabriela Kennedy is also working for a law firm and often submits UDRP complaints on behalf of her customers. Her fellow Panelists decide on her cases.*

Aged domain names: a change in ownership is considered as a new registration in UDRP

There are a lot of people that buy aged domain names. By aged I mean domains that have an old registration date. You can buy these domains either directly from the previous owner or in expiring domain name auctions. Although you can buy some pretty good keyword domain names there is no UDRP advantage in buying these aged domains if a trademark already exists before you acquire them. A change in domain name ownership is considered as a new registration as far as UDRP is concerned. If a trademark was registered between the initial registration and your acquisition date then the domain name is not treated a being registered before the trademark registration in a potential UDRP. Only the previous owner could have used this as a UDRP argument. Of course there are other aspects to a UDRP that most a mentioned below. Just remember that every UDRP case is different.

The Uniform Domain-Name Dispute-Resolution Policy (UDRP) may not be a law, as it’s name suggests. It is a policy. But nevertheless it is governed by a set or rules, it is not merely dependened on prior decisions. Complainants, Respondents and Panelists use past decisions to support their arguments but there are usually decisions that support both sides of an argument. There is no precedent in UDRP.

Of course on most of these issues, consensus or clear majority views have developed. For example the WIPO Arbitration and Mediation Center has produced its informal overview of panel positions on key procedural and substantial issues. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0″) was published in 2011.

That being said there is one rule in UDRP that has not been questioned by any Panelist and/or any serious Respondent: “A change in ownership is considered as a new registration as far as UDRP is concerned.”

This is clearly mentioned in 3.7 Question of the WIPO Overview:
While the transfer of a domain name to a third party does amount to a new registration, [...].”

This rule is only relevant when trying to prove or not the 3rd element of the UDRP and specifically if the Respondent registered a domain name in bad faith. This is only half of the 3rd element of the UDRP. (“the domain name has been registered and is being used in bad faith”)

If the registration date or the date of acquisition (whichever comes later) of a domain name is prior to the date of the trademark registration then it is clear that the domain was not registered in bad faith.

This rule does not work the other way around. It does NOT mean that if a registration or acquisition date postdates a trademark then the registration was done in bad faith. In this case other factors are then taken into account such as the location of the Respondent as related to the trademark registration region etc. And again this only relates to the first half of the 3rd element of the UDRP.

So if the registration of a domain name predates the date of a trademark registration then the UDRP complaint should be denied without going into much consideration of the other parts of the UDRP policy. And if many such cases reverse domain name hijacking (RDNH) has been found.

The only exception to the rule above is if you transfer the domain to maybe some other member of your immediate family (or in a case of death) or if a company changes names or is acquired as a whole by another company etc.

I also have to point that if a domain name is transferred to a new owner with a preexisting business and/or trademark then this case is generally not treated as an individual domain name transfer would.

So there is no UDRP advantage in buying aged domains if a trademark already exists. This is something that all registrants should be aware of. Of course as I always say the most important argument you can have in order to defend a domain name in a UDRP is usage. Use the domain name avoiding any new or old trademarks and you will be mostly safe.

I wrote this post because there is some wrong notion that this rule “While the transfer of a domain name to a third party does amount to a new registration, [...].” is adopted by a small percentage of panelists. No, this is a rule followed by everybody involved in the UDRP process and has nothing to with legitimate use or bad faith usage. These are examined separately.

Finally, I have to say that I thought of providing some links to decisions that have followed this rule but I saw no point in that as I was not able to find a single case advocating the opposite. If anyone wants a few links just leave a comment.

WIPO stats for Q1 2013: UDRP complaints down, average number of domains per case up, .com domains 62% of cases

I checked the WIPO stats for the 1st quarter of 2013 and found that UDRP complaints have slowed down while the average number of domain names per case has increased.

Usually the first 2 quartes of the year have the most UDRP complaints filed but Q1 2013 had the lowest number of complaints of all 2012 quarters.

2012 2013
Q1 763 651
Q2 762
Q3 658
Q4 701

2013 started with a lot of complaints but it gradually ended up to one of the lowest numbers for March ever.

2012 2013
January 192 251
February 271 216
March 300 184

The average number of domain names per case has gone up significantly reaching more than 3 domain names per case in 2013:

Year Average Number of Domain Names per Case
1999 1.00
2000 2.02
2001 1.58
2002 1.69
2003 1.61
2004 2.21
2005 2.27
2006 1.54
2007 1.64
2008 1.70
2009 2.22
2010 1.62
2011 1.73
2012 1.76
2013 3.06

In 2012 75% of the domains were .com while in 2013 the number has dropped to 62%. .Net, .org and .info have seen great increase:

2013
.com    1417    61.64%
.net    327    14.22%
.org    269    11.70%
.info    228    9.92%

2012
.com    3475    74.84%
.net    487    10.49%
.org    322    6.94%
.info    264    5.69%

There has not been a single .xxx UDRP complaint in WIPO in 2013 after 16 complaints in 2012.

