Cybersquatting on the .CO is Not So Smart

Smartney .co: Did the Respondent target Smartney .com, when he registered Smartney .CO?

We hope you will enjoy this edition of the Digest (Vol. 3.31), as we review these noteworthy recent decisions, with commentary from our General Counsel, Zak Muscovitch and Editor, Ankur Raheja. (We invite guest commenters to contact us.)

‣ Cybersquatting on the .CO is Not So Smart (smartney .co*with commentary)

‣ Panelist Declines to Transfer Despite Consent (hegts .com*with commentary)

‣ Panel Would Have Awarded Costs Had it the Authority (leumas .com*with commentary)

‣ Variation of Highly Distinctive Coined Term Used for Phishing Website (geniusbetterup .com*with commentary)

‣ Complainant Fails to Provide Critical Evidence of Common Law Rights (aitch .com*with commentary)

—–
This Digest was Prepared Using UDRP.Tools and Gerald Levine’s Treatise, Domain Name Arbitration.

Have Something to Say? Share your feedback with us or contact us to write a Guest Comment!

Oney Bank v. Liu Fen, WIPO Case No. DCO2023-0049

<smartney .co>

Panelist: Mr. Piotr Nowaczyk

Brief Facts: The Complainant is a French bank specializing in consumer credit, electronic payments, and payment card management. In 2018, the Complainant created its subsidiary – Smartney, which offers customers the possibility of borrowing money on favorable terms using the latest technology and owns various domain names including <smartney .com>. The Complainant is the owner of several SMARTNEY trademark registrations, including figurative mark (registered on June 7, 2019) and wordmark (registered on July 5, 2019) before the EUIPO. The disputed Domain Name was registered on November 23, 2022, and currently, resolves to a parking page indicating that the Domain Name is for sale. On February 23, 2023, the Complainant sent the Respondent a cease and desist letter requesting the transfer of the Domain Name to the Complainant. In its response, the Respondent offered to sell the Domain Name to the Complainant.

Preliminary Matter – Suspension of the Proceedings: On June 2, 2023, the Respondent sent an informal email to the Center stating, “pause”. The Center acknowledged receipt of the Respondent’s email and specified to the Parties that a suspension of the proceeding was possible if the Parties wanted to explore settlement talks. Paragraph 17 of the Rules makes clear that a proceeding may be suspended to facilitate settlement negotiations or to implement a settlement agreement between the parties. Where, before the appointment of the administrative panel, the complainant (or both parties jointly) submits a suspension request to the WIPO Center, the proceedings will be suspended to allow the parties to explore settlement options. In the present case, it was the Respondent who submitted the suspension request to the Center. However, in light of the Respondent’s failure to communicate or cooperate with the Complainant, the Complainant requested that the proceedings continue.

Held: It results from the evidence on record that the Respondent does not make use of the Domain Name in connection with a bona fide offering of goods or services, nor does it make a legitimate non-commercial or fair use of the Domain Name. On the contrary, the Domain Name resolves to the parking page indicating that the Domain Name is for sale. Such use of the Domain Name does not confer rights or legitimate interests on the Respondent. Further, generally speaking, UDRP panels have found that the practice as such of registering a domain name for subsequent resale (including for a profit) would not by itself support a claim that the respondent registered the domain name in bad faith with the primary purpose of selling it to a trademark owner (or its competitor).

However, the Panel considers that such circumstances as the composition of the Domain Name wholly incorporating the Complainant’s SMARTNEY trademark, the distinctiveness of the SMARTNEY trademark, the failure of the Respondent to present a credible evidence-backed rationale for registering the Domain Name despite sending an email in reply to the Complaint’s notification thereby demonstrating the Respondent’s awareness of this proceeding and the Complaint, and the Respondent’s provision of seemingly false or incomplete registrant contact details indicate that the Domain Name was registered for the bad-faith purpose of selling it to the Complainant.

