Law Firm Whose Client Escaped RDNH Last Time, Not as Lucky This Time
Readers may recall the PitStop case from Digest Vol. 4.12 last month. In commenting upon the decision, I questioned whether the Panel was justified in declining to find RDNH. In that case, I pointed out that the Complainant, represented by a Brazilian law firm, proceeded headlong despite having exculpatory facts in hand and as such was likely deserving of RDNH. Well, this time they didn’t get away with it… read commentary
We hope you will enjoy this edition of the Digest (vol. 4.14), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us):
‣ Law Firm Whose Client Escaped RDNH Last Time, Not as Lucky This Time (trix .com *with commentary)
‣ Whether “Ultimate Control” Remains Unchanged Despite Change in Registrant (euronet .com *with commentary)
‣ Respondent’s Pattern of Bad Faith Leads to Transfer (mediacombo .com *with commentary)
‣ Panel: Raw WHOIS Data Could be Updated for Various Reasons (cabot .com)
‣ Complainant Had No Common Law Rights at the Time of Domain Name Registration (resourcex .com)
Law Firm Whose Client Escaped RDNH Last Time, Not as Lucky This Time
Trix Investimentos Ltda, Trx investimentos e participações ltda. v. Steve Haehnichen, Recreational U-Turns and Falconry, WIPO Case No. D2024-0778
<trix .com>
Panelist: Mr. Assen Alexiev
Brief Facts: The Complainants are affiliated Brazilian companies that manage third-party funds for investment in the real estate market. The First Complainant was registered on July 23, 2021, and the Second Complainant was registered on March 5, 2020. The Second Complainant is the owner of the Brazilian trademark TRIX INVESTIMENTOS, (registered on April 18, 2023). The First Complainant is the owner of the domain names <trix .com .br>, registered on October 19, 2023, and <trix .com .vc>, registered on May 12, 2021. The disputed Domain Name was registered on June 23, 1995, and is currently inactive. The Complainants maintain that the TRIX INVESTIMENTOS trademark is distinctive to the relevant public, has been extensively used for the relevant audience intensively, and has gained prominence in the Brazilian financial market. The Complainants note that there is no content on the website at the disputed Domain Name, so the Respondent is not using it to offer any goods or services and has not made any legitimate non-commercial or fair use of the disputed Domain Name, but is only passively holding it primarily to sell it for valuable consideration. The Complainants submit that “‘TRIX’ is an acronym with no meaning in the dictionary”, and maintain that it is a strong and creative trademark.
The Respondent, an engineer, contends that by 1994, he had developed audio processing algorithms and signal processing software for sound effects, audio editing, and voice processing and that he formed “Trix Technologies” to solicit business, where “trix” was considered as one of the common alternate spellings of “tricks”. The Respondent adds that no one has a monopoly over the use of common or generic words in domain names and the principle of “first come, first served” is a sufficient basis for acquiring rights or legitimate interests in the disputed Domain Name. He further contends that the Complainants were established 25 years after he registered the disputed Domain Name, that the Complainants have submitted no evidence of actual usage, marketing or advertising of their trademark, and that their domain name is inactive. The Respondent also notes that there are hundreds of other entities that use some form of the common term “trix” in their names, as it is an alternative spelling of the common word “tricks”. The Respondent adds that he has never attempted to sell the disputed Domain Name and requests a finding of Reverse Domain Name Hijacking against the Complainants.
Held: Since the Complainants have failed to establish that the disputed Domain Name has been registered in bad faith, it is not necessary for the Panel to make a finding under the second element of the Policy. Nevertheless, the Panel notes that the Respondent has shown use of the disputed Domain Name for purposes unrelated to the Complainants years before their establishment and before the registration of the TRIX INVESTIMENTOS trademark, which would support a conclusion that the Complainants have failed under the second element as well.