In ccTLDs .nl lost first place to .co and that shows the growing popularity of the .co.

2013
ccTLDs    Number of Domain Names
.co    21
.nl    20
.es    15
.au    13
.mx    11

2012
ccTLDs    Number of Domain Names
.nl    103
.au    55
.es    53
.ch    53
.co    47

While the percentage of the denied complaints is pretty much stable, the percentage of cancelled domains has decreased even more:

2013
Outcome Number of Cases Percentage
Cancellation 2 0.88%
Transfer 206 90.35%
Complaint denied 20 8.77%
2012
Outcome Number of Cases Percentage
Cancellation 64 2.84%
Transfer 1985 88.07%
Complaint denied 205 9.09%

The WIPO Arbitration and Mediation Center published its 2012 review on “Internet Domain Name Dispute Resolution”. In 2012, trademark holders filed a record 2,884 cybersquatting cases covering 5,084 Internet domain names with the WIPO Center under procedures based on the Uniform Domain Name Dispute Resolution Policy (UDRP). This represents an increase of 4.5% over the record established in 2011.

Procter & Gamble buys the domain Swash.com from Marchex after found guilty of RDNH

Archeo (Marchex) announced its Q1 domain sales today with $1.4 million from 50 domains sold for an average $27,233. Archeo published the top 20 sales of the quarter and the number 1 spot was taken by Swash.com that was bought by Procter & Gamble.

Procter & Gamble was found guilty of Reverse Domain Name Hijacking as Marchex’s Swash.com was saved in UDRP. Procter & Gamble lied to the WIPO Panel and tried to cheat it’s way into stealing the domain name  Swash.com but the company was outed by the Complainant and the 3 member Panel that denied the complaint.

Procter & Gamble tried to steal the domain name by paying only 5-10K USD in UDRP and lawyer fees but that backfired. The company probably ended up paying a lot more than if it hadn’t filed for that UDRP complaint. I am sure that Marchex understood how desperate Procter & Gamble was for the domain and doubled its price and of course added all the UDRP response cost. Procter & Gamble probably paid mid 6 figures for the domain Swash.com. Lesson learned.

Avaya Inc. found guilty of Reverse Domain Name Hijacking and harassing the domain name owner

Avaya Inc., a multinational company with over 17,500 employees worldwide, was found guilty of Reverse Domain Name Hijacking by a 3-member Panel at the National Arbitration Forum. I represented the Respondent, Avayo Electronics, in these proceedings.

Avaya Inc. tried to steal the domain name avayo.net (notice the spelling) from its rightful owners for the past 8 years Avayo Electronics from Canada. The Complainant, Avaya Inc., was represented by Joseph Englander of Shutts & Bowen LLP, Florida, USA. 

The Complainant should have known that it could never prove that Respondent was not commonly known by the disputed domain name, because the Complainant in fact knew that Respondent had used the domain name in furtherance of a bona fide offering of goods and services. Not only did the Complainant fail to withdraw its Complaint when it was obvious that it could not succeed, it actually pressed its case by submitting Additional Submissions that did not address the pertinent facts, thus harassing the Respondent. Avaya Inc. had another 2 complaints denied in the past again for domains that were used in good faith by its owners for many years. (see below)

The Respondent, Avayo Electronics, is a business whose name corresponds to the disputed domain name. That business is a legitimate business which does not compete directly with the Complainant, Avaya Inc. When it filed its Complaint, the Complainant was well aware of the fact that the Respondent is engaged in a legitimate business which does not compete directly with the Complainant. When it filed its Additional Submission, the Complainant was well aware of the fact that the disputed domain name corresponds to the name of the Respondent’s business.

Avayo Electronics provided evidence to prove, that it has been commonly known by the disputed domain name for eight years. That disputed domain name corresponds to the Respondent’s company name and a UAE registered trademark. The Complainant did NOT contest this. On the contrary, the Complainant admitted that the Respondent is a manufacturer of data and telecommunication products which do not compete with the Complainant’s own products. Thus the Panel found that the Respondent  adequately shown that it is commonly known as “AVAYO” in its business name.

The Panel found that it was clear from the record that the Complainant knew that the Respondent was engaged in a legitimate business. When it filed the Complaint, the Complainant could plausibly have been unaware of the fact that the disputed domain name corresponds to the Respondent’s business name. However, the Complainant could not have ignored this after the Response was filed. Not only did the Complainant fail to withdraw its Complaint when it was obvious that it could not succeed, it actually pressed its case by submitting Additional Submissions that did not address the pertinent facts, thus harassing the Respondent.  Further, the Complainant merely asserted that the Respondent registered and used the disputed domain name in bad faith, without providing any evidence to support its assertions.

