UDRP complaint denied for Frank Schilling’s ColdFront.com – Complainant guilty of Reverse Domain Name Hijacking

Frank Schilling’s domain ColdFront.com gets a Reverse Domain Name Hijacking ruling as John Berryhill gets this complaint dismissed at the National Arbitration Forum.

The Complainant was formed in 2009 and filed for a USPTO registration of the term COLDFRONT in connection with cooling packs on intent to use basis. The Complainant subsequently alleged a first use of the mark in 2010 and obtained registration in 2011.

The Complainant was informed by Respondent prior to this proceeding that the Policy does not provide some sort of retroactive trademark right, by which junior users may hi-jack the domain names of legitimate senior registrants.  The Complainant ignored this warning.

The Panel found that the Complainant had or could easily have obtained knowledge of all these facts before it brought its Complaint to the Forum.  Indeed, the Respondent expressly warned Complainant about the frivolous nature of its claims but the Complainant proceeded.

The Panel also said that if the Respondent has legitimate interests in the domain name, it has the right to sell that domain name for whatever price it deems appropriate regardless of the value that appraisers may ascribe to the domain name.

DECISION Details

Complainant was Personally Cool Inc., New York, USA. Respondent was Name Administration Inc. (BVI), represented by John Berryhill, Pennsylvania, USA.

Complainant submitted the Complaint to the National Arbitration Forum on December 5, 2012. The National Arbitration Forum pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Jonas Gulliksson (Chair), David H. Bernstein and Sir Ian Barker as Panelists.

The Respondent registered the disputed domain name ColdFront.com on June 21, 2002, after the prior registrant let it expire.

PANEL’S DISCUSSION

The Panel found in favor of the Complainant in the first element of the UDRP: Identical and/or Confusingly Similar.

The Panel finds that the Complainant’s trademark registrations establish its rights in the COLDFRONT mark under Policy ¶ 4(a)(i), and that the rights date back to the filing date with the USPTO of June 4, 2009. The Panel notes that the Complainant does not present any arguments that the disputed domain name is confusingly similar or identical to the COLDFRONT mark.  However, the Panel is entitled to make an independent evaluation of the similarity of the disputed domain name to the COLDFRONT mark. The Panel notes that the disputed domain name contains the entire COLDFRONT mark, and merely adds the generic top-level domain (“gTLD”) “.com.”  Therefore, the Panel finds that the disputed domain name is identical to the Complainant’s COLDFRONT mark under Policy ¶ 4(a)(i). The Respondent notes that its registration of the disputed domain name predates the Complainant’s alleged rights in the mark. That is true, but it is irrelevant to the issue under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether the Complainant has rights in the mark and whether the disputed domain nameis identical or confusingly similar to Complainant’s mark.

The Panel found in favor of the Respondent in the second element of the UDRP:Rights or Legitimate Interests.

The Panel finds that “cold front” is a generic word relating to weather.  Also, the Panel finds that the search terms used on the website linked to the disputed domain name are not related to the Complainant’s trademark or business. Therefore, the Panel finds that the Respondent is making a bona fide offering of goods or services under Policy ¶ 4(c)(i), through its use of the disputed domain name to take advantage of the generic nature of the terms of the domain name and by virtue of the fact that it does not take advantage of the trademark value of the Complainant’s mark.

The Panel finds that the bona fide nature of the Respondent’s use of the disputed domain name is not affected by whether or not the Respondent is interested in selling the disputed domain name or the preferred price. If the Respondent has legitimate interests in the domain name, it has the right to sell that domain name for whatever price it deems appropriate regardless of the value that appraisers may ascribe to the domain name.

Consequently, the Complainant has failed to meet the burden of proof of the Respondent’s lack of legitimate interest or rights pursuant to Policy ¶ 4(a)(ii).

The Panel found in favor of the Respondent in the third element of the UDRP: Registration and Use in Bad Faith.

With the Panel’s finding of the Respondent’s legitimate interests pursuant to Policy ¶ 4(a)(ii) further inquiries of the remaining element of the Policy is unnecessary. However, in order to assess whether Complainant is guilty of Reverse Domain Name Hijacking, it is useful for the Panel also to consider whether Complainant has satisfied its burden of proving that the Respondent registered and used the domain name in bad faith. The Complainant did not even exist when the Respondent registered the disputed domain name or during several years thereafter, nor did the Complainant’s trademark. For that reason, the Respondent’s initial registration could not possibly have been in bad faith in relation to the Complainant.

The question of the relevant time for a bad faith finding when a domain name registration has been renewed is developing jurisprudence. Generally, a mere renewal of a domain name has not been treated as a new registration for the purpose of assessing bad faith, but a small number of panels have begun to consider the renewal of a domain name as equivalent to a new registration in certain circumstances. See Section 3.17 of the WIPO Overwiew 2.0. In the case at hand, regardless of the fact whether a renewal may be a relevant time period for considering if the Respondent registered the domain name in bad faith, the Complainant has failed to show bad faith at the time of the renewal.  First, despite the Complainant’s application to register its trademark in 2009, there is no evidence in the record that the Respondent specifically knew or should have known of Complainant and its trademark, or was willfully blind to Complainant’s mark, at the time of the renewal.  Had Respondent changed its use of the domain name after renewal to take advantage of the trademark value of COLDFRONT as a website selling competing cold packs for cooling the body, the Panel might have inferred a bad faith intention by the Respondent to take advantage of the trademark that the Complainant registered after the initial registration of the domain name but before the renewal. Here, though, the evidence is to the contrary:  The Respondent did not change its use of the domain name after renewal; rather, it continued to do what it had always done, which was to offer pay-per-click advertising related to weather and related coldfront-topics.  As such, Complainant has not shown that the renewal of the domain name in 2011 was made in bad faith.

Nor has the Complainant proven that the Respondent registered the disputed domain name primarily for the purpose of selling the disputed domain name to the Complainant or to any of the Complainant’s competitors for an amount in excess of out-of-pocket expenses. Further, the Respondent has not violated any of the other factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration or use pursuant to the Policy in connection with the disputed domain name.  The offer to sell a domain name that a party otherwise has rights to is not bad faith; rather, that is nothing more than a legitimate effort to sell property properly owned by the party.  See Etam, plc v. Alberta Hot Rods, D2000-1654 (WIPO Feb. 5, 2001).  Therefore, the Panel concludes that Complainant has failed to show bad faith registration and use under Policy ¶ 4(b).

REVERSE DOMAIN NAME HIJACKING

The Respondent alleges that the Complainant has brought the Complaint in bad faith and is engaging in Reverse Domain Name Hijacking. The Panel finds that the Complainant had or could easily have obtained knowledge of all these facts before it brought its Complaint to the Forum.  Indeed, the Respondent expressly warned Complainant about the frivolous nature of its claims but the Complainant proceeded. It is true that Complainant appeared pro se, without counsel, but that is not an excuse for clear disregard for the limitations of the Policy. Rather, when there are questions about the validity of the claim – and especially where Respondent offered detailed information about why a complaint would have no merit – it is incumbent upon the Complainant to research carefully the validity of its claims, including if necessary consulting with experienced counsel. Therefore, after considering the submissions in this case the Panel finds that the Complaint was brought in bad faith in an attempt at Reverse Domain Name Hijacking.

The Panel concluded that relief shall be DENIED.