Welcome to this week’s UDRP Digest summarizing the most intriguing cases of the past week and significant comments by Zak Muscovitch, ICA General Counsel on <zydus .com>, <jtt .com>, <DryWater .com>, <FlukeRepair .com>, and <bfd .com>. We think you’ll enjoy this POWERHOUSE Digest!
Investors Can Have Legitimate Interest in Coined Words
Zydus Lifesciences Ltd. (formerly known as Cadila Healthcare Ltd.) v. Jewella Privacy LLC / DNS, Domain Privacy LTD, WIPO Case No. D2022-0880
Panelists: Mr. Nick J. Gardner, Mr. Pablo A. Palazzi, and Mr. Alan L. Limbury
Brief Facts: The Complainant is a large Indian pharmaceutical company, with reported turnover of USD $1.98 billion in 2021. It was originally founded in 1952 as Cadila Laboratories Ltd. and later split into two companies wherein Cadila Healthcare Ltd. adopted the term “ZYDUS” as a brand name for some of its products. Its earliest trademark for “ZYDUS” was filed in 1996 in India and now owns some 140 trademarks which comprise or include the word “zydus”, mostly registered in India and none in USA. Cadila Healthcare Limited adopted the term “ZydusCadila” as a trade name and it registered the domain name <zyduscadila .com> in 1999, however, it changed its name to Zydus Lifesciences Ltd on February 24, 2022. It appears to operate in some 50 countries that includes incorporation of Zydus Pharmaceuticals (USA) Inc. as a wholly owned subsidiary in the US in 2003.
The disputed Domain Name was originally registered by the Respondent on November 17, 2004. At present it resolves via multiple redirections to unrelated third-party websites – the precise website appears to vary each time. The Complainant contends that previously it resolved to a standard pay-per-click (“PPC”) web page containing links to third party websites but it did not place the supporting evidence on record. Between January and March 2022 the Respondent received approximately 20 unsolicited emails from various brokers seeking to buy the Disputed Domain Name for sums between USD $750 and USD $4,000. The underlying purchaser was not disclosed. The Respondent did not reply to any of these emails.
The term “zydus” is a coined word with no meaning in the English language. It is however a five-letter character string which is pronounceable and likely to be of inherent value as a domain name for that reason. The Panel regards with skepticism the Respondent’s claim that it registered the disputed Domain Name because of its meaning in Lithuanian. It can however accept it registered it because of its inherent value as a five-letter character string. There is no evidence to suggest there is any reason why the Respondent should have any knowledge of the Complainant or the ZYDUS trademark when it did so. The Panel sees no reason to disbelieve the Respondent when it says it had never heard of the Complainant or the ZYDUS trademark when it registered the disputed Domain Name.
Held: In terms of WIPO Overview, the Panel considers that aggregators / resellers of domain names are entitled to register dictionary words, acronyms and common phrases and have a legitimate interest in doing so. Accordingly, the Respondent simply registered a character string it considered attractive and likely to be of value, and did so without knowledge of the Complainant or the ZYDUS trademark. Further, the Panel declines to find that the disputed Domain Name has been registered and used in bad faith. Although the Complainant submitted a large amount of material in evidence, that material singularly fails to address the fact that the Respondent registered the disputed Domain Name in 2004 with the knowledge of the Complainant and there is no evidence in the Complaint of the Complainant having any reputation outside India in the term “zydus” as at that date.
The Respondent is using the disputed Domain Name as part of its advertising business which is in principle a bona fide business activity and does not amount to bad faith in the circumstances. Furthermore, the fact that the Respondent ignored all offers seeking to purchase the disputed Domain Name is inconsistent with the Complainant’s analysis of the Respondent’s motives. So far as the other factors relied upon by the Complainant are concerned the Respondent’s alleged targeting, through the PPC page, of the Complainant is not supported by the evidence. The Panel considers that in circumstances where a domain name was acquired legitimately for its generic properties, linking that domain name to a parking page which automatically generates links to third party websites based on the generic properties of the domain name does not amount to bad faith use absent any specific targeting of the Complainant. The Panel, therefore, concludes that in this case even if the disputed Domain Name was used in the manner described by the Complainant that does not support any finding of bad faith.
