This is a lesson for everyone that tries to steal a domain name from its rightful owner. A lesson for all people, companies, trademark holders (or not) and their lawyers that attempt a reverse domain name hijacking.
The decision clearly states that “there is nothing in the Policy to negate the right or a registrant to register a domain name with the intention of selling it at a profit” and that “the intention of Respondent to sell the domain name at a profit, it is not untoward or improper or conduct negating the basic right to register a domain name that the registrant intends to sell it at a profit.”.
The panelist also mentioned domain name parking: “Nor was there any obstacle in the way of Respondent parking the domain name at the time of registration, as that is a well recognised right of a domain name owner“.
A complaint was filed at the Forum for the domain name utilibill.com. The complaint came from a company with a 2007 registered trademark while the domain name was registered in 2000 by its owner. The complainant UTILIBILL, Pty.Ltd., represented by Ruth Khalsa, California, USA, tried to grab the domain name from its owner after purchase negotiations failed.
The complaint failed miserably even though the domain owner did not submit a response. The panelist, The Honorable Neil Anthony Brown QC Panelist, decided to deny the complaint based on its merits, something that not all his colleagues do.
The importance of the decision is not the outcome but the decision reasoning and wording. Please read it carefully:
“The first task for the Panel under this heading is therefore to decide if Complainant has made out a prima facie case. In that regard, Complainant’s principal argument is that “Respondent registered the domain utilibill.com on May 2, 2000, with intent to sell it and make a profit.” Here it must be remembered that when Respondent registered the domain name on May 2, 2000, Complainant had not registered or even applied for a trademark or used the mark in commerce, that event not having occurred at the earliest until 2004.”
“A simple search of the Australian companies’ register reveals Complainant did not exist in 2000, as it was not incorporated until June 6, 2005. Accordingly, there is no evidence from which it can be inferred one way or the other that Respondent had any intention to sell the domain name at a profit at the time when it registered it or that Complainant existed when Respondent formed any such intention.”
“But even if it were the intention of Respondent to sell the domain name at a profit, it is not untoward or improper or conduct negating the basic right to register a domain name that the registrant intends to sell it at a profit. The Policy states that it is bad faith registration of a domain name when the registrant’s primary motivation is not simply to sell the domain name but to sell or rent it to the complainant trademark owner or a competitor, which of course is consistent with the whole purpose of the UDRP which is to negate abusive registrations of domain names. But there is nothing in the Policy to negate the right or a registrant to register a domain name with the intention of selling it at a profit, especially when, as in the present case, there was no trademark in existence or contemplation when the domain name was registered. Complainant’s first and principal argument therefore does not succeed.“
“The same must be said of the further submission that “Respondent did not request permission to register the domains containing Complainant’s mark…“ and the related submission that Respondent has not made an active use of the domain name. There was no obligation on Respondent to seek or obtain permission from Complainant, nor could it have obtained such permission, as Complainant did not exist at the time and had not applied for a trademark with which the domain name could have been in conflict. Nor was there any obstacle in the way of Respondent parking the domain name at the time of registration, as that is a well recognised right of a domain name owner, provided that the domain name does not transgress on the rights of the trademark owner by using it to promote competitors or disrupt the trademark owners’ business or some other untoward conduct. Those additional arguments of Complainant likewise do not succeed.”
“Complainant presumably also submits that Respondent, because of its conduct since the registration, lost any right or legitimate interest in the domain name that it may have had. That argument cannot succeed as there is no evidence that Respondent engaged in any such conduct. The evidence said to be in support is solely Annexure 6 which shows that the domain name has resolved to the registrar’s website containing advertisements for the sale of domain names, anti-spam measures, websites and such. None of those advertisements or any other links redirect internet users to competitors of Complainant, target Complainant, copy it, demonstrate an attempt at passing off, show any attempt to capitalise on the value of the domain name as a trademark or show any other untoward conduct by Respondent. They simply show a legitimate use of the domain name. That argument of Complainant therefore also fails.“
“Indeed, Complainant’s case is in substance that because, years after the registration of the domain name, which Respondent was clearly entitled to do on a “first-come.first.served” basis, Complainant registered an identical trademark, this in some way negates the right of Respondent to register and retain the domain name that it clearly had at the time of registration. Such a submission is not supported by the Policy or established domain name practice. Nor is it supported by the decisions cited by Complainant. The essence of this case is the situation explained in the valuable work, Levine, Domain Name Arbitration, Legal Corner Press, New York, 2015, where the learned author explained the general principles involved and discusses several unsuccessful defences that have been raised in the past, defences which have also been raised by Complainant in the present case. Although this extract is lengthy, it will explain to Complainant and to readers why the essential case put by Complainant is, with respect, wrong in law and practice.“
“Complainant has thus not shown that the domain name was registered in bad faith. It is accordingly not necessary to decide if it used the domain name in bad faith. However the Panel should mention that there is evidence of an email exchange between the parties about the possible sale of the domain name. The Panel’s reading of the exchange is that it is little but the usual bargaining over price which did not end successfully.“
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the utilibill.com domain name REMAIN with Respondent.
Now the respondent should double the last asking price for the domain name so that the complainant can learn a valuable lesson. The case seems unwinnable from the start, it is a case of TM holder hoping to get lucky with one of the many panelists who blindly rule for trademark holders to get a free domain.
This could easily have been a reverse domain name hijacking decision if owner had replied and asked for it.
Nice. Keep in mind not two panelists agree on everything, decisions in similar-looking cases can vary from panelist to panelist.
@Acro I think you are right; some “panelists” functioning deferred. It’s all depend on “panelist” motivation and their expertise on the matter. So therefore, results may vary?