Transfer

Complainants’ Counsel: SafeBrands, France
Respondents’ Counsel: Self-represented

Case Comment by ICA General Counsel, Zak Muscovitch:

This is another instance where the Panel recognized that the disputed Domain Name corresponded to a very distinctive made-up word such that there is a rebuttable presumption that the Respondent’s registration targeted the Complainant. Of course, a prudent Complainant will lead evidence demonstrating that it is the exclusive or at least predominant and well-known user of the corresponding trademark, or perhaps a Panel will confirm the mark’s exclusive association with the Complainant via a Google and/or trademark search.

There is however another tool at the Complainant’s and the Panel’s disposal in the present case. Where a disputed Domain Name is a .co and where the .com is used by the Complainant, there is also a reasonable presumption that anyone who registers the .co must have done so because the .com was taken and as such was aware of that fact.

Panelist Declines to Transfer Despite Consent

BHE GT&S v. SS Ruprai, NAF Claim Number: FA2306002048675

<hegts .com>

Panelist: Mr. Jeffrey M. Samuels

Brief Facts: The Complainant’s parent, Berkshire Hathaway Energy, is one of the US foremost and leading energy companies, with 24,000 employees, 12 million end-users, and a portfolio of locally managed businesses worth $132.1 billion. The parent company owns U.S. trademark registrations for its BERKSHIRE HATHAWAY and BHE trademarks. The Complainant is a standalone subsidiary of Berkshire Hathaway Energy and is involved in the interstate transmission and storage of natural gas. Since its creation in 2020, the Complainant owned and uses the mark BHE GT&S in connection with its operations and owns the Domain Name <BHEGTS .com>. The Complainant recently filed an application with the USPTO to register its BHE GT&S mark, with claimed first use of December 2020. The Complainant also claims common law rights in its BHE GT&S mark as a result of “extensive advertising and promotion of its goods and services under the BHE GT&S Mark, and through favorable industry acceptance and recognition.” The disputed Domain Name was registered on January 4, 2023, and resolves to a blank website containing an error page stating that “This page isn’t working right now.”

The Complainant alleges that the BHE GT&S mark has no meaning other than as an identifier of the Complainant and its goods and services and, thus, “there can be little doubt that Respondent registered the Domain with the Complainant, and its marks, squarely in mind.” The Complainant further alleges that the disputed Domain Name has several mail exchanger records affiliated with it, which are associated with phishing schemes and other illegal activities. The Respondent contends that he runs a consulting business since April 2005 and registered the name HEPTAGON TECHNOLOGY SOLUTIONS as the name of his business on January 1, 2016. The Respondent further contends that “heg” is the domain name acronym for Heptagon and “ts” stands for Technology Solutions. The Respondent, however, maintains that he registered the disputed Domain Name in good faith and states that he “consent[s] to the remedy requested by the Complainant and agrees to transfer the domain name to Complainant.”

Preliminary Issue – Consent to Transfer: The Panel notes that the Respondent agrees to transfer the disputed Domain Name to the Complainant, the very remedy sought by the Complainant. In such cases, many UDRP panels have bypassed consideration of the above three elements and simply ordered the transfer of the disputed Domain Name. However, in some cases, despite a respondent’s consent, a panel may, at its discretion, still find it appropriate to proceed to a substantive decision on the merits. Scenarios in which a panel may find it appropriate to do so include where the respondent has disclaimed any bad faith and where there is a question as to whether the complainant possesses relevant trademark rights.

The instant Panel, in the exercise of its discretion, determines that, despite the Respondent’s consent to transfer, it will proceed to consider the merits of the proceeding. The Panel notes that the Respondent while consenting to transfer, requests the Panel to deny the allegations in the Complaint and asserts that he registered the disputed Domain Name “in good faith for representation of Respondent’s business in world wide web.”