RDNH: The Complainant is professionally represented in this matter and knew or ought to have known that it had no reasonable chance of prevailing in this proceeding for the reasons set out above. Further, the Complaint contains statements which are, at least on the evidence as filed, inaccurate and also the sheer volume of material produced without a proper referencing to indicate the key parts of this material, tended to obfuscate matters in a manner the Panel found unhelpful. The Panel also accepts that the numerous unsolicited offers to buy the disputed Domain Name received by the Respondent in early 2022 were made on behalf of the Complainant and would appear to indicate the Complainant knew it did not have prior rights that would allow it to recover the disputed Domain Name. Taking all of the above into account the Panel considers it appropriate to find that the Complainant was brought in bad faith and constitutes an abuse of the administrative proceeding.
Complaint Denied (RDNH)
Complainants’ Counsel: AnantLaw, India
Respondents’ Counsel: Greenberg & Lieberman, United States
Case Comment by ICA General Counsel, Zak Muscovitch:
This Panel deserves a lot of credit. It made three particularly impressive findings.
First, the Panel recognized that despite the word “Zydus” having no meaning in English and despite not being convinced that the word was selected because of its meaning in Lithuanian, that the Respondent nevertheless “registered it because of its inherent value as a five-letter character string”. This is a significant finding because as the Panel noted, the WIPO Overview only purports to confer legitimacy on investors in “acronyms, dictionary words, or common phrases” – i.e. made-up terms are not referenced therein. Yet the Panel concluded that “the same principles apply where a domain name reseller registers a longer character string simply because it considers that string is attractive and likely to be of value”. The Panel clearly understood and recognized that there is no difference in principle between investing in a generic term and a made-up term, where there is no intention of targeting a trademark holder. This finding comports with the reality of domain name investing where a domain name investor registers an attractive made-up term in order to sell it to a new entrant to the marketplace who also sees the term as attractive, and not because of an existing user. Moreover, this finding also comports with trademark law because trademark law recognizes that two or more companies can peacefully coexist under the very same made-up term (absent “fame”), when the respective goods or services are sufficiently different. This is particularly so when the parties operate in different jurisdictions since trademark rights are generally territorial. Accordingly, this Panel’s express recognition of the right to invest in a made-up term is a significant and welcome development in UDRP jurisprudence that recognizes both reality and longstanding trademark law principles.
Second, the Panel did not allow its scepticism that the Domain Name was registered because of its meaning in Lithuanian, to prevent it from nevertheless finding that the Domain Name was registered with a legitimate interest and in good faith. Panels will often allow a finding of lack of credibility in respect of one aspect of a Respondent’s case to negate other aspects of a Respondent’s case and thereby determine the outcome. Often this is warranted however sometimes a more nuanced approach is preferable and the Panel fortunately adopted the latter approach in this case (Contrast this Panel’s approach with the approach taken in New Rosme SIA v. Privacydotlink Customer 684816 / Domain Admin, Abstract Holdings International Ltd, WIPO Case No. D2016-2637 >>Roseme .com<< where the Panel was not convinced that the Respondent adopted the domain name because it corresponded to a geographical location, namely a village in Latvia, and ordered the transfer despite evidence that the Complainant likely named itself after the Latvian village and that there were numerous third parties that all co-exist under the name of the village).