The Complainants do not allege the existence of any of these limited circumstances and do not even attempt to explain how the Respondent could have targeted them with the registration of the disputed Domain Name in 1995 when they only came into existence 25 years later. The Complainants have not submitted any evidence of actual usage, marketing, or advertising of their trademark before its registration in 2023, and the Wayback Machine reflects that that their domain names have been used as of 2022 – albeit registered a year earlier. This timeline of the events makes it impossible that in 1995 the Respondent may have known the Complainants or targeted them with the registration of the disputed Domain Name. The Panel therefore finds that the Respondent did not register the disputed Domain Name in bad faith and that the third element of the Policy has not been established.
RDNH: Given the undertakings in paragraphs 3(b)(xiii) and (xiv) of the UDRP Rules, some panels have held that a represented complainant should be held to a higher standard. In the present case, the Complainants were represented by counsel. The facts are that the Complainants and their trademark TRIX INVESTIMENTOS came into existence more than 25 years after the registration of the disputed Domain Name. This fact should have been appreciated by the Complainants and their counsel and they should have known that the Complaint could not succeed. Nevertheless, they chose to commence the present proceeding, which is sufficient to support a finding that the Complaint was brought in bad faith.
Complaint Denied (RDNH)
Complainants’ Counsel: Newton Silveira, Wilson Silveira e Associados – Advogados, Brazil
Respondents’ Counsel: Troutman Pepper Hamilton Sanders LLP, United States
Case Comment by ICA General Counsel, Zak Muscovitch: Readers may recall the PitStop case from Digest Vol. 4.12 last month. In commenting upon the decision, I questioned whether the Panel was justified in declining to find RDNH. In that case, I pointed out that the Complainant, represented by a Brazilian law firm, proceeded headlong despite having exculpatory facts in hand and as such was likely deserving of RDNH. Well, this time they didn’t get away with it. The same law firm that acted for the unsuccessful Complainant in Pitstop acted for the unsuccessful Complainant in this case, namely Newton Silveira, Wilson Silveira e Associados. To the Panel’s credit in this case, the Panelist held the represented Complainant to the appropriate standard and found that both “Complainant AND their counsel should have known that the Complaint could not succeed” [emphasis added] but chose to proceed anyhow.
Whether “Ultimate Control” Remains Unchanged Despite Change in Registrant
Euronet Worldwide, Inc. v. Euronet Internet, WIPO Case No. D2024-0293
<euronet .com>
Panelist: Mr. Adam Taylor
Brief Facts: The Complainant has provided payment-related products and services in various countries under the marks EURONET and/or EURONET WORLDWIDE including ATMs, point of sale services, credit/debit card services and currency exchange, since 1994. The Complainant’s subsidiary, EFT Services Holding B.V., owns a number of trademarks for EURONET including the Benelux trade mark (dated February 18, 1987), Spanish (1989), Swedish (1989), and Norwegian (1990) trademarks. The Complainant operates a website at <euronetworldwide .com>. The Respondent was founded in 1994 as one of the first commercial Internet service providers. The disputed Domain Name was registered on November 16, 1994. As of 2001, it was registered to the current registrant “Euronet Internet” with a registrant address in Amsterdam that was virtually identical to the current address. In 2001, the administrative contact was shown as Euronet Internet B.V. (“EIBV”).
On July 25, 1996, it changed its name to Euronet Internet B.V. Thereafter, the company underwent further name changes, namely Wanadoo Nederland B.V. (2002), Orange Nederland Breedband B.V. (2006), Online Breedband B.V. (2008), T-Mobile Netherlands B.V. (2010), and Odido Netherlands B.V. (2023). The Complainant alleges that the disputed Domain Name was originally registered by EIBV, which “ceased to exist” in 2002, whereas an <archive .org> screenshot (from 2021) shows that the website was most recently used by ECBV, a different and unconnected entity, that was acquired by Canal+ in 2020. The disputed Domain Name was no longer used after that acquisition, demonstrating that the Respondent registered the disputed Domain Name in order to sell it to a competitor of the Complainant. A contact of the Respondent “reached out” to the Complainant in early 2023 to sell the disputed Domain Name.
