PPC Links Related to Domain Name Demonstrate Legitimate Interest
Most of the time UDRPs are brought to enforce trademark rights. At other times however, they are brought to get a domain name seen as important to a new marketing or branding strategy. The disputed Domain Name was originally created in 1998 and registered by the Respondent it in 2017. What prompted the Complainant to go after the Domain Name in 2023? It wasn’t being used in any manner which targeted the Complainant or which took advantage of the Complainant’s goodwill… continue reading here.
We hope you will enjoy this edition of the Digest (vol. 3.41), as we review these noteworthy recent decisions, with commentary from experts. (We invite guest commenters to contact us):
‣ PPC Links Related to Domain Name Demonstrate Legitimate Interest (starofthesea .com *with commentary)
‣ The Challenge of Proving Targeting in Relation to a Common Dictionary Term (atacadão .com *with commentary)
‣ How to Handle Multiple Respondents (morganstanley-canada .com and morganstanleyca .com *with commentary)
‣ Complainant Takes Shot in The Dark and is Met With Complete Defense (zama .com *with commentary)
‣ Lapsed Domain Name Scooped Up (revued .com *with commentary)
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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!
PPC Links Related to Domain Name Demonstrate Legitimate Interest
<starofthesea .com>
Panelists: Mr. Douglas M. Isenberg (Presiding), Ms. Kathryn Lee and Mr. Georges Nahitchevansky
Brief Facts: The Complainant does not provide any information about itself other than with respect to its trademarks. Specifically, the Complainant states that it is the owner of the US Trademarks ‘GRANDEUR OF THE SEAS’ (registered August 5, 1997); ‘ENCHANTMENT OF THE SEAS’ (registered July 14, 1998); RHAPSODY OF THE SEAS (registered August 18, 1998); and OF THE SEAS (registered November 4, 2014). The disputed Domain Name was acquired by the Respondent in 2017 in an expired auction, and is currently parked with pay-per-click (“PPC”) links labelled “Online Catholic Mass,” “Roman Catholic Church” and “Live Catholic Mass Online.” The Complaint alleges that the “Respondent registered and is using the Domain Name primarily to profit from and exploit Complainant’s OF THE SEAS mark” and that the “Respondent knowingly registered the Domain Name containing Complainant’s OF THE SEAS mark to capitalize on consumer recognition of the OF THE SEAS mark” and “the designation OF THE SEAS is unique and distinctive such that it is unlikely that the Respondent devised the term on its own.”
The Respondent has been in the business of buying, selling, leasing, and developing generic and descriptive domain names since 2007 and contends that he purchased the disputed Domain Name firstly “because he believed the term ‘Star of the Sea’ was a generic religious reference and that it believed no party could claim exclusive rights” and secondly due to “its inherent value as a reference to the Virgin Mary, and the English translation of the Latin term – ‘Stella Maris,’ a term that the Respondent felt was important to own whether it could be developed, sold to a third-party end user, or resold on the secondary market.” The Respondent further contends that the “Respondent’s ownership of the Disputed Domain as an investment because of its increasing inherent value also satisfies the legitimate interest prong of the Policy” and that the Respondent is the registrant of 94 other valuable and memorable Catholic domain names, which do not target trademarks.
Held: In accordance with the section 2.9 of WIPO Overview 3.0, here the PPC links on the website associated with the disputed Domain Name are unrelated to the Complainant or it’s trademarks and instead are solely related to the religious meaning of the phrase “Star of the Sea.” Accordingly, the Panel finds that the Respondent has demonstrated that it has rights or legitimate interests in the disputed Domain Name. Further, it is unclear which, if any, of the bad faith factors, the Complainant believes is applicable to the Respondent’s conduct. Although Complainant refers to the Respondent’s actions as “profit[ing] from and exploit[ing] Complainant’s OF THE SEAS mark,” and “Respondent’s diversionary use of Complainant’s OF THE SEAS mark to redirect Internet users to Respondent’s page,” the facts in the record simply do not support any of this.