The Panel then went on to say: “As the Respondent correctly notes, the Complainant should have known that it could never prove that Respondent was not commonly known by the disputed domain name, because it was well aware of the Respondent’s business activities. The Respondent also correctly notes that the Complainant in fact knew that Respondent had used the domain name in furtherance of a bona fide offering of goods and services. And the Respondent correctly notes that the Complainant has previously filed domain name cases, and lost in two of such cases when it brought proceedings against legitimate businesses such as the Respondent.  See Avaya Inc. v. Sudhir Sazena, FA 1229266 (Nat. Arb. Forum Dec. 9, 2008); and Avaya Inc. v. Moayyad Hamad, FA 1456063 (Nat. Arb. Forum Sept. 14, 2012). “

Consequently, the Panel found that the Complaint was submitted in an attempt to hijack Respondent’s domain name.

The 3 member Panel cites a lot of very interesting cases in its decision that can be used in other Reverse Domain Name Hijacking cases. Here are all the details of the decision FA1302001487607:

Pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Paul M. DeCicco and The Honourable Neil Anthony Brown QC as Panelists, Richard Hill as Presiding Panelist.

The Reverse Domain Name Hijacking ruling was coming even from the “Findings” section of the decision where the Panel said:
“The Respondent is a business whose name corresponds to the disputed domain name.  That business is a legitimate business which does not compete directly with the Complainant.

When it filed its Complaint, the Complainant was well aware of the fact that the Respondent is engaged in a legitimate business which does not compete directly with the Complainant.  When it filed its Additional Submission, the Complainant was well aware of the fact that the disputed domain name corresponds to the name of the Respondent’s business.”

Identical and/or Confusingly Similar

For the reasons set forth below, the Panel holds that it need not analyse this element of the Policy.

Rights or Legitimate Interests

The Respondent contends, and provides evidence to prove, that it has been commonly known by the disputed domain name for eight years.  That disputed domain name corresponds to the Respondent’s company name and a UAE registered trademark.  The Complainant does not contest this.  On the contrary, the Complainant admits that the Respondent is a manufacturer of data and telecommunication products which do not compete with the Complainant’s own products.  Thus the Panel holds that the Respondent has adequately shown that it is commonly known as “AVAYO” in its business name.

[...]

Since the Respondent prevails regarding this element of the Policy, the Panel need not consider the other elements of the Policy.

Registration and Use in Bad Faith

As already noted, the element analysed above is dispositive, [...] Nevertheless, the Panel finds that the Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii).

Reverse Domain Name Hijacking

Paragraph 1 of the Rules defines Reverse Domain Name Hijacking:

Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.

The Respondent invokes this provision when it requests the Panel to find that the Complainant is using the Policy in a bad faith attempt to deprive a registered domain name holder of a domain name.

The general conditions for a finding of bad faith on the part of the Complainant are well stated in Smart Design LLC v. Carolyn Hughes, D2000-0993 (WIPO, October 18, 2000):

Clearly, the launching of an unjustifiable Complaint with malice aforethought qualifies, as would the pursuit of a Complaint after the Complainant knew it to be insupportable.

These conditions are confirmed in Goldline International, Inc. v. Gold Line, D2000-1151 (WIPO, January 4, 2001) and Sydney Opera House Trust v. Trilynx Pty. Limited, D2000-1224 (WIPO, October 31, 2000) (where the condition is stated as “the respondent must show knowledge on the part of the complainant of the respondent’s right or legitimate interest in the disputed domain name and evidence of harassment or similar conduct by the complainant in the face of such knowledge”), which in turn cites Plan Express Inc. v. Plan Express, D2000-0565 (WIPO, July 17, 2000).

It is clear from the record that the Complainant knew that the Respondent is engaged in a legitimate business.  When it filed the Complaint, the Complainant could plausibly have been unaware of the fact that the disputed domain name corresponds to the Respondent’s business name.  However, the Complainant could not have ignored this after the Response was filed.

Not only did the Complainant fail to withdraw its Complaint when it was obvious that it could not succeed, it actually pressed its case by submitting Additional Submissions that did not address the pertinent facts, thus harassing the Respondent.  Further, the Complainant merely asserts that the Respondent registered and used the disputed domain name in bad faith, without providing any evidence to support its assertions.

As the Respondent correctly notes, the Complainant should have known that it could never prove that Respondent was not commonly known by the disputed domain name, because it was well aware of the Respondent’s business activities.  The Respondent also correctly notes that the Complainant in fact knew that Respondent had used the domain name in furtherance of a bona fide offering of goods and services.  And the Respondent correctly notes that the Complainant has previously filed domain name cases, and lost in two of such cases when it brought proceedings against legitimate businesses such as the Respondent.  See Avaya Inc. v. Sudhir Sazena, FA 1229266 (Nat. Arb. Forum Dec. 9, 2008); and Avaya Inc. v. Moayyad Hamad, FA 1456063 (Nat. Arb. Forum Sept. 14, 2012).