Third, the Panel rightly correctly concluded that automatically generated links – even where some may relate to the Complainant – is not necessarily evidence of bad faith: “The presence of “click through” links may in appropriate cases form a basis to show targeting, in the specific circumstances of this case, and in particular without additional supporting evidence of targeting, the facts as described in the Complaint do not in the Panel’s opinion establxish that the Respondent was deliberately targeting the Complainant” [emphasis added]. The Panel noted in particular, that where the links are “algorithmically generated links, and the page was accessed in India (as seems likely) the Panel is not particularly surprised it returned links which may relate to the Complainant”, thereby expressly recognizing that automatically generated links are not necessarily indicative of targeting of a Complainant and may also result from where the website is accessed from. A similar point was made out by the dissenting Panelist, Jeffrey Neuman, in Saudi Arabian Mining Company (Ma’aden) v. Fundacion Privacy Services LTD, WIPO Case No. D2021-3590, which was covered in our UDRP Digest Volume 2.08, where he stated that, “PPC link technology has evolved considerably since its early days where such links were either static, or if they were dynamic, they were based on the content of the site and the domain name itself. Today many PPC links display advertisements based on previous search results of the user and that is likely what occurred here.” Recognizing that in the circumstances, such links, even when related to the Complainant, may arise automatically depending on external factors, the Panel concluded that they do not necessarily demonstrate the Respondent’s intention in registering the Domain Name: “In circumstances where a domain name has been legitimately acquired for its generic properties, linking that domain name to a parking page which automatically generates links to third party websites based on the generic properties of the domain name does not amount to bad faith use absent any specific targeting of the Complainant”. The Panel thus rightly focused on evidence of actual targeting, rather than evidence that is at most merely corroborative of possible targeting but which alone and which in reality, is unlikely to have been the reason for the registration in the circumstances.
Congratulations to Panelists, Nick Gardner, Pablo Palazzi, and Alan Limbury, for issuing a remarkably well-reasoned and nuanced decision.
Panelist Expressly Recognizes Intrinsic Value of 3-Letter .com Domain Name
Thorpe Technologies, Inc. v. Domains By Proxy, LLC / Gregory Kudasz, Irukandji-USA, WIPO Case No. D2022-1456
Panelist: Mr. W. Scott Blackmer
Brief Facts: The US Complainant, formed in 1993, is a designer and manufacturer of custom engineered products and a provider of related services. It uses the stylized logo containing the letters “JTT”, filed for registration in April 2022 before USPTO, along with another application for “Thorpe Technologies, Inc. AKA JTT CORPORATION”, both the applications are pending registration. The Complainant claims common law trademark rights in both “JTT” as a word mark and in its stylised logo. The Respondent registered the disputed Domain Name on January 19, 1996, a few days after filing a DBA registration for an assumed name (‘Jellyfish Television and Theater’) with the initials “JTT”, for a company that produced a television and movie fan site. For some years, the disputed Domain Name was used for television and movie information and links, including links to a fan site.
On learning that the disputed Domain Name was listed for sale through the Registrar, the Complainant contacted the Respondent about a possible purchase of the Domain Name and offered to cover Respondent’s out of pocket expenses, which the latter refused. The Complainant alleges that merely parking the Domain Name and offering it for sale for an exorbitant price for USD $57,500 amounts to bad faith. The Respondent contends that three-letter domain names are intrinsically valuable, as indicated by the selling price and that the Respondent has a legitimate interest in holding the disputed Domain Name for potential resale.
Held: The examples of legitimate interests given in the Policy are expressly not exhaustive. The Panel finds that the Respondent has a credible interest in the Domain Name for its resale value as an intrinsically valuable, short domain name, which the Respondent attempted to sell through domain name brokers, and that this represents on the facts of this case a legitimate interest for purposes of the Policy. Further, there is no particular reason to presume that the Respondent would have been aware of the JTT logo in January 1996 when the Respondent registered the disputed Domain Name and started using it for a website dedicated to television and movie information and links and later for a portal with links to the Respondent’s related website at <fansites .com>. In 26 years, the Respondent did not approach the Complainant about selling the Domain Name, and correspondence in the record shows that the Registrar and a broker considered that the Domain Name had high value as a short “.com” domain name. On this record, the Respondent appears to have had plausible reasons for registering and maintaining the Domain Name, and there is little reason to doubt the Respondent’s denial of prior awareness of the Complainant or its mark.