Instead, the evidence shows that “Star of the Sea” is a known religious reference to the Virgin Mary and that the Respondent has registered and used the disputed Domain Name in connection with a PPC page that contains links unrelated to the Complainant or the Complainant’s trademarks and instead solely related to the religious meaning of the phrase “Star of the Sea.” Previous panels have found that the use of a disputed Domain Name in connection with a PPC page that provides links connected to a common or dictionary meaning associated with the domain name, and unrelated to a complainant or a complainant’s trademarks does not constitute bad faith. Accordingly, there is no evidence that the Respondent has used the disputed Domain Name in bad faith and, for that reason alone, the Panel concludes that the Complainant has not prevailed on the third element of the Policy.
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. Here, as made clear above, it is obvious that the Respondent has rights or legitimate interests in the disputed Domain Name and that the Respondent has not used the disputed Domain Name in bad faith, because the PPC links on the website associated with the disputed Domain Name are unrelated to the Complainant or it’s trademarks and instead are solely related to the religious meaning of the phrase “Star of the Sea.” The Complainant (who is represented by an attorney) has cited no relevant authority that would support its conclusions to the contrary. Accordingly, the facts demonstrate that the Complainant (via its attorney) knew or should have known it could not succeed as to two of the three required elements. As a result, the Panel finds that the complaint was brought in bad faith, in an attempt at RDNH.
Complaint Denied (RDNH)
Complainants’ Counsel: Sanchez Fischer Levine, LLP, United States of America
Respondents’ Counsel: ESQwire .com PC, United States of America
Case Comment by ICA Legal Counsel, Zak Muscovitch:
Most of the time UDRPs are brought to enforce trademark rights. At other times however, they are brought to get a domain name seen as important to a new marketing or branding strategy.
The disputed Domain Name was originally created in 1998 and registered by the Respondent it in 2017. What prompted the Complainant to go after the Domain Name in 2023? It wasn’t being used in any manner which targeted the Complainant or which took advantage of the Complainant’s goodwill.
The Complainant was filed on April 18, 2023 and the decision in this matter was issued September 22, 2023. Remarkably, the Complainant issued a press release just a couple weeks ago, on October 5, 2023, revealing the name of its newest ship…”Star of the Seas”.
It therefore seems likely that the Complainant commenced this UDRP in anticipation of its announcement of the name of its newest ship. The Panel found that the Complaint was brought in bad faith since the represented Complainant ought to have known that they could not prove two out of the three UDRP elements. It is however also possible that an aggravating factor here, was its possible motivation in bringing the UDRP, namely its interest in obtaining for itself, a domain name corresponding to the brand which it was about to adopt.
Interestingly, this was one of two cases brought by the Complainant at the same time. The other one was brought in respect of the exact match, StarOfTheSeas.com (“Seas” being plural) which was registered in 2015, however it was not defended and the Respondent, possibly as a result, lost the case. Notably the Panel conscientiously issued a Procedural Order “to articulate any bona fides she may have vis-à-vis the Domain Name” in light of the Respondent’s use of the corresponding term in social media, but unfortunately, the Respondent failed to respond to it. Had she done so, she may have been able to explain why she selected this particular domain name, how it relates to her Instagram handle, and whether the PPC links may have belonged to the registrar rather than to her (for more on the issue of PPC registrar landing pages, see Digest Vol. 3.32 and Nat Cohen’s comment therein).