Consequently, the Panel finds that the Complaint was submitted in an attempt to hijack Respondent’s domain name.

DECISION

Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <avayo.net> domain name REMAIN WITH Respondent.

The Panel finds that the Complainant has attempted to engage in Reverse Domain Name Hijacking.

Procter & Gamble guilty of Reverse Domain Name Hijacking as Marchex’s Swash.com is saved in UDRP

A UDRP complaint for the domain name Swash.com, that belongs to Marchex was denied by a 3 member panel at the World Intellectual Property Organization (WIPO). The Panel also made a finding of reverse domain name hijacking (RDNH) against the Complainant.

Procter & Gamble lied to the Panel and tried to cheat it’s way into stealing the domain name but the company was outed by the Complainant and ultimately the 3 member Panel.

The Panel (by a majority) concluded that the Complainant must have known that, once the relevant facts of this case were uncovered, a UDRP panel could not possibly find that the disputed domain name was registered in bad faith. To have filed the Complaint at this relatively late date – more than eleven years after the registration of the disputed domain name and several years after its acquisition by the Respondent –seems a grotesquely unfair attempt to wrest ownership of the disputed domain name from the owner.

The entire Panel found it more extraordinary still that in its Complaint the Complainant represented the SWASH brand to be a worldwide brand of longstanding with multi-million dollar sales, stating that over the last 4 years alone the brand had gained sales of over USD 40,000,000. When this was challenged by the Respondent, the Complainant was forced to admit that the brand had only been on the market for 4 years, that sales had been restricted to the USA and that sales over those four years had totaled under USD 60,000. This Complaint fell very far short of what the Panel was entitled to expect from a Complainant of this stature.

The Panel found that the Complainant abused the process in an attempt at reverse domain name hijacking in contravention of the UDRP Rules at paragraph 15(e). The Panel majority also found the Complainant has attempted reverse domain name hijacking because it must have known that the Respondent did not know of (nor had any reason to be aware of) any relevant trade mark rights in the SWASH name when the Respondent registered the disputed domain name in 2004.

Complainant, The Procter and Gamble Company, filed a complaint for the domain Swash.com owned by Marchex Sales, Inc., represented by John Berryhill, Pennsylvania, USA.

The Center appointed Dennis A. Foster, Andrew F. Christie and Tony Willoughby as panelists in this matter on January 10, 2013.

The Complainant is a United States of America (“USA”) company that manufactures and sells many consumer products, including household cleaning and washing products. One brand under which the Complainant has produced such goods is the dictionary word “Swash”, and the Complainant has registered its SWASH trademark with, among other authorities, the United States Patent and Trademark Office (“USPTO”) (Registration No. 3568231; registered January 27, 2009) and the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (Registration No. 6492177; registered November 6, 2008). Indirectly, through a subsidiary or associated company, the Complainant also appears to have an interest in a WIPO international registration of the mark under the Madrid System, which was acquired in 2008. The original owner of that registration, the German company Henkel, registered the mark in 1993.

The Respondent is the owner of the disputed domain name <swash.com>. The disputed domain was originally registered by Ultimate Search Inc. in March of 2000. Respondent has owned the Swash.com domain name since November 2004 after Respondent acquired it in an asset purchase. Prior to initiation of these proceedings, the disputed domain name resolved to a website that provided links to third-party websites that offered cleaning/washing products. Presently, the name hosts a website that provides links to third-party websites of a more general nature.

Panel’s Discussion and Findings

A. Identical or Confusingly Similar

By supplying the Panel with evidence (Complaint, Annex C) of its SWASH trademark registrations with the USPTO and OHIM, the Complainant has convinced the Panel that it has rights in that mark that satisfy the requirements of UDRP paragraph 4(a)(i).

Upon simple visual inspection, the Panel determines that the disputed domain name, <swash.com>, is identical to the Complainant’s SWASH trademark. The inclusion of the generic top-level domain, “.com”, in the disputed domain name is deemed by the Panel to be inconsequential in making such a determination.

As a result, the Panel finds that the Complainant has satisfied the first element of the Policy.

However, the Panel notes that it can only determine that the Complainant has trademark rights by registration beginning with the European Union OHIM registration in 2008 and in the USA in 2009. Based on the information the Complainant has provided, the Panel is unable to determine with any confidence the scope and extent of the 1993 WIPO registration. And in any case, according to the Complainant’s own Supplemental Filing, the 1993 WIPO filing was never valid in the USA, the domicile of the Complainant and the Respondent, and the mutual jurisdiction for these proceedings.

B. Rights or Legitimate Interests

In this case, the Respondent asserts that it is in the business of registering domain names composed of common words or short phrases for use in websites that provide keyword advertising relating to the meaning of those words or phrases. Thus, as “swash” is a dictionary word that alludes to “washing in turbulent water”, and the website to which the disputed domain name initially resolved contained advertising links to third-party produced washing products, the Respondent possesses a legitimate interest in that name. The Respondent argues that it is irrelevant that those washing products might, as alleged by the Complainant, compete directly with products sold by the Complainant under the SWASH trademark because the Respondent began using the “swash” name in the USA before the Complainant.

