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.*