Another interesting aspect from the present case can be found in a footnote to the decision:
“In response to the Center’s request for registrar verification, the Registrar stated: “The registrant of the domain is a client of Epik and is utilizing Anonymize as a private proxy. Anonymize [is] a Whois proxy service provider, which this domain is currently using. Thus, the current registrant is: Anonymize, Inc.” It is unclear from the record what the relationship is between the Registrar and Anonymize, Inc., but the Panel notes that the website at <anonymize.com> states: “Epik is happy to offer you WHOIS Privacy via Anonymize Inc.” Therefore, it would appear that the Registrar is in a position, but has refused, to identify the underlying registrant, as typically occurs in similar proceedings. Further, the Response states that Synergy Technologies is the registrant of the Disputed Domain Name and that “the Registrar is acting in violation of ICANN Rules by not updating the Respondent information upon receipt of a valid Complaint.” For purposes of this proceeding, the Panel considers the Respondent to be Synergy Technologies, LLC.” [emphasis added]
Pursuant to Appendix “E” of ICANN’s Temporary Specification for gTLD Registration Data (the “Temp Spec”); “The Registrar MUST [capitalization in the original text] provide the UDRP provider with the full Registration Data for each of the specified domain names upon the UDRP provider notifying the Registrar of the existence of a complaint, or participate in another mechanism to provide the full Registration Data to the Provider as specified by ICANN”.
The term, “Registration Data” as used in the foregoing provision, is defined in the Temp Spec at Section 2 as; “data collected from a natural and legal person in connection with a domain name registration”.
It appears that the registrar in this case, Epik provides a “proxy service” that substitutes its own “Registration Data” for that of the registrant, thereby resulting in the registrant being the name of the proxy service rather than the actual “underlying” registrant. This practice creates difficulty for respondents who have to take the extra step of proving that they are in fact the owner of the domain name despite not being revealed as the registrant by the registrar. Moreover, this is an important reason that the registrar’s verification statement should be shared by the Provider with both parties, so that such discrepancies can be addressed.
The Challenge of Proving Targeting in Relation to a Common Dictionary Term
<atacadão .com>
Panelist: Mr. Gonçalo M. C. Da Cunha Ferreira
Brief Facts: The Complainant is a major and well-known worldwide leader in retail. In 2007, the Complainant bought Atacadão, a Brazilian chain of warehouse stores established in 1960. In 2022, the company will have over 250 stores and distribution centres in Brazil. The Complainant is the owner of the EU trademark ATACADAO (May 24, 2015); the Brazilian trademark ATACADÃO (October 10, 1978) and another Brazilian trademark ATACADAO (May 25, 1979). The disputed Domain Name was registered on September 5, 2008, and at the time of filing of the Complaint, it did not resolve to an active website. The Complainant alleges that the Respondent registered other domain names incorporating third-party trademarks, and that in 2018, the Respondent listed the disputed Domain Name for sale for a price of USD $500, and at the time of filing of the supplemental filing, the selling price increased to USD $120,000. Therefore, the Respondent is attempting to make commercial gain off the name and trademark of the Complainant, of which he was having prior knowledge.
The Respondent contends that the Complainant trademark is not well known as it is a weak, descriptive mark, not an arbitrary or fanciful mark, lacking secondary meaning, and contains a common expression which per se is nothing more than the type of service that the Complainant provides as an identification of a wholesale market segment. The Respondent further contends that the Complainant cannot claim that it has exclusive rights for using the word “atacadão” in a domain name, otherwise it could have claims to many thousands of businesses/websites using this name as part of the business name and web addresses. The Respondent presents an extensive list of businesses using the word “atacadão” as part of their company names, many of which hold registered trademarks in Brazil incorporating the word “atacadão” and use this word as part of their website addresses.
Held: The Panel notes that the term “atacado” in Portuguese means “wholesale” and the suffix “ão” in Portuguese means “a large one of its kind”, therefore, the term “atacadão” may mean the scale of wholesale is massive. Although the top results of a Google search for the term “atacadao” before September 5, 2008, provided by the Complainant shows many results related to the Complainant, there are other results related to third parties as well. The Complainant presents a list of domain names registered under the name of Nikolai Pavlov which includes a couple of domain names incorporating third-party trademarks. The Respondent asserts that Nikolai Pavlov is a common name. However, even if these domain names were registered by the Respondent, it does not necessarily mean that the Respondent targeted the Complainant when he registered the disputed Domain Name under the circumstances of this case.