Held: The Complainant’s application to register BHE GT&S mark with the USPTO is pending registration. The mere filing of an application to register a mark does not confer trademark rights under the UDRP. In an effort to establish common law rights in the BHE GT&S mark, the Complainant makes various claims, however, there is no evidence of the amount of sales or of the nature and extent of advertising. While there is some evidence of industry recognition, in the Panel’s view, the allegations in the Complaint fall short of establishing common law rights in the BHE GT&S mark.

While the Panel finds that the Complainant may rely on its parent’s trademark rights, it notes that such rights extend only to the BERKSHIRE HATHAWAY ENERGY and BHE marks. There is no doubt that the disputed Domain Name is neither identical nor confusingly similar to the BERKSHIRE HATHAWAY ENERGY mark. And, while the disputed Domain Name shares some of the same literal elements as the BHE mark, the Panel concludes that the BHE mark is not clearly recognizable within the disputed Domain Name.

The Panel further concludes that the Respondent has established rights or legitimate interests in the disputed Domain Name. In particular, the Respondent submitted a statement of registration of its business name “Heptagon Technology Solutions” with the British Columbia Registry Services (registered on March 15, 2016). Moreover, the Respondent, in his Response, also presented a reasonable explanation and proof as to the origin of his <hegts .com> domain name; that is, that “heg” is an acronym for “Heptagon” and that “ts” stands for “Technology Solutions.”

In view of the above, the Panel finds that the disputed Domain Name was not registered and used in bad faith. The Respondent presented credible evidence and argument as to the origin of the disputed Domain Name that refutes any determination that he registered the domain name in bad faith. Further, as determined above, the disputed Domain Name is not confusingly similar to any trademark rights the Complainant may rely upon.

Complaint Denied

Complainants’ Counsel: Amanda L. DeFord, of McGuireWoods LLP, Virginia, USA
Respondents’ Counsel: Self-represented

Case Comment by ICA General Counsel, Zak Muscovitch:

Notably, the Panelist in this case declined to transfer the Domain Name despite the Respondent’s consent to transfer, stating:

“However, in some cases, despite a respondent’s consent, a panel may, in its discretion, still find it appropriate to proceed to a substantive decision on the merits. Scenarios in which a panel may find it appropriate to do so include where the respondent has disclaimed any bad faith and where there is question as to whether the complainant possesses relevant trademark rights.”

There are a number of ways of looking at this. One view is that where the parties consent, the Panel is required to transfer because there is “no dispute” between them. On the other hand, a UDRP Panel is not equivalent to a court of general jurisdiction which can order whatever the parties jointly request to resolve their dispute. Nor is a UDRP Panel a commercial arbitration Panel which is similarly generally empowered to resolve any dispute between the parties. Rather, a UDRP Panel’s authority is strictly limited to the parameters of the UDRP and if the UDRP only allows for transfer if the three-part UDRP test is met, a Panel cannot go beyond that and order a transfer, regardless of whether the parties consent. In such a circumstance, the parties should just settle the case themselves. In this particular case, the Panel’s conclusion that the Complainant did not meet the three-part test was well-founded and as such the Panel was unable to merely accede to the parties’ ostensible request to order a transfer as the Panel simply did not have such authority under the UDRP.

There are additional ways of looking at this as well. One such way is that if the first part of the test is a “standing” requirement and the Complainant does not meet it, well then it has no standing to proceed and the case must be dismissed regardless of a consent to transfer. Another way of looking at it is that if a Panel finds no standing under the first part, it need not and should not proceed to analyze the other two factors. And there is also the view that sometimes a “consent” to transfer is not really a consent to transfer, where the Respondent (as possibly is the case here) is really saying that he denies the allegations and did nothing wrong but if the law says he did then he is willing to give up the domain name.

Finally, there is the point that there are many examples of a Respondent responding with a consent to transfer only to have the Panelist issue a transfer decision on the merits rather than just accepting the consent and issuing a pro forma transfer decision. If that is satisfactory under the Policy, then we must be prepared to accept dismissal outcomes as well.