RDNH: Here, the Complaint is clearly deficient. It should have been clear that the Complainant would have to establish that its logo quickly acquired distinctiveness to serve as a common law mark and also a national reputation, and that the Respondent more likely than not meant to target this mark in 1996. But the Complaint makes no serious effort to address these issues. The Complainant focuses on the fact that the Respondent offers the Domain Name for a large amount of money, but this is no surprise considering that it is a three-letter “.com” domain name. A UDRP complainant cannot simply overlook the question of whether there were trademark rights at the time of the domain name registration and whether it was likely that the respondent meant to exploit them. The Panel finds that the Complainant brought the Complaint in bad faith, in an attempt at Reverse Domain Name Hijacking.
Complaint Denied (RDNH)
Complainants’ Counsel: Churovich Law, LLC, United States
Respondents’ Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: The Panelist recognized what is widely known as a fact within the domain name industry but which is seldom expressly acknowledged by UDRP Panelists: That three-letter domain names often have intrinsic value, wholly independent of a Complainant’s trademark. To his credit, the Panelist expressly stated, “The Respondent has a credible interest in the Domain Name for its resale value as an intrinsically valuable, short domain name, which the Respondent has attempted to sell through domain name brokers, and that this represents on the facts of this case a legitimate interest for purposes of the Policy”. Furthermore, the Panelist also correctly recognized that intrinsic value of such three-letter domain names may be very high and registrants may ask for high amounts for such valuable domain names; “The Complainant focuses on the fact that the Respondent offers the Domain Name for a large amount of money, but this is no surprise considering that it is a three-letter “.com” domain name.” Unlike this Panelist, some UDRP Panels are unaware of the economics of the secondary market in domain names and in particular are unaware of the high value of three-letter .com domain names. For example, in Autobuses de Oriente ADO, S.A. de C.V. v. Private Registration / Francois Carrillo. WIPO Case No D2017-1661, the Panel in ordering the transfer (subsequently vacated on appeal to the U.S. Federal Court), noted that the domain name ado .com was listed for “much higher than the price of other domain names being auctioned on the Respondent’s Catchy .com website”, thereby failing to recognize that these other purported “comparable” domain names on the Respondent’s website were not three-letter domain names, but rather, were four-letter domain names, which are generally valued far less than three-letter .com domain names (For more on the value of three-letter .com domain names and the ado.com decision, see this CircleID article). The Panelist in the jtt .com case deserves recognition for recognizing the reality that three-letter .com domain names have intrinsic value and strongly expressing this fact. Kudos to Panelist Scott Blackmer.
Once Again, Complainants Must Prove Trademark Rights Which Pre-exist Domain Name
DryWater Inc. v. DriWater, NAF Claim Number: FA2206001999206
Panelist: The Honorable Neil Anthony Brown QC
Brief Facts: The US Complainant specializes in manufacturing energy drinks, powders, and nutritional supplement sports drinks. It claims registered trademark rights in the DRYWATER mark through two registrations with the USPTO, both dated July 13, 2021. In addition, the Complainant claims common law trademark rights in the DRYWATER mark through alleged extensive use of the mark. The disputed Domain Name was registered on February 25, 1995, but is passively held. The Complainant alleges that the Respondent fails to use the disputed Domain Name in connection with a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Further adds that the Respondent had actual or constructive knowledge of the Complainant’s rights in the DRYWATER mark at the time they registered the disputed Domain Name.
Held: There are problems with the Complainant relying on the two registered trademarks, registered with USPTO. Those trademark registrations show that the registered owner of the trademark is not the Complainant but another individual but no reference to this is made in the Complainant’s evidence or to whether he assigned or leased the trademark to the Complainant or given it some sort of authority to bring this proceedings and the extent of that authority. This is not merely a technical or minor issue but is an issue of standing in these proceedings, as it goes to prove whether the Complainant can bring this claim at all. Another problem with the trademark relied on is that it claims first use in commerce as August 1, 2020. That date, of course, is more than 24 years after the disputed Domain Name was registered. This would have obvious implications if the Panel came to consider the other two clauses.