However, the Panel is not entirely convinced by the Respondent’s contentions and actions that it has used the disputed domain name for the name’s dictionary meaning. The Complainant contends and provides evidence (Complaint, Annex F), which the Respondent does not contradict, that recently the website found at the disputed domain name has been changed to incorporate third-party links of a more general nature than those related solely to washing products. The Complainant asserts that this change resulted from its transfer demands directed at the Respondent, and reflects the illegitimacy of the Respondent’s position. The Respondent contends that the change occurred as a natural “drift” occasioned by the Respondent’s reliance on an automated link selection system. Both explanations undercut the Respondent’s claim of rights or legitimate interests in the disputed domain name. The Complainant’s explanation implies that the Respondent sought to mitigate an admitted infringement of the Complainant’s trademark; the Respondent’s explanation implies that the Respondent is not intent upon using dictionary-word domain names for their plain meaning because the Respondent is willing to rely on an automated service which it cannot control. In short, the Panel wonders how the Respondent can maintain that it has used or intends to use the disputed domain name for its dictionary meaning when the Respondent concedes that it does not manage meaningfully the content placed on the website at the disputed domain name.

The Panel believes that the Respondent’s citation on its behalf of the prior UDRP case, Advanced Drivers Education Products and Training, Inc v. MDNH, Inc. (Marchex), NAF Claim No. 567039, is misplaced. In that case, the panel found that the respondent used the disputed domain name, <teensmart.com>, for paid advertising links to websites of interest to teenagers, which aligns closely with the plain description suggested by that domain name. As the Respondent noted, that panel did conclude that “It is irrelevant that the site consists largely of paid advertising rather than original content.” However, in the present case, the disputed domain name, <swash.com>, now resolves to an altered website that offers PPC links to third-party sites that are general in nature and have little to do with washing products or the plain meaning of “swash”.

The foregoing analysis leads the Panel to conclude that the Respondent has failed to supply sufficient evidence for its contentions in rebuttal to the Complainant’s prima facie case on this issue.

As a result, the Panel finds that the Complainant has satisfied the second element of the Policy.

A minority of the Panel does not agree with the Panel majority’s finding on the Respondent’s “Rights or Legitimate Interests”. The Complainant has failed to satisfy the minority Panelist that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has been making bona fide commercial use of the disputed domain name for 8 years or more and there is nothing before the Panel to suggest that the Respondent’s use of the disputed domain name has been in bad faith; nor has the Panel made any such finding. The Panel has found the Respondent to be the legitimate owner of the disputed domain name and in the view of the minority Panelist a legitimate owner of a domain name, which has been making continuous bona fide commercial use of the domain name over such an extensive period has a legitimate interest in respect of it. However, due to the finding regarding bad faith below, the division amongst the Panel on this issue is not critical to the outcome of this case.

C. Registered and Used in Bad Faith

In this case, there is no evidence in the record to suggest that the Respondent acquired the disputed domain name later than 2004. The Complainant, in its Complaint and Additional Submission, furnishes no evidence that it sold products under its SWASH trademark prior to 2009. Moreover, the Complainant has not proved any registration for the SWASH trademark before 2008. In view of the sequence of these dates, the Panel agrees with the Respondent that, when it acquired the disputed domain name <swash.com> in 2004, it cannot have been aware of the Complainant’s then non-existent rights in the SWASH mark. Furthermore, as the Complainant has also admitted that the third party 1993 WIPO registration for that mark was not valid in the USA – the domicile of the Respondent – the Panel finds that it is also very unlikely that the Respondent would have been aware of that registration at all. This lack of opportunity for actual, or even constructive, knowledge on the part of Respondent concerning ownership of the SWASH trademark leads the Panel to conclude that there is no evidence that the Respondent registered and is using the disputed domain name in bad faith. Since the Respondent had no knowledge of any Complainant rights in the disputed domain name, the Respondent was not using the disputed domain in bad faith when it connected the disputed domain name to web sites related to the word “swash” and later to general interest websites. The Panel believes that this is not a UDRP paragraphs 4(b)(i-iv) bad faith scenario and that this is not even a close call.

As a result, the Panel finds that the Complainant has failed to satisfy the third element of the Policy with regard to bad faith.

Reverse Domain Name Hijacking

The Respondent has requested that the Panel issue a finding of abuse of this UDRP proceeding or “reverse domain name hijacking” per the UDRP Rules at paragraph 15(e). The Panel notes that panels do not usually issue such a finding in a case where a complainant has prevailed with respect to two (in the present case not unanimously) of the three elements required under the Policy.