The Respondent contends that it registered the disputed Domain Name in 1994, and has been using it in good faith since then, notwithstanding that the company has since been acquired by other companies and that the following constitute rights and legitimate interests: the Expired Marks, ECBV’s corporate name and ECBV’s use of the EURONET and EURONET INTERNET marks for a bona fide offering of goods or services for over 20 years. The Respondent further contends that the Complainant’s trademarks are not inherently distinctive or liable to create a monopoly as the term “euronet” combines the generic terms “euro” related to Europe and “net” related to the Internet, and it is registered worldwide for a variety of goods or services. Finally, nothing on the record shows that the Respondent actively tried to sell the disputed Domain Name to the Complainant; rather the Complainant has been guilty of RDNH.
Held: The Respondent, which identifies itself as ECBV, contends that it acquired the disputed Domain Name on its creation date of November 17, 1994. Whereas, the Complainant invokes the ECBV corporate information page from 2021 and argues strongly that ECBV is unconnected with EIBV. The Complainant’s position appears to be that ECBV should be treated as an independent acquirer of the disputed Domain Name and that bad faith should be assessed as of the date of ECBV’s alleged later acquisition, whenever that occurred. In the Panel’s view, the key issue as regards the timing of acquisition of the disputed Domain Name is not so much to identify a particular corporate entity upon which to pin the registrant name “Euronet Internet” but whether, on the balance of probabilities, the disputed Domain Name has likely remained under the ultimate control of the same business throughout. And the evidence before the Panel strongly indicates that it has.
Accordingly, the Panel is proceeding on the basis that the disputed Domain Name has remained under the ultimate control of the same business since 1994. In those circumstances, and for the following reasons, the Panel considers that the Complainant has fallen well short of establishing that the Respondent registered the disputed Domain Name in bad faith. The Complainant has neither provided evidence regarding the extent of its reputation nor provided the Panel with no reason to think that the Respondent acquired the disputed Domain Name for any purpose other than the supply of the hosting/telecommunications services. Further, the term “euronet” is a fairly obvious combination of the dictionary words “euro” and “net” and, as one might expect, the Respondent has produced evidence of a vast number of third-party trademarks for this term.
Finally, as regards paragraph 4(b)(i) of the Policy, the evidence produced by the Complainant does not support its claim that it was the Respondent who “reached out” to the Complainant to sell the disputed Domain Name in 2023. Rather, the correspondence indicates that it was the Complainant that made the first approach. Even if the Respondent had made the first move, such a step, taken 30 years after the disputed Domain Name was registered, and following many years of active use of the disputed Domain Name by the Respondent in a different industry to the Complainant, would not have been suggestive of any illicit motive of the Respondent to vis-à-vis the Complainant. Indeed, it seems likely that, as it says, the Respondent’s amenability to the sale of the disputed Domain Name arose purely from the fact that it had decided after many years to cease actively trading under the EURONET mark.
RDNH: Reasons articulated by panels for finding RDNH, as set out in section 4.16 of WIPO Overview 3.0, are present here, namely;
- facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as clear knowledge of a lack of respondent bad faith;
- facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint, including relevant facts on the website at the disputed domain name or readily available public sources such as the WhoIs database;
- the provision of intentionally incomplete material evidence – often clarified by the respondent; and
- filing the complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis.
At around the time it announced a rebrand from EURONET WORLDWIDE to EURONET, the Complainant unsuccessfully attempted to acquire the disputed Domain Name without making any assertion of legal rights and thereafter filed this case without any plausible legal basis. Irrespective of any recent change of ownership, the Complainant knew or should have known that it had no prospect of succeeding in the circumstances of this case, including the longstanding use of the disputed Domain Name in a different industry, the lack of any reputation evidence from the Complainant, the lack of any evidence of targeting and the fact that the disputed Domain Name reflected a relative combination of dictionary terms in use by many other business.