Ultimately it would be helpful if there was more consistency as to the proper approach under the Policy, where there is a consent to transfer.

Panel Would Have Awarded Costs Had it the Authority

Leumas Residential, LLC v. Leumas Advisors LLC, NAF Claim Number: FA2306002048740

<leumas .com>

Panelist: Mr. Flip Petillion (Presiding), Mr. Richard W. Hill and Ms. Carol Stoner

Brief Facts: The Complainant is an investment services company that uses the LEUMAS mark since 1998. The complainant owns rights to the LEUMAS mark through a trademark registration with the USPTO (Registered: December 11, 2018; claimed first use in commerce: January 1, 2003). The Respondent registered the disputed Domain Name on November 12, 2002. The Complainant alleges that the Respondent registered and uses the disputed Domain Name in bad faith by failing actively to use the domain name and that the Respondent never used the Domain Name; however, it provides evidence that the resolving webpage displays advertising hyperlinks.

The Respondent contends that the name was chosen by reversing the letters of the middle name of the Respondent’s principal, Samuel. Currently, Leumas Advisors LLC is inactive to avoid a conflict of interest with its principal’s work as a pensions funds analyst with the Office of the Connecticut State Treasurer. The Respondent further contends it uses the disputed Domain Name for email service, and hence has rights and legitimate interests in the disputed Domain Name. Meanwhile, the Complainant harassed the Respondent by sending numerous emails from 2008 to 2022 to addresses linked to the disputed Domain Name, seeking to purchase the disputed Domain Name.

Held: The Panel finds that the evidence regarding the origin of the disputed Domain Name, date of its registration, its use for email, and plans for expanded use, constitute sufficient evidence of the Respondent’s rights or legitimate interests in the disputed Domain Name. Besides, the registration of the disputed Domain Name predates Complainant’s trademark registration by more than 15 years, and the Complainant does not provide evidence of any common law rights in the name LEUMAS before the registration of the disputed Domain Name. Common law rights in a mark should be proven by substantive evidence, which is inexistent in this case. In the Panel’s view, it follows that the Complainant cannot prove registration in bad faith.

Nevertheless, the Panel adds that there is no evidence of any bad faith use of the disputed Domain Name by the Respondent. Contrary to Complainant’s allegations, the disputed Domain Name has been actively used to send and receive emails. The Complainant was also aware of this as it sent numerous emails to an email address linked to the disputed Domain Name. Through these emails, the Complainant harassed the Respondent about purchasing the disputed Domain Name from the Respondent, even after the Respondent’s reply that the disputed Domain Name was not for sale. The Panel observes that at no point in the years that the Complainant offered to purchase the domain name, did the Complainant make any suggestions that the Respondent’s registration was made in bad faith. The Panel, therefore, finds that the Respondent registered and uses the disputed Domain Name in good faith per Policy.

RDNH: The Panel finds that the present case is a classic Plan B case, in which the Complainant initiated UDRP proceedings following unsuccessful attempts to purchase the disputed Domain Name in order to force the transfer of the disputed Domain Name. The Panel finds that the Complainant misrepresented the facts by failing to mention the communications it issued to the Respondent in its Complaint and by stating that the disputed Domain Name is not being used, despite receiving at least one response from the “@leumas.com” email address in which the Respondent clearly stated that the disputed Domain Name was not for sale.

The Panel also observes that the Complainant filed its application for the LEUMAS mark about 10 years after this communication from the Respondent’s principal. In the Panel’s view, the Complainant knew or should have known that it was unable to prove that the Respondent lacks rights or legitimate interests in the disputed Domain Name and that the Respondent registered and is using the disputed Domain Name in bad faith. The above circumstances support a finding of reverse domain name hijacking. While this arbitration Panel is not permitted to award costs and fees, the Respondent may choose to pursue other remedies under applicable law.