The Respondent also owns many other domain names composed of Portuguese terms in the augmentative form such as brasileirão .com, mercadão .com, salão .com, lojão .com, rapidão .com, and portão .com. The use of the disputed Domain Name in 2019 as evidenced by the Complainant appears to have been offering for sale coupons for wholesale in different areas of businesses, corresponding to the dictionary meaning of the disputed Domain Name. Lastly, the Policy per se does not prohibit from selling domain names which have dictionary meanings. Considering the above, and on the balance of probabilities, the Panel finds no reasonable inference may be drawn that the Respondent specifically targeted the Complainant in bad faith to take advantage of the reputation and fame of the Complainant’s mark at the time of registering the disputed Domain Name.
Complaint Denied
Complainants’ Counsel: IP Twins, France
Respondents’ Counsel: No Response
Case Comment by Newsletter Editor, Ankur Raheja: The Respondent noted that the Complainant’s mark corresponded to a descriptive dictionary term in wide usage by many businesses. It was therefore incumbent upon the Complainant to prove that the Respondent registered the Domain Name because of the Complainant and not because of the term’s common dictionary meaning. The Complainant employed what can be a very clever tactic in this regard, i.e. producing historical Google results showing that at the time that the Domain Name was registered, the top Google results showed the Complainant. However, in this particular case, the evidence apparently showed many unrelated third-party usages of the term. Nevertheless, when trying to prove that a Complainant was the target of a registration, this kind of evidence – from prior to the Domain Name registration – can often be helpful.
Left unsaid in this particular case, is that the domain name “atacadao .com.br” is used by the Complainant. It is often the case that Brazilian companies use the .com.br extension and have not registered the .com version, leaving them vulnerable.
The Panel noted that “the Policy per se does not prohibit from selling domain names which have dictionary meanings”. Indeed, putting a Domain Name for sale is not Bad Faith use per se, and it is also not for the Panel to determine if the price asked by the domain name registrant is excessive or not if the Domain Name was registered in good faith. See Sage Global Services Limited v. Narendra Ghimire, Deep Vision Architects, WIPO Case No. DAI2023-0010: “A domainer usually has the intention of reselling domain names at a price in excess of the purchase price. Some domain names sell, and some sit on the shelf unsold. Being a domainer is a risky business and is not always profitable, but trying to make a profit by reselling domain names is not bad faith per se… The Complainant further asserts that the ‘excessive price’ at which the disputed Domain Name was offered for sale is an obvious sign of bad faith on the side of the Respondent. The Panel disagrees.” [Additionally, see the comments in ICA Digest Vol. 3.37].
How to Handle Multiple Respondents
Morgan Stanley v. tony ferris / Shantanu Rangnekar, NAF Claim Number: FA2309002061514
<morganstanley-canada .com> and <morganstanleyca .com>
Panelist: Mr. Richard Hill
Preliminary Issue – Multiple Respondents: The Complainant alleges that the entities which control the Domain Names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. In support of this allegation, it adds that the Domain Names are nearly identical, which were registered (within a few weeks of one another) with the same registrar (GoDaddy) and hosted by the same ISP (Google) and also both of the domain names resolved to similar parking pages. The Panel finds that the Complainant’s allegations do not necessarily indicate that the domain names are under common control: the registrar and hosting service are well known and used by large numbers of registrants; the domain names were not registered on the same day; the resolving pages are parked pages from the hosting service, so their content is not necessarily specifically composed by the registrants.
Thus the Panel finds that the Complainant has not presented sufficient evidence to find that both disputed Domain Names were registered by the same person or entity. Further, in light of the communication from the Respondent, the Panel will rule only on the <morganstanleyca .com> domain name, and it will dismiss, without prejudice, the complaint regarding the <morganstanley-canada .com> domain name.