Moreover, the Complaint lacks candour in several respects, as it contained misleading statements, such as describing itself as “a worldwide provider of global telecommunication”; the Respondent “reached out” to the Complainant to sell the disputed Domain Name and the Complainant failed to produce any evidence of the former extensive active use of the disputed Domain Name in connection with hosting/telecommunication services from the archives.
Complaint Denied (RDNH)
Complainants’ Counsel: Eversheds Sutherland (Netherlands) B.V., the Kingdom of the Netherlands
Respondents’ Counsel: IP Twins, France
Case Comment by ICA General Counsel, Zak Muscovitch: If you owned a company called Euronet, wouldn’t you want the domain name Euronet .com for company? Certainly! And if it was already registered, what would you do about it? You might to try to purchase it. If that didn’t work, you might retain a lawyer to see if they can assist you based upon your trademark rights. That common situation appears to have occurred here, but then it took a very unfortunate wrong turn resulting in Reverse Domain Name Hijacking.
The Complainant’s counsel was Eversheds Sutherland, a global multinational law practice and one of the 50 largest law firms in the world with nearly 2,300 lawyers. With 2,300 lawyers spread over several offices and countries, a misstep is bound to occur once in a while, as it apparently did here, with the Panel finding inter alia, that the cases was filed “without any plausible legal basis”, that the Complaint itself lacked candour and contained misleading statements, and finally, that reasons articulated by Panels for finding RDNH, as set out in section 4.16 of WIPO Overview 3.0, are present in this case.
This well-articulated and thoughtful decision needs little comment from me as it speaks for itself. I will however remark upon three aspects of the case that I found particularly helpful.
1. On Supplementals: The Panel admitted the Complainant’s supplemental filing insofar as it responded to the allegation of RDNH in the Response, however also declined to admit the remainder of the supplemental filing since it was repetitive or constitute a standard rebuttal, or irrelevant. The Panel however took care to point out that even if it was admitted, it wouldn’t have made a difference in the outcome. Panels must hold the line on supplemental filings and do as the Panelist did here; allow a supplemental when it responds to RDNH or a fact or allegation that it could not have anticipated in the Response and disallow those pesky supplementals that are just repetitive of the original pleading or continue rebuttals, which are not allowed.
It is well established that such additional submissions are not generally permitted. In J.P.Morgan v. Resource Marketing, WIPO Case No. D2000-0035, the 3-member Panel said:
“Looking at the Rules and the decision in Easyjet Airline Co., Ltd. v. Steggles, (WIPO Case No. D2000-0024), the Panel is persuaded that documents, whether designated “replies” or “rebuttals,” are not called for in the Rules. Paragraph 12 of the Rules provides for Additional Statements only at the Panel’s request, in its sole discretion.”
In Viacom v. Rattan Singh Mahon, WIPO Case No. D2000-1440, the Panel set forth a clear and logical basis for rejecting supplemental filings, and limited it to “exceptional cases” only, as otherwise it would defeat the intention of the UDRP, which is to provide for expeditious and streamlined dispute resolution with minimal resources being expended:
“There can be no doubt that neither the Complainants nor the Respondent has a right to file supplementary submissions subsequent to the Complaint and the Response. Supplementary submissions can only be filed in response to a request for such from the Panel. Accordingly, this Administrative Panel is strongly of the opinion that parties must refrain from purporting to submit unsolicited supplementary submissions. It is, of course, for each Administrative Panel to determine whether or not to request supplementary submissions, taking into account all the circumstances of the particular case (including but not limited to any plea from a party for leave to file further material). Nevertheless, this Administrative Panel considers that it would, and should, be in exceptional cases only that supplementary submissions are requested by a Panel. If requesting supplementary submissions were to become unexceptional, the dispute resolution procedure under the Uniform Policy and Rules would most likely become significantly more resource-consuming to all the actors (i.e. the parties, the dispute resolution service provider, and the Administrative Panel) than is currently the case, as the unfolding scenario in this case demonstrates. Such an outcome seems contrary to the clear intention of ICANN in adopting the Uniform Policy and the Uniform Rules in their present form. A similar view has been expressed in other cases under the Uniform Policy, including Document Technologies, Inc. v. International Electronic Communications, Inc (WIPO Case D2000-0270) and Gordon Sumner, p/k/a Sting v Michael Urvan (WIPO Case D2000-0596).” [Emphasis Added]
The WIPO Consensus View 3.0 confirms that “panels have repeatedly affirmed that the party submitting or requesting to submit an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response (e.g., owing to some “exceptional” circumstance)”. One approach to address the problem of burdensome unsolicited supplemental filings is to adopt a procedure that parties must request permission from the Panel before submitting a supplemental filing based upon a short rationale. Further, that if a Panel accepts a supplemental filing from one party, the other party must be given an adequate opportunity to respond. Such a proposal can be found here, as one of a package of proposals developed by a UDRP exploratory group, of which I am a member.