In addition to the registered trademarks relied on, the Complainant submits that it relies on common law rights in the DRYWATER mark but there is no evidence of those alleged common law rights, no evidence of how they arose or when and no evidence of whether it is the Complainant who owns those alleged rights. The Panel therefore finds that the Complainant did not show that it has common law rights to the DRYWATER trademark. The next question that arises is whether the disputed domain name is identical or confusingly similar to the Complainant’s mark. On the evidence to date, the Panel decides this question in the negative, as there are no trademarks owned by the Complainant to which the disputed Domain Name could be identical or confusingly similar.
Complainants’ Counsel: Roy D. Gross of The Roy Gross Law Firm, LLC, Connecticut, USA
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: The Complainant in this case made several rudimentary errors. First, it brought the Complaint in the name of a corporation when the trademarks that it relied upon were registered to an individual, not the corporate Complainant. Second, the Complainant merely alleged common law trademark rights without proving them. Third, the date of claimed first use of the trademarks that the Complainant relied upon, far post-dated the registration date of the Domain Name. The Panelist, to his credit, properly took notice of these deficiencies despite it being an undefended case and dismissed the proceeding.
From a little research using the California Secretary of State business entity search tool and the DomainTools.com historical Whois archive, it is apparent that not was the corporate Complainant only very recently incorporated (in 2021), but that the current registrant’s registration goes back to at least 2013 (both facts which were apparently not before the Panel). This demonstrates that the Complaint had no chance of success and that the Panelist correctly concluded so despite not being provided all of the relevant facts since it was an undefended case. Congratulations to Panelist Neil Brown on ensuring the right and just outcome even in an undefended case without being afforded all the material facts.
Clearly this is a Complaint that never should have been brought. What can be done to avoid such Complaints from being brought in the first place? Complainants clearly need some help and guidance to identify whether their prospective Complaint has any chance of success. Complainants should be prompted to review the jurisprudence to ensure that their prospective Complaint qualifies as having a reasonable chance of success and should possibly be required to confirm that they are claiming rights which pre-exist the registration of the Disputed Domain Name, since that is a fundamental requirement for a successful UDRP Complaint. Taking such precautionary measures would not only help Complainants avoid a misadventure but would also assist Respondents who would not have to defend against obviously defective Complaints.
Close Outcome in Nominative Fair Use Test Better Left to Courts
Fluke Corporation v. Erwin Bryson / fixmyfluke / Nelson Bryson, NAF Claim Number: FA2203001988399
<FlukeRepair .com> and <FixMyFluke .com>
Panelists: Mr. Steven M. Levy, Esq. (chair), Mr. Paul M. DeCicco and Prof. David E. Sorkin
Brief Facts: The Complainant uses the trademark FLUKE in relation to electronic test and measuring instruments and services related thereto. The Complainant owns various registrations with the USPTO for the trademark FLUKE, starting as early as 1989. The <fixmyfluke .com> and <flukerepair .com> Domain Names were registered on Feb. 10, 2014 and Sep. 24, 2018 respectively. The Complainant contends that the Respondent is not using the disputed Domain Names in connection with a bona fide offering of goods or services nor is it making a legitimate non-commercial or fair use because the Respondent provides services that compete with the Complainant’s own repair services. Its website uses a similar color scheme similar to that used by the Complainant and it also displays images of the Complainant’s products. With regard to the <fixmyfluke .com> Domain Name, the Respondent automatically redirects users to the <flukerepair .com> website.