Complaint Denied (RDNH)

Complainants’ Counsel: Internally Represented
Respondents’ Counsel: Gerald M. Levine of Levine Samuel, LLP, New York, USA

Case Comment by ICA General Counsel, Zak Muscovitch:

Notably, the Panel in this case unanimously stated that, “While this arbitration Panel is not permitted to award costs and fees, Respondent may choose to pursue other remedies under applicable law”.

As readers will know, costs are not obtainable in the UDRP. Here, the fact that the Panel mentioned that the Respondent may want to seek costs, is an indication that the Panel likely would have awarded them had it had the authority to do so. In contrast, under Canada’s CDRP, cost awards are possible:

4.6 Bad Faith of Complainant. If the Registrant is successful, and the Registrant proves, on a balance of probabilities, that the Complaint was commenced by the Complainant for the purpose of attempting, unfairly and without colour of right, to cancel or obtain a transfer of any Registration which is the subject of the Proceeding, then the Panel may order the Complainant to pay to the Provider in trust for the Registrant an amount of up to five thousand dollars ($5000) to defray the costs incurred by the Registrant in preparing for, and filing material in the Proceeding. The Complainant will be ineligible to file another Complaint in respect of any Registration with any Provider until the amount owing is paid in full to the Provider.

I am aware of two cases under the CDRP where costs were obtained. The first CDRP case concerned ForSale .ca. There, the Panel noted that it was the first such instance of an award of costs for RDNH under the CDRP. A separate set of submissions involved adjudicating the amount of such costs which were ultimately set at the full $5,000. There is however, no mechanism for actually collecting cost awards under the CDRP and as such a party’s recourse would be to small claims court and thereby have to spend even more money trying to collect with uncertain prospects of success. As an aside, one of the Panelists in that case was David Lametti, who went on to be Canada’s Minister of Justice and Attorney General. The second case where costs were awarded also resulted in the full $5,000, but again there is no enforcement mechanism and the Respondent was left to collect the award itself.

The unenforceability is one of several reasons that cost awards for RDNH is not regarded as a desirable policy by some, including myself. Another reason is that if the Policy were revised to allow that, then there would be interest in creating a corresponding provision awarding costs against cybersquatters, which would also be unenforceable under the Policy and thereby lead to a discussion of posting bonds which would be entirely impractical under the UDRP and add a whole other layer of complexity and costs while creating access to justice issues. As such, although there are certainly instances where conduct should result in costs as a matter of fairness, practically speaking it should remain up to the parties to pursue their costs (as a matter of damages) separately, if they so desire, as the Panel suggested in this case.

Variation of Highly Distinctive Coined Term Used for Phishing Website

BetterUp, Inc. v. Rado Tavir, WIPO Case No. D2023-2006

<geniusbetterup .com>

Panelist: Mr. Geert Glas

Brief Facts: The US Complainant provides professional digital coaching services under the BETTERUP mark. The Complainant Company was established in 2013 and has since grown to become a leader in mobile-based professional coaching, counselling and mentorship. It has been advertising its products and services in the United States since 2013 and internationally since 2021. The Complainant is the owner of multiple trademarks containing the term BETTERUP, including the US word mark BETTERUP, (registered on October 11, 2016, and June 25 2019) and the EU word mark BETTERUP (registered on July 14, 2022). The disputed Domain Name was registered on April 5, 2023, and currently resolves to an inactive page. However, the Complainant submits evidence showing that the disputed Domain Name was previously resolved to various other pages that were clones of the Complainant’s web pages on its <betterup .com> website.

The Complainant claims that the term “BetterUp” was coined by the corporation’s founders and is therefore not – at least in this specific combination – found in any dictionary, nor in common use. The Complainant is unaware of any other entity or business operating under the same name. The Complainant alleges that the cloning of its website constitutes in itself sufficient evidence of bad faith as it represents an impersonation of the Complainant. It maintains that the cloned website indicates that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. The Respondent did not file a Response.