2. Determining Registration After Date Arm’s Length Transfer and Beneficial Ownership: As the Panel noted, “the key issue [is] whether, on the balance of probabilities, the disputed domain name has likely remained under the ultimate control of the same business throughout” [emphasis added]. This conclusion accords with the well settled case law. As noted in Digest Vol. 4.8, where an unbroken chain of underlying ownership is established, a change in the recorded Whois details will not be considered a new registration for the purposes of the UDRP (See for example, Angelica Fuentes Téllez v. Domains by Proxy, LLC / Angela Brink, WIPO Case No. D2014-1860, and also see; Google Inc. v. Blue Arctic, NAF Claim Number: FA1206001447355), and also see WIPO Consensus View 3.0 at Paragraph 3.9: “Where Respondent provides satisfactory evidence of an unbroken chain of possession, panels typically would not treat merely “formal” changes or updates to registrant contact information as a new registration.”).
3. Who Contacted Whom? Here, the Complainant apparently falsely alleged that a contact of the Respondent “reached out” to the Complainant to sell the disputed domain name” when it was apparently the other way around. This happens all too often and here, the Panelist expressly noted that in fact it was the Complainant that made the first approach. Importantly, the Panel also noted that there wouldn’t have been anything wrong with approaching the Complainant even if that had occurred: “Even if the Respondent had made the first move, such a step, taken 30 years after the disputed domain name was registered, and following many years of active use of the disputed domain name by the Respondent in a different industry to the Complainant, would not have been suggestive of any illicit motive of the Respondent to vis-à-vis the Complainant.” It is hardly unusual for a company to no longer have need for a well-used domain name as a result of a rebranding, acquisition, or even bankruptcy, for example. Such names are commonly and lawfully recycled on the secondary market and generally, there is nothing wrong at all in such circumstances in soliciting a sale to another party that may be interested in the brand.
Respondent’s Pattern of Bad Faith Leads to Transfer
Mediacom Communications Corporation v. beats, NAF Claim Number: FA2402002082274
<mediacombo .com>
Panelist: Ms. Dawn Osborne
Brief Facts: The Complainant is the owner of the mark MEDIACOM, registered, inter alia, in the USA for cable transmission services with first use recorded as 1995. It operates its website at <mediacomcc .com>. The Domain Name registered in 2014 has been used for competing pay-per-click links to third-party commercial sites. The Complainant alleges that the Domain Name is confusingly similar to the Complainant’s mark adding only the letters ‘b’ and ‘o’ and the gTLD .com which do not prevent said confusing similarity. The Complainant further alleges that the disputed Domain Name has been registered and used in opportunistic bad faith to take advantage of the Complainant’s trade mark to confuse Internet users for commercial gain and to disrupt the Complainant’s business. The Complainant also points out that the Respondent has been the subject of a previous adverse decision under the UDRP for registering multiple domain names containing the Complainant’s mark. The Respondent failed to submit a Response in this proceeding.