The Respondent argues that it is commonly known by the disputed Domain Names and makes a nominative fair use of the FLUKE mark in the disputed Domain Names and did so prior to being put on notice of the present dispute. The Respondent uses the Domain Names in connection with a bona fide offering of goods or services or makes a fair use of the mark because the Respondent actually and exclusively provides repair services of the Complainant’s products and it also sells refurbished units of genuine FLUKE instruments. Its website contains a conspicuous disclaimer of affiliation with the Complainant as well as other statements which make clear that the Respondent is an independent business. The Respondent further argues it has rights and legitimate interests in the Domain Names and the sudden loss thereof would cripple its business. The Complainant would be unjustly enriched by a transfer and would reap the benefits of the Respondent’s hard work and capital.
Held: The Respondent claims that it is making a nominative fair use of the FLUKE mark to fairly describe its repair services. As a result, the disputed Domain Names need to satisfy the well-known test set out in Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001). In accordance with the OKI Data test, firstly, the evidence submitted supports the claim that the Respondent operates a legitimate repair business and the Complainant did not contest this. Secondly, the Complainant does not contend that the Respondent is offering to service or sell any non-FLUKE products through the website to which the disputed Domain Names resolve. Thirdly, the notice on the Respondent’s website is clear in conveying the message that no formal affiliation with the Complainant exists and the overall content of the site does not give the impression that it originates from or is formally associated with the Complainant. Finally, the Complainant makes no assertion that the Respondent tried to corner the market by registering the two Domain Names here in dispute and the Majority does not view the Respondent’s activities as running afoul of the fourth element of the Oki Data test.
The Majority finds that the Respondent, even if by a small margin, rebutted the prima facie case set out by the Complainant. However, this case involves sufficient issues of both fact and law such that it seems ill-suited to a definitive resolution through the Policy and that it would benefit from the full range of evidentiary tools available in a courtroom such as discovery, witness testimony, cross-examination, etc. While the Respondent does seek to attract consumers to its website for commercial gain, the Majority does not find that it is doing so by creating a likelihood of confusion with the FLUKE mark or that its intent is to divert customers who are seeking the Complainant’s own repair services. Admittedly, there is an open question regarding the adequacy of the steps the Respondent took to avoid confusion – and these may ultimately be decided in a courtroom setting – but, on the present record, the facts narrowly tip the preponderance of evidence standard in the Respondent’s favor on the question of bad faith registration and use.
Dissenting Opinion: The record demonstrates that the Respondent’s business is not a bona fide offering of goods or services, nor a legitimate non-commercial or fair use of the Domain Name under the Policy. After arriving at the Respondent’s website <flukerepair .com> one is greeted by references to the likes of “Fluke Repair” (Repair by Fluke) and “YOUR FLUKE SERVICE PARTNER” which reasonably suggests that the Respondent is in partnership with the Complainant regarding services performed by the Respondent. The Respondent’s casual third party references to the Complainant in the body of its website are not enough to disconnect the implication that the Respondent is sponsored by or affiliated with the Complainant left by the <flukerepair .com> Domain Name itself as well as by the look and feel of the Respondent’s website. The Respondent’s allowing the <flukerepair .com> Domain Name and website to capitalize on the trademark value of the Complainant’s FLUKE trademark when the Respondent could have conducted its business with minimal source ambiguity shows the Respondent’s bad faith. Similarly, the Respondent’s use of the other <fixmyfluke .com> Domain Name to redirect internet users to its <flukerepair .com> Domain Name and website so that it might benefit from the confusion it created between the Domain Name and the Complainant’s trademark, likewise shows a lack of rights or legitimate interests in <fixmyfluke.com> and further shows that <fixmyfluke.com> was registered and used in bad faith.