However, the Panel does not believe that the present Case represents a normal circumstance. The Panel notes that the Complainant, The Procter & Gamble Company, is a premier marketer and advertiser of consumer products in the United States of America and in many other countries. It is impossible to believe that the Complainant, who employs ultra-sophisticated marketing methods, was not aware that the disputed domain name, <swash.com>, had been registered and used by other entities for some years when the Complainant introduced its SWASH product line in 2009.

The Complainant and its legal counsel are not strangers to the UDRP process.

Therefore, the Panel (by a majority) concludes that the Complainant must have known that, once the relevant facts of this case were uncovered, a UDRP panel could not possibly find that the disputed domain name was registered in bad faith. To have filed the Complaint at this relatively late date – more than eleven years after the registration of the disputed domain name and several years after its acquisition by the Respondent –seems a grotesquely unfair attempt to wrest ownership of the disputed domain name from the owner.

The entire Panel finds it more extraordinary still that in its Complaint the Complainant represented the SWASH brand to be a worldwide brand of longstanding with multi-million dollar sales, stating that over the last 4 years alone the brand had gained sales of over USD 40,000,000. When this was challenged by the Respondent, the Complainant was forced to admit that the brand had only been on the market for 4 years, that sales had been restricted to the USA and that sales over those four years had totaled under USD 60,000. Had the Respondent failed to respond, there is a very real risk that the Panel, relying upon the 1993 International registration and the substantial sales volumes claimed for the brand, would have found in favor of the Complainant. This Complaint fell very far short of what the Panel was entitled to expect from a Complainant of this stature.

In all of the circumstances present here, the Panel finds that the Complainant has abused the process in an attempt at reverse domain name hijacking in contravention of the UDRP Rules at paragraph 15(e). The Panel majority also finds the Complainant has attempted reverse domain name hijacking because it must have known that the Respondent did not know of (nor had any reason to be aware of) any relevant trade mark rights in the SWASH name when the Respondent registered the disputed domain name in 2004.

Decision

So the complaint failed at the third element of the UDRP. For the foregoing reasons, the Complaint was denied. The Panel also made a finding of reverse domain name hijacking against the Complainant.

Orbitz and it’s representative get ridiculed while UDRP complaint for orbbitz.com is denied at NAF

A UDRP complaint for the domain orbbitz.com was denied by a 1 member panel at the National Arbitration Forum.

Complainant, Orbitz Worldwide, LLC represented by CitizenHawk, Inc., filed a complaint for the domain orbbitz.com owned by A Kiansu from Vietnam.

Orbitz waited 11 years to file the complaint and still managed to do a terrible job. The panel seemed to punish Orbitz for doing a copy/paste of the requirements of finding bad faith registration and use but not actually providing any evidence at all.

The disputed domain was registered by Respondent in January 2002. This makes one wonder why complainants get 11 years to file for a complaint while respondent gets only 20 days to respond.

The Panel wondered why a party, especially one represented by an experienced representative didn’t make ANY arguments as to prove bad faith registration and use. To make these arguments on behalf of the complainant it would require the Panel to assume facts not in evidence. Complainant failed to meet its burden of proof of bad faith registration and use under Policy ¶4(a)(iii).

On March 1, 2013, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

Panel’s Discussion and Findings

A. Identical or Confusingly Similar

Complainant owns the trademark registration with the United States Patent & trademark Office (“USPTO”) for the ORBITZ mark (Reg. No. 2,799,051 filed Jan. 19, 2001; registered Dec. 23, 2003). Respondent appears to reside in Vietnam.

Registration of a mark with the USPTO establishes rights in a mark, and the rights relate back to the filing date of the registration.

Complainant claims Respondent’s <orbbitz.com> domain name is confusingly similar to Complainant’s mark because it differs by only a single character from Complainant’s mark. Respondent includes Complainant’s mark and merely adds a single additional letter, “b.” Prior panels have held “the mere addition of a single letter to complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶4(a)(i).” See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) and this Panel agrees. Respondent adds the generic top-level domain name (“gTLD”) “.com.”  Adding a gTLD (which is required for a domain name) also does not adequately distinguish Respondent’s domain name from Complainant’s mark under Policy ¶4(a)(i).

B. Rights or Legitimate Interests

Complainant claims Respondent has not been commonly known by the disputed domain name. The WHOIS record for the disputed domain name lists “A Kiansu” as the registrant.

Complainant argues Respondent is using the disputed domain name to resolve to an empty page featuring no substantive content or links. The website located at Respondent’s <orbbitz.com> is a blank, white page.  Respondent has failed to make an active use of the disputed domain name, which means Respondent is certainly not using the disputed domain name for a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).

While Respondent has had the owned the domain name since January 31, 2002, it apparently hasn’t used it at all.  If the web site isn’t used at all, Respondent could not have acquired any rights to the domain name.