Held: The use of the disputed Domain Name is commercial, so cannot be legitimate non-commercial fair use. The Respondent has used the disputed Domain Name for competing pay-per-click links not connected with the Complainant. It does not make it clear that there is no commercial connection with the Complainant. The Respondent has not answered this Complaint or rebutted the prima facie case evidenced by the Complainant as set out herein. As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the disputed Domain Name.
Use of competing pay-per-click links indicates bad faith being disruptive of the Complainant’s business and diverting customers for commercial gain also offering competing services indicates actual knowledge of the Complainant and its business. The Panel also notes the adverse decision against the Respondent in another case involving the Complainant’s mark indicating a pattern of bad faith activity. As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and used in bad faith.
Transfer
Complainants’ Counsel: Robert M. Wasnofski, Jr. of Dentons US LLP, Illinois, USA
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: On first blush, a domain name that is a combination of common words such as MediaCombo .com may appear to be a somewhat unlikely selection for a cybersquatter targeting a brand called, Mediacom. Adding to the mix, PPC advertising links could change that initial impression. Here, the Complainant alleged and the Panel found, that the PPC links were “competing pay-per-click links”. That somewhat changes the complexion of things, provided that the links were intentional and truly were targeted towards the Complainant’s cable transmission services. Without a Response denying the intentional targeting of the Complainant via a similar Domain Name and infringing PPC links, it is not looking good, but still the Respondent could conceivably be given the benefit of the doubt because such PPC links are often automated and the Domain Name itself, as aforesaid, seems a somewhat unlikely candidate for cybersquatting on the Complainant’s brand. But the fact that the Respondent had already been found to be a cybersquatter on the Complainant’s brand in a previous case is a deciding factor that is impossible to ignore and the Respondent thereby loses any benefit of the doubt.
Panel: Raw WHOIS Data Could be Updated for Various Reasons
Cabot Brand Co. Ltd. v. R Riggs, NAF Claim Number: FA2403002087031
<cabot .com>
Panelist: Mr. Nicholas J.T. Smith
Brief Facts: The Complainant is a real estate developer of master-planned communities, which has operated since 2009 under the CABOT mark. The Complainant owns rights to the CABOT mark based upon registration with the USPTO (June 6, 2020). The Complainant alleges that the Respondent does not make an active use of the disputed Domain Name and upon being contacted by the Complainant with a settlement offer, the Respondent sought a sum substantially greater than any out-of-pocket costs connected with the disputed Domain Name. The Complainant further alleges that the Respondent registered (or renewed) and uses the disputed Domain Name with knowledge of the Complainant and its rights in the CABOT Mark. Finally, the Complainant submits that the disputed Domain Name changed hands on or around February 10, 2023, and produces the results of a Whois search that indicate that the raw Whois data was updated on that date. The Respondent did not submit a Response in this proceeding.
Held: The Domain Name was registered in 1995. The Complainant’s first use of the CABOT Mark was in 2009. The Panel does not accept the Complainant’s submission that ownership of the Domain Name changed hands on or around February 10, 2023, based upon raw Whois data. However, Raw Whois data can be updated for numerous reasons, including, for example, a change in the name server or a minor change in contact details. Equally, the fact that the disputed Domain Name does not resolve to an active page, whereas in 2021 resolved to a parking page maintained by the same Registrar, is not conclusive evidence of a change in ownership; it is purely speculative. The Complainant’s further submissions that bad faith registration should be found by reason of the Respondent’s renewal of the Domain Name in awareness of the Complainant’s rights are not supported by case law under the Policy, see WIPO Overview 3.0, para 3.9.
The Respondent’s registration of the disputed Domain Name predates the Complainant’s first claimed rights in the CABOT mark, and thus the Complainant cannot prove registration in bad faith per Policy ¶ 4(a)(iii), as the Policy requires a showing of bad faith registration and use. Here, the Respondent registered the Domain Name, which consists of a surname, on February 8, 1995. The Complainant first used the CABOT mark on June 30, 2009. In the absence of any persuasive evidence that the Domain Name has changed hands since 1995, the Panel finds that the Respondent could not have entertained bad faith intentions respecting the CABOT mark because it could not have contemplated the Complainant’s then non-existent rights in CABOT mark at the moment the Domain Name was registered. Therefore, the Panel finds that the Respondent did not register the disputed Domain Name in bad faith.