Held: There is no indication that the Respondent is making a legitimate non-commercial or fair use of the disputed Domain Name or is using the disputed Domain Name in connection with a bona fide offering of goods or services. On the contrary, the evidence demonstrates that the disputed Domain Name was used to resolve an active website which was largely a copycat of the Complainant’s website. The website even duplicated the Complainant’s usage of its trademarks and copyrighted images and collected user data. The composition of the disputed Domain Name only contributes to confusion as it carries a risk of implied affiliation. Moreover, the Respondent cannot reasonably dispute that it knew the Complainant’s trademark when registering the disputed Domain Name in 2023.

Further, panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith; here the Panel notes the mark is a coined term combining two dictionary terms in an unordinary way. They have moreover found that seeking to cause confusion for the Respondent’s commercial benefit constitutes evidence to support a finding of registration in bad faith. Finally, the nature of the disputed Domain Name, which includes the entirety of the Complainant’s trademark modified only by the addition of the term “genius” and the TLD “.com”, and the largely cloned website it resolved to strongly indicate registration of the disputed Domain Name in bad faith.

Furthermore, the disputed Domain Name was used to resolve a website that duplicated the appearance of the Complainant’s official website. The recurrent display of the Complainant’s trademark as well as the use of the Complainant’s copyrighted images only contributed to the resemblance. The foregoing makes it very likely that Internet users will assume that there is an association between the disputed Domain Name and the Complainant. This indicates a likelihood of confusion between the disputed Domain Name and the BETTERUP trademark. The present passive holding of the disputed Domain Name does not prevent a finding of bad faith registration and use. Consequently, the Panel finds that the Respondent has also been using the disputed Domain Name in bad faith as well.

Transfer

Complainants’ Counsel: Gilbride, Tusa, Last & Spellane LLC, United States
Respondents’ Counsel: No Response

Case Comment by ICA General Counsel, Zak Muscovitch:

Practitioners and perhaps Panelists alike may have taken notice of the frequency of phishing websites and emails using cybersquatted domain names. This appears to have been the case here with a variation of a highly distinctive coined term combined with a cloned website. When one visits the disputed Domain Name today, the website is not a clone but it appears to have been at least when the Complaint was filed as appears to be likely from looking at Archive.org.

The UDRP is undoubtedly a solution to such phishing schemes however it is really only part of the solution. Experienced counsel will not wait for a UDRP to run its course and result in a transfer while the scheme is allowed to continue. Rather, they will immediately contact the registrar and registry and invoke their abuse policies which typically state that fraudulent or illegal activities are prohibited and ask that the Domain Name be disabled. Additionally, the DMCA can often be invoked to take down such websites where the text and images has been copied, as was apparently the case here. The DMCA may not always be employable due to the location of the hosting company; however, even in such cases the hosting company may comply or have an abuse policy which may be invoked.

As such, the UDRP is very effective but takes too long to satisfactorily deal with such cases and is best used to cap off prior efforts wherever possible.

Complainant Fails to Provide Critical Evidence of Common Law Rights

Aitch Group Limited v. Filip Sazavsky, WIPO Case No. D2023-2381

<aitch .com>

Panelist: Mr. John Swinson

Brief Facts: The Complainant, a property developer in London, owns a European Union trademark registration for AITCH (registered on September 4, 2014). The disputed Domain Name was registered on November 13, 2000, and diverts to a listing page on the BrandBucket website, where the disputed Domain Name is currently listed for sale for USD $31,820 or for lease for USD $2,918 per month. The listing states: “A short, technical name with a nod to ‘AI’ that feels totally neat in any industry. Possible uses: A virtual reality company. An animation studio. An app developer. An arcade. A trade show.” The Respondent adds that “Aitch” is a common noun that is currently being used by several companies (over 100 LinkedIn results) and will continue to be used by many companies in the future.

