Helion.com gets hit with a UDRP a month after it was sold at Snapnames for $9,445 – The complaint was denied at NAF

Helion.com got a UDRP complaint at the National Arbitration Forum a month after it was sold at Snapnames for $9,445. The domain was caught by Snapnames on the 7th  of October 2012 and the auction ended on the 10th. The Panel did not make a RDNH ruling.

Complainant was EM Consulting Group, Inc. Respondent was “co Administrator”, represented by Farage Yusupov.

Complainant submitted the Complaint to the National Arbitration Forum on November 8, 2012. The National Arbitration Forum appointed a three-member Panel: Honorable Karl V. Fink (ret.) and Douglas M. Isenberg as Panelists, and Roberto A. Bianchi as Chair.

The Complainant claimed that the disputed domain name was identical or confusingly similar to the HELION service mark, in which Complainant has rights.  Complainant registered this mark with the United States Patent and Trademark Office (“USPTO”) since June 12, 2012.

Respondent filed one of the best Responses I have ever read.

PANEL’S FINDINGS

Complainant is a company providing computer maintenance and other IT services to automotive dealerships in the United States.

Complainant owns a USPTO registration for the word mark HELION, Registration No. 4,157,542, Registration Date June 12, 2012, filed on October 14, 2011, covering Installation, repair and maintenance of computers and computer peripherals; Maintenance and repair of computer networking hardware; Maintenance of computer hardware systems, of International Class 37. First use/First use in commerce: February 1, 2005.

Respondent is in the business of web publishing and developing websites.

The disputed domain name appears to have been registered and used in a website by third parties since 1996, prior to Complainant’s first use of the HELION mark in 2005.

The disputed domain name was registered on October 7, 2012.  On October 12, 2012, Respondent purchased the disputed domain name in an auction held at Snapnames.com for US$ 9,445.

PANEL’S DISCUSSION

The Panel found in favor of the Complainant in the first element of the UDRP: Identical and/or Confusingly Similar. By its trademark registration with the USPTO (Principal Register), Complainant has shown that it owns rights in the HELION service mark. Since the disputed domain name, aside from the generic top-level domain (“gTLD”) “.com,” consists exclusively of the “helion” string, the Panel finds that the disputed domain name is identical to Complainant’s mark.

Panel didn’t address the second element of the UDRP. Since Complainant failed to prove bad faith pursuant to Policy paragraph 4(a)(iii) – see below – the Panel need not make a finding as to rights or legitimate interests in the disputed domain name.

The Panel found in favor of the Respondent in the third element of the UDRP:

Respondent has shown that the disputed domain name has been registered and used by other domain name holders much before Complainant began using the HELION mark – according to Complainant’s statement in its trademark application – or the “Helion” term in its trade name “Helion Automotive Technologies” in 2005.  In fact, the first result of the “Wayback Machine” at the “<www.archive.org>” website visited by the Panel on December 23, 2012, shows that The Helion Design, a web designer, used the disputed domain name from 1996 to 1998 to offer its services; that from December 1998 to 2000 the website showed a webpage under the title of “Helion Videonica;” that from 2001 to 2006 the “<www.helion.com>” website showed again the title “The Helion Design,” and that in 2007 and 2008 the website was used by Stewart Securities, a full-service NASD broker and dealer.

Complainant does not consider the priority issue in its Complaint, or contest it in its Additional Submission.  Thus, Respondent’s explanation for having registered the disputed domain name mainly for being a “generic” domain name, is plausible, not because the term “helion” is truly “generic,” i.e. a sign defining the category or type to which certain goods or services belong, but because it corresponds to various different things, or refers to different persons.  Confirming Respondent’s evidence, the Panel has done research on the Wikipedia at “<en.wikipedia.org/wiki/hellion>”, and found a disambiguation page listing the following meanings for “Helion”: Helion (chemistry), helium nucleus; Helion (meteoroid); Hélion de Villeneuve (c. 1270 – 1346), a medieval knight; Jean Hélion (1904–1987), a French painter; Helion Lodge; Helion, a character in John C. Wright’s trilogy “The Golden Age”; Helion (publisher), a Polish publisher, and Helion (magister officiorum).   The Panel notes that these meanings relate neither to Complainant, nor to its HELION mark or to Complainant’s maintenance services.

Nor did a Google search conducted by the Panel on December 23, 2012, suggest otherwise.  In fact the first ten results consist of “Helion” companies and/or websites unrelated to Complainant.  One has to read the second page of results to find Complainant’s trade name “Helion Automotive Technologies” and its website “<www.heliontechnologies.com>” for the first time, at the eleventh place.

 It is true that the disputed domain name was once marked by the parking website <Sedo.com> as being “for sale.”  However, Complainant failed to show that Respondent has “registered or […] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant […], pursuant to Policy paragraph 4(b)(i).”  Obviously, this purpose of transferring the disputed domain name for profit requires previous knowledge of a complainant, a fact that Respondent flatly denies, and that Complainant failed to show. In its Response, Respondent contends that the first time it had heard from Complainant was when it was served with the Complaint.  In the Panel’s view, Complainant failed to prove the opposite.  It is true that Complainant had registered the HELION mark before Respondent acquired the disputed domain name, but it is equally true that the <helion.com> domain name was registered and used since as early as 1996 by other domain name holders, much prior to when Complainant began using or registered a trade name containing the “Helion” term, and before it applied for registration of the HELION service mark, in 2005.

For these reasons, the Panel finds that Complainant has not shown that Respondent registered the disputed domain name with Complainant’s mark in mind, a well-established requisite for finding domain name registration in bad faith.   See Jet Marques v. Vertical Axis, Inc., D2006-0250 (WIPO May 26, 2006) (a finding of bad faith registration requires that respondent registered the domain name with complainant’s trademark in mind).  This failure to prove registration in bad faith entails failure to prove jointly bad faith registration and  bad faith use, as it is required in Policy paragraph 4(a)(iii), which is sufficient for a panel to deny a complaint.

Accordingly, the Panel finds that Complainant failed to prove the bad faith element.

Reverse Domain Name Hijacking

Although Complainant failed to prove that Respondent acted in bad faith, the Panel did not find any element of bad faith in the Complaint, or that the Complaint was brought in an attempt at Reverse Domain Name Hijacking.

The Panel concluded that relief shall be DENIED.