Complaint Denied
Complainants’ Counsel: Norm J. Rich of Foley & Lardner LLP, District of Columbia, USA
Respondents’ Counsel: No Response
Complainant Had No Common Law Rights at the Time of Domain Name Registration
<resourcex .com>
Panelist: Mr. Steven A. Maier
Brief Facts: The Complainant is a distributor of software relating to electronic health records. The Complainant is the owner of the EU (February 1, 2018) and US (June 18, 2019) trademark registrations for the word mark RESOURCEX. The disputed Domain Name was registered on April 23, 2014 and currently resolves to a holding page stating <biz236 .inmotionhosting .com> and including what appears to be the visitor’s IP address. The Complainant submits that it made two attempts to purchase the disputed Domain Name via a GoDaddy broker, but was unable to obtain any response from the Respondent.
The Complainant alleges that it has used the trademark RESOURCEX since 2010 and provides a link to a website at <resourcex .at> and that the Respondent is not making any use of the disputed Domain Name, whether for the purpose of a website or any other legitimate objective. The Complainant further alleges that the Respondent has asked for USD 100,000 for the disputed Domain Name via the GoDaddy broker and that the Respondent’s price “is totally overpriced and does not reflect the intrinsic value of the domain. This price is clearly only to sell the domain for a profit.”
The Respondent contends that he has used the disputed Domain Name for his own business named “Resourcex” since 2017, but Covid impacted his business and he subsequently parked the Domain Name. The Respondent further contends that the Complainant’s only interest in the disputed Domain Name is that he wishes to buy it and is trying to use the UDRP for an illegitimate purpose.
Held: The disputed Domain Name was registered in April 2014, while the Complainant’s trademarks were not registered until February 2018 and June 2019. The Complainant submits, however, that it used the RESOURCEX mark from 2010 and refers to a website at <resourcex .at> in this regard. It does not, however, provide any other evidence of such claimed use. Furthermore, based on the Panel’s limited independent enquires from publicly available resources, the earliest archived website capture for the website at <resourcex .at> is dated August 3, 2018. The website relates to resource management provided by the Complainant, but (other than in the domain name itself) does not appear to reference the name “Resourcex”. Further, an archived page for the website <schmutterer-partner .at> as of January 2, 2014 (the last available date before the date of registration of the disputed Domain Name) offers services related to “information technology for the medical sector” but does not appear to reference the name “Resourcex”. The earliest indication of the Complainant’s use of the name “Resourcex” on its website is December 2014, after the Respondent registered the disputed Domain Name.
In the circumstances, the Panel finds that the Complainant has failed to establish that it had any common law trademark rights in RESOURCEX at the date the Respondent registered the disputed Domain Name. Furthermore, even if the Complainant had any such rights, the Panel has seen no evidence upon which to infer that the Respondent was aware of the Complainant’s use of the “Resourcex” name, or that it registered the disputed Domain Name to take unfair advantage of the Complainant’s rights in that name. The Complainant cannot therefore establish registration of the disputed Domain Name in bad faith. In the circumstances, the Respondent’s offer to sell the disputed Domain Name for USD 100,000 cannot of itself satisfy the requirements of the third element under the Policy. The Respondent having registered the disputed Domain Name otherwise than in bad faith, the Policy does not preclude him from setting an asking price for the disputed Domain Name at such level as he may deem appropriate.
RDNH: In this case, the Panel accepts the Respondent’s submission that the Complainant has disclosed no reasonable basis for bringing the Complaint. However, since the Complainant is not legally represented, and also the evident failure of communication between the Parties in connection with the offer for sale of the disputed Domain Name, the Panel declines to make a finding that the Complaint was brought in bad faith.
Complaint Denied
Complainants’ Counsel: Internally represented
Respondents’ Counsel: Self-represented