Between April 2021 and March 2013, a representative of the Complainant and BrandBucket engaged in sporadic email negotiations regarding the purchase of the disputed Domain Name. The Complainant’s final offer was not enough for the Parties to conclude a deal. The Complainant alleges in respect of bad faith that the domain name was registered or acquired primarily for the purpose of selling, or otherwise transferring the domain name registration to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs. The Respondent also contends that the disputed Domain Name is a valuable digital property, and the Complainant is well aware of this, so he offered to buy it.

Supplemental Filings: A party submitting an unsolicited supplemental filing should show some exceptional circumstances as to why it was unable to provide the information contained therein in its complaint or response. The supplemental filing is a rebuttal of the Respondent’s contentions. The information in the supplemental filing could have been included in the original Complaint in this particular case.

The Panel finds that the Complainant has not demonstrated, or even addressed, any exceptional circumstances as to why the supplemental filing should be considered by the Panel. The Panel reviewed the Complainant’s supplemental filing and the matters raised do not affect the outcome of this case. Accordingly, the supplemental filing is not admitted.

Held: The disputed Domain Name was registered in November 2000, while the Complainant’s trademark was not registered until 2014. There is no evidence in the Complaint of the Complainant’s use of the AITCH trademark prior to November 2000. The supplemental filing asserts that the Complainant “has been trading as Aitch since 1996”, but no evidence was provided to support this assertion; this would have been critical to the case and should have been in the initial filing – but again, it is a mere assertion without evidence. The Complainant provided no evidence of its reputation or claimed common law rights. The Complainant further provided no rationale as to why the Respondent would likely have been aware of the Complainant or the disputed Domain Name.

The Complainant asserts that the circumstances indicate that the disputed Domain Name was registered or acquired primarily for the purpose of selling the disputed Domain Name to the Complainant. However, the Complainant did not provide any details of such circumstances. There is no evidence in the record that the Respondent targeted the Complainant in the 22 years period after the disputed Domain Name was registered. There is no evidence of bad faith use. A representative of the Complainant anonymously contacted BrandBucket to purchase the disputed Domain Name. In the two years of negotiations, the Complainant’s representative never asserted any bad faith of the Respondent but rather offered to acquire the disputed Domain Name. When this offer was not accepted, the Complainant brought this Complaint.

The fact that the disputed Domain Name was listed for sale for approximately USD $30,000 is not by itself conclusive of bad faith. Although it is not the place of panelists to determine the fair value of domain names, one could conclude that this price, which does not seem to be outrageous, was set based on factors other than the trademark value to the Complainant, such as the length of the disputed Domain Name (5 letters), the appearance of the term “ai”, and the period of time it had been held. In short, there is no evidence that points to a speculative registration of the disputed Domain Name in November 2000 for the specific purpose of targeting the Complainant or other brand owners.

RDNH: Here, the Complainant may have had a justifiable case – if it had evidence of its reputation in 2000 (claiming to have started up some years before) and evidence it was being targeted, but it did not present sufficient evidence to prove its case. Similarly, the Respondent did not present evidence that the Complainant brought this case to harass the Respondent or as an abuse of process. A finding of RDNH is discretionary.

Here the Panel chooses not to make one while cautioning the Complainant (or perhaps more accurately, its counsel) in future to limit invocation of the Policy to cases fully presented and in particular taking account of relevant (freely-available) jurisprudence. In the circumstances, the Panel declines to make a finding of RDNH.

Complaint Denied

Complainants’ Counsel: S&P Legal, United Kingdom
Respondents’ Counsel: Self-represented

Comment by Newsletter Editor, Ankur Raheja: The Complainant did in fact apparently have prior rights in the mark AITCH, at least since 1996 according to evidence from the Complainant’s official website at <aitchgroup .com>, however it failed to provide any such critical evidence as noted by the Panelist: “The Complainant has been trading as Aitch since 1996, but no evidence was provided to support this assertion; this would have been critical to the case…” Accordingly, this matter was not a straightforward instance where Reverse Domain Name Hijacking (RDNH) was necessarily appropriate and therefore it is understandable why a finding of RDNH was not made in this case.