UDRP complaint for StableTable.com denied after failed negotiations (civil action against Complainant pending)

A one member panel at WIPO denied the UDRP complaint for the domain name StableTable.com today.

The Complainant was Hedera AB of Lund, Sweden, represented by Advokatbyrån Gulliksson AB, Sweden. The Respondent was Support Desk, Captive Media of Irvine, California, United States of America (“USA”), represented by Rodenbaugh Law, USA.

The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on January 10, 2014.

The Complainant is the owner of a variety of registered trademark rights with regard to the mark STABLETABLE. According to WhoIs records, the disputed domain name was created on November 24, 2007 and the registrant’s contact details have shown the same address and telephone number over that period.

The Respondent is a California corporation. The Respondent does not go into detail as to the nature of its business although in its Request for Dismissal or Suspension of the administrative proceeding it describes itself as “a prominent and respected web development company”. The Respondent adds in the Response that it provides advertising and online search services to Internet users. The Respondent states that it, then doing business as “Crosspath”, registered the disputed domain name in good faith on or about November 24, 2007 and that the Respondent ultimately changed its name to Captive Media in 2012. The Respondent therefore maintains that it has retained unbroken ownership and possession of the disputed domain name since the date of its creation.

On December 11, 2013 the Center received an email communication from the Respondent requesting the dismissal or suspension of the present administrative proceeding in light of the fact that on December 9, 2013 the Respondent filed a civil action against the Complainant in the United States District Court, Northern District of California, for unfair competition and for a declaratory judgment of noninfringement with respect to the Respondent’s registration, use and ownership of the disputed domain name.

On November 14, 2008, a representative of the Complainant approached the Respondent by email indicating that it was “looking for a new domain name for a planned new business” and referencing the Complainant’s interest in the disputed domain name. The Complainant’s representative made an offer of USD 500 to purchase the disputed domain name; however it appears that the Parties were not able to agree on a price and negotiations ceased on about November 18, 2008.

The Panel found that the Complainant failed to establish the third element under the Policy:
“As noted below in the section on Reverse Domain Name Hijacking, the Complainant’s case relies upon the premise that the disputed domain name changed hands at some point during 2011. If such a change of ownership had taken place, the question of registration in bad faith would require to be assessed as at the date when the current registrant took possession of the disputed domain name (see paragraph 3.7 of the WIPO Overview 2.0). However, while the Complainant is correct that there was a formal change in registration data, the evidence clearly establishes an unbroken chain of underlying ownership by a single entity, namely the Respondent. The Panel is satisfied that the change identified on the WhoIs relates to the Respondent’s registered fictitious business names, sometimes characterized as “doing business as” names, whereas the Respondent’s contact details have remained the same throughout the period of registration. In these circumstances, the Complainant has not demonstrated that the question of registration in bad faith should be assessed as at any date other than the original date of registration of the disputed domain name.

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove the conjunctive requirement that the disputed domain name has been registered and is being used in bad faith. It follows that if the Complainant fails to prove registration in bad faith the Complaint must fail. That is the position in the present case. The Complainant is the holder of a single trademark that predates the disputed domain name, namely the South African trademark dating from August 2001. The Complainant did not become the holder of this mark until it acquired it by assignment in September 2011. As such, the Respondent could not have contemplated and intended to target the Complainant in 2007 when the disputed domain name was created. While it is theoretically possible that the Respondent might have intended to target the rights of the Complainant’s predecessor in title at that time there is no such evidence before the Panel.

For its part, the Respondent has given a plausible explanation as to why it registered the disputed domain name by its showing that the term “stable table” is in use by a variety of third parties who are not referencing the Complainant’s trademarks but have come upon the term independently as a combination of two ordinary English words.

In these circumstances the Panel finds that the Complainant has failed to establish the third element under the Policy.”

The Complaint was denied but Respondent’s request that the Panel enter a finding of Reverse Domain Name Hijacking was also denied.