C. Registered and Used in Bad Faith

Complainant claims Respondent’s disputed domain name currently resolves to an inactive site and that alone constitutes bad faith registration and use.  That alone isn’t enough.

Complainant argues Respondent’s disputed domain name is a classic example of typosquatting. The Policy does not mention typosquatting as a ground for finding bad faith registration and use. Did Complainant assert Respondent registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant for more than Respondent paid?  No.

Did Complainant asset Respondent registered the domain name to prevent the owner of the trademark from reflecting the mark in a corresponding domain name and Respondent has engaged in a pattern of such conduct?  No.

Did Complainant assert Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor?  No.

Did Complainant assert Respondent intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark?  No.

Why didn’t Complainant make these arguments? This Panel does not know. This Panel is loath to make an argument for a party, especially one represented by an experienced representative. To make these arguments would require the Panel to assume facts not in evidence.

Complainant has failed to meet its burden of proof of bad faith registration and use under Policy ¶4(a)(iii).

Respondent has not registered or used the <orbbitz.com> domain name in bad faith if Respondent has not violated any of the factors listed in Policy ¶4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶4(a)(iii).

The Panel finds Policy ¶4(a)(iii) NOT satisfied.

Decision

So the complaint failed at the third element of the UDRP. For the foregoing reasons, the Complaint was denied.

UDRP complaint for Marchex’s uhealth.com denied at NAF

A UDRP complaint for the domain name uhealth.com, that belongs to Marchex was denied by a 3 member panel at the National Arbitration Forum.

Complainant, University of Miami, filed a complaint for the domain uhealth.com owned by Marchex Sales, Inc., represented by John Berryhill, Pennsylvania, USA.

The disputed domain was originally registered by Ultimate Search Inc. in February of 2002. Respondent has owned the <uhealth.com> domain name since November 2004 after Respondent acquired it in an asset purchase.

Complainant registered the trademark UHEALTH UNIVERSITY OF MIAMI HEALTH SYSTEM with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,629,399 filed on October 17, 2007, registered on June 2, 2009). Complainant registered the <uhealthsystem.com> domain name in 2007. Although Complainant argues to have used the expression UHEALTH as a trademark since 2007, there is no evidence of such use. Consequently, there is neither evidence of secondary meaning nor evidence of use. Thus, Complainant has not proven common law rights regarding the trademark UHEALTH.

It seems that John Berryhill didn’t ask for a Reverse Domain Name Hijacking (RDNH) ruling.

Pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Fernando Triana, Esq. as Chair of the Panel, The Honourable Neil Anthony Brown, QC. and Wolter Wefers Bettink, Esq. as Panelists.

Panel’s Discussion and Findings

A. Identical or Confusingly Similar

In this case, Complainant argues to have had common law rights over the expression UHEALTH since 2007. Common law rights are obtained with use of the trademark in commerce to identify certain goods or services in commerce and to distinguish them from those of competitors. However, there is no evidence of use or secondary meaning of the expression UHEALTH.

Nonetheless, Complainant proved its rights in the trademark UHEALTH UNIVERSITY OF MIAMI HEALTH SYSTEM. This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the cited trademark and the exclusive right to use it in connection with the stated services. The registration of a trademark is prima facie evidence of validity, which creates a rebuttable presumption that the trademark is inherently distinctive. Thus, Complainant established its rights in the trademark.

The Panel adds that, although Respondent’s <uhealth.com> domain name predates Complainant’s trademark registration, Paragraph 4(a)(i) to the Policy does not require the trademark to be registered prior to the disputed domain name.

Therefore, the Panel concludes that Complainant has demonstrated rights in the trademark UHEALTH UNIVERSITY OF MIAMI HEALTH SYSTEM for purposes of Paragraph 4(a)(i) of the Policy.

Panelist Brown respectfully disagrees with this part of the decision. His view is that the objective observer, making the comparison between the disputed domain name and the trademark, would conclude that the comparison should be made with the trademark as a whole, as it is that trademark that has been registered by the Complainant and as the Complainant has no common law or unregistered trademark rights in UHEALTH. The objective bystander would conclude that the domain name may well be referring not to the Complainant’s trademark but to another university’s health service or, indeed, a general health service directed to the reader, as in “your health.” Consequently, the disputed domain name is not confusingly similar to the only trademark relied on by the Complainant.

B. Rights or Legitimate Interests

UDRP Panels have unanimously accepted that the inclusion of the “.com” gTLD in a disputed domain name is not a factor in analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights.

However, the Panel considers that the reproduction of the UHEALTH portion of Complainant’s trademark UHEALTH UNIVERSITY OF MIAMI HEALTH SYSTEM by the <uhealth.com> domain name is sufficient ground to establish that the disputed domain name is confusingly similar to the trademark. This is especially so since UHEALTH is the main and most distinctive part of the trademark UHEALTH UNIVERSITY OF MIAMI HEALTH SYSTEM (as shown in the design on Exhibit A to the Complaint) and the disputed domain name does not add any other distinctive element.