Complaint Denied (with dissenting opinion)
Complainants’ Counsel: Lindsay M.R. Jones of Merchant & Gould, P.C., Minnesota, USA
Respondents’ Counsel: Connor Christensen of Tuggle Duggins P.A., North Carolina, USA
Case Comment by ICA General Counsel, Zak Muscovitch: Panelists are often the unsung heroes of the UDRP. Often for relatively little compensation, they are entrusted with ensuring that justice prevails between complainants and respondents. Often, UDRP panelists commit to scrupulous review and analysis of the facts and law to arrive at the just outcome, despite no direct regulation and little oversight of their role. A panelist can “fulfil” his or her duties by taking great care and spending a lot of time and effort on a case, or by minimally deciding and writing a decision. When panelists take the former approach, they deserve recognition as the professional, dedicated, and conscientious adjudicators that they are. Such was the case with this particular decision. The Panelists demonstrated great commitment to the UDRP in carefully reviewing the facts, applying the law, and providing a detailed written decision which they each genuinely believed to be the right outcome. The Majority deserves particular credit for recognizing that while the present record narrowly tipped the case in the Respondent’s favor, the UDRP has its limitations, and a court may therefore ultimately be the more appropriate setting to decide the case. Regarding the Dissenting opinion, it is not surprising since even the Majority noted that this was a narrow case. Contrast how this Dissent is well within the realm of reasonable disagreement grounded in established UDRP interpretive principles, and the Dissent in a case which we commented upon last week in Digest Volume 2.26, Reza IP Holdings LLC v. Taha Alireza, Velvet, WIPO Case No. D2022-0945.
RDNH Denied Because Registrant and Registration Date Revealed Only in Additional Filing
BFD, Inc. and Barefoot Dreams, Inc. v. kanggeng sheng, NAF Claim Number: FA2205001997581
Panelist: Mr. Eugene I. Low (Presiding), Mr. Richard W. Hill and Mr. Paddy Tam
Brief Facts: The Complainant is a retailer of luxury apparel, homeware, and accessories. It asserts common law rights in the BFD mark dating back to 2020 and also owns trademark registrations for the mark in various jurisdictions, the earliest filing date being 2019. The Respondent acquired the disputed Domain Name in August 2018, the same was disclosed under additional submissions. The Complainant contends the Respondent registered and uses the disputed Domain Name in bad faith because the Respondent offers the domain name for sale and uses a privacy service to mask its identity. The Complainant adds that when it offered to buy the disputed Domain Name for USD $25,000, the Respondent requested a price in excess of USD $200,000.
The Respondent states that it registered the disputed Domain Name to create a block-chain project, i.e. Blockchain Foundation Data and the disputed Domain Name just corresponds to the initials of the name of the block-chain project, setup in 2019. The Respondent further argues that it did not offer to sell the disputed domain name: that offer came from a third party, because the disputed Domain Name was parked and the parking displays an invitation to contact the third party who is in the business of acting as an agent to facilitate the sales of domain name.
Held: The Complainant does not allege, much less provide evidence to show that its trademark rights predate 2019. The Respondent produced evidence that it acquired the disputed Domain Name in August 2018. The Complainant did not show that any specific special circumstances would justify a finding of bad faith registration. Whatever the merits of the Complainant’s arguments that the Respondent is using the disputed Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail. Consequently, in the absence of contrary evidence, the Panel cannot find bad faith registration and the Complaint must be dismissed, as in any case, the Respondent could not have contemplated the Complainant’s then non-existent rights in the mark at the moment the Domain Name was registered.
RDNH: The Panel considers that this is not an appropriate case for a finding of Reverse Domain Name Hijacking. The name of the Respondent was hidden by the privacy service. The date that the Respondent became the registrant of the disputed Domain Name was important to the Complainant but it was only revealed under additional submissions in these proceedings. Therefore, the Complaint as initially filed was not bound to fail.
Complainants’ Counsel: Merri Moken of Paul Hastings LLP, New York, USA
Respondents’ Counsel: Alice Wen of Head of Domain Name Workstation, Shenzhen, China
Case Comment by ICA General Counsel, Zak Muscovitch: As previously discussed in this Digest, Panels are generally obliged to at least expressly consider RDNH even if they ultimately decide against it. Here, the Panel to its credit, did so. While a different Panel may have reached a different conclusion on RDNH on the same record, at least here the Panel expressly considered RDNH and presented its credible rationale for declining to make such a finding. It is encouraging to see the Panel do this and it deserves recognition for so doing.