In consequence, as per this reasoning, the Panel finds that, in the present case, the disputed domain name is confusingly similar to Complainant’s trademark and thus the requirement set forth in Paragraph 4(a)(i) of the Policy has been duly satisfied.

Panelist Brown respectfully disagrees with this proposition as the word “health” is clearly generic and a well known dictionary word in the English language and the use of the letter “u,” when in juxtaposition with a dictionary word, has the popular meaning “you” or “your.” The combination of the two terms would generally be accepted as referring to a person’s health-related issues. Panelist Brown agrees, however, with the conclusion in this section of the decision to the effect that the Respondent has established rights or legitimate interests in the disputed domain name. 

C. Registered and Used in Bad Faith

Respondent’s website contains sponsored links to commercial websites related to health and insurance.  This Panel believes that, in view of the generic word (“health”) which constitutes the dominant portion of the disputed domain name, the provision of pay-per-click advertisements for health-related services is a valid Internet advertising model which does not necessarily entail use of a domain name in bad faith.

Furthermore, in view of the fact that the domain name was registered before the trademark, Complainant did not provide evidence that (i) the domain name was acquired by Respondent to prevent Complainant from reflecting its trademark in the disputed domain name, since the domain name registration was prior to the trademark registration; or (ii) Respondent registered the disputed domain name primarily for the purpose of disrupting Complainant’s business; or (iii) Respondent acquired the disputed domain name to attract, for commercial gain, Internet users, by creating a likelihood of confusion with Complainant’s trademark, since the disputed domain name registration was prior to the trademark registration.

Finally, Complainant argues that Respondent registered and uses the domain name in bad faith, as Respondent offered to sell the disputed domain name for a price exceeding out-of-pocket cost. Leaving aside that Complainant did not provide evidence hereof, the fact that the disputed domain name (as Complainant admits) was registered or acquired by Respondent prior to the registration of the disputed domain name implies that this statement is incorrect. Therefore, the Panel concludes that Complainant has failed to prove Respondent’s bad faith.

Decision

So the complaint failed at the second and third element of the UDRP. For the foregoing reasons, the Complaint was denied.

NiceCar.com and PetSafe.com: UDRP complaints bound to fail

Domain Name: nicecar.com
UDRP Provider: National Arbitration Forum
Case Number: 1485765
Complainant: Complainant is probably NICE CAR, INC. CORPORATION from Colorado.

Why the UDRP complaint is bound to fail: The domain name was registered in 2000. There is only one registered trademark in USPTO and that is for the mark “nice car” from the company above. The trademark was registered in February 6, 2007 although the company claims that it first used the mark in commerce in 1987. The domain name is generic and unless the complainant can prove that the respondent based in South Korea knew the complainant before registering the domain name and actually registered this generic domain with complainant in mind then the complaint will fail. The domain is currently listed for sale for $100,000.

Domain Name: petsafe.com
UDRP Provider: National Arbitration Forum
Case Number: 1488312
Complainant: The complainant is probably RADIO SYSTEMS CORPORATION (PetSafe.net)

Why the UDRP complaint is bound to fail: The domain name was registered in 1996. The oldest registered mark is USPTO is for the mark PETSAFE that was registered in 2001 and the company claims that it first used the mark in commerce in 1998. The complaint will fail because complainant can’t possibly prove bad faith registration.

Avayo.net: Latest UDRP complaint bound to fail

Domain Name: avayo.net
UDRP Provider: National Arbitration Forum
Case Number: 1487607

Complainant: The complainant is probably Avaya Inc. that has filed 6 complaints since 2008 and has lost 2 of them as the company has a habit of filing UDRP complaints for similar but not quite the same domains as its registered trademark and those domains happen to be active company websites. I wrote about how they lost the complaint for the domain name ayava.us (notice the different spelling). That is a complaint where complainant lied, NAF messed up whois, Panelist couldn’t read, hosting company suspended the website but the domain ayava.us survived the UDRP complaint. They also lost the complaint for the domain name cavaya.com in 2008. Again the domain cavaya.com was an active website, used by a legitimate company and also the word “Cavaya” means “intelligence” in the Sanskrit language. Avaya Inc. should get a couple of reverse domain name hijacking rulings as they don’t seem to learn from their mistakes.

Why the UDRP complaint is bound to fail: First of all Avaya is not the same as Avayo. The domain was registered in 2005 and belongs to Avayo Electronics, a registered Canadian Corporation. The domain resolves to what is the corporation’s official company website. Avayo Electronics is a manufacturer of communications infrastructure products specialty structured cabling system and raised floor system. The company has at least 12 employees according to LinkedIn. Even if Avayo Electronics is selling similar products to what the complainant sells UDRP is not the way to settle a company/trademark dispute. The company that owns the domain has a legitimate interest. Period.