Brief Facts: The Complainant has rights in the MORGAN STANLEY mark through its registration in the United States in 1992. The mark is registered elsewhere around the world and it is well known. The disputed Domain Name was registered in 2023 and resolves to a website that contains pay-per-click advertising links to products and services that compete with those of the Complainant. The Complainant alleges that the Respondent does not use the disputed Domain Name for bona fide offerings of goods or services, or legitimate noncommercial or fair uses and that the Respondent registered the disputed Domain Name with actual or constructive knowledge of the Complainant’s rights in the MORGAN STANLEY mark. The Complainant cites UDRP precedents to support its position. The Respondent did not file a formal response, however, states that he owns the domain name <morganstanleyca .com> but he does not own the other domain name subject to this UDRP: <morganstanley-canada .com>.
Held: The resolving website displays advertising hyperlinks for products and services that compete with those of the Complainant. Use of a domain name to redirect users to unrelated third-party sites (whether or not they compete with the Complainant) is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Also, the use of a disputed Domain Name to redirect consumers to competing goods or services can be evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). Having established all three elements required under the ICANN Policy for the <morganstanleyca .com> domain name, the Panel concludes that relief shall be GRANTED for that domain name. However, the Panel dismisses, without prejudice, the Complaint against the <morganstanley-canada .com> domain name.
Transfer (Partly Denied)
Complainants’ Counsel: Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA
Respondents’ Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: Here, the Panelist took the approach of dismissing without prejudice, the Complaint against one of the two disputed Domain Names and took carriage of the other. This is generally a good approach when a Complaint is brought against multiple respondents without sufficient proof that they are owned by the same domain name holder. The Complainant is free to file again for the remaining Domain Name and will of course be required to pay a second fee.
Complainant Takes Shot in The Dark and is Met With Complete Defense
Zama SAS v. Koki Kato / Personal, NAF Claim Number: FA2309002060610
<zama .com>
Panelist: Mr. Héctor Ariel Manoff
Brief Facts: The Complainant owns the trademark ZAMA in France and the United Kingdom for classes 9, 38 and 42, filed 2020 onwards. The Respondent acquired the disputed Domain Name in 2014 and has prior rights at least from 1987 on companies with the word ZAMA. The Complainant points out that the domain name is unused, no website has ever been live, and no publicly advertised or searchable services are running on this domain. The Complainant further alleges that the disputed Domain Name was registered with WHOIS information hidden and the only DNS record is one for Google for their current email address, which has gone unanswered as of yet… It appears to have been registered with the intent to squat for 10 years to keep others from using it in commerce and there is a high risk of the potential for extortion or cyber-attacks in the future.
The Respondent contends that he owns the Zama group of companies (Zama Industries Inc, a US company incorporated in 2015, Zama Industries Limited, a HK company incorporated in 1987 and Zama Industries Sdn Bhd, a Malaysian company incorporated in 2016, among others). Finally, he is also the shareholder and ultimate beneficial owner of Zama Office Pte Ltd (formerly Zama Industries Pte Ltd), a company incorporated in Singapore in 2012. The Respondent further contends that he and his family have been using the name “ZAMA” since 1975, long before the earliest registration date of any of the Complainant’s trademarks and that the Zama Office Pte Ltd purchased the rights to “Zama .com” in August 2014. Since 2015, the Zama group has continued to use the disputed Domain Name as its personalised email address domain and the group of companies has currently 10 active email addresses using the email domain name “zama .com”. The nature of the group’s business meant that it did not require a website and the lack of it does not mean that the group is not using the Domain Name.
Held: The Panels finds that the Complainant did not make a prima facie case that the respondent lacks rights or legitimate interests in the domain name under the Policy, (especially based on Respondent’s prior use of ZAMA as from 1987). The Respondent has also proved the acquisition of the disputed Domain Name in 2014 long before the Complainant’s first trademark application (2020). In addition, the Respondent has proved the use of the Domain Name as its personalised email address domain since 2015. Thus this Panel does not find evidence that the disputed Domain Name had been acquired in reference to the Complainant’s trademark. For the reasons set forth above, the Panel finds that the Respondent has rights and legitimate interests in the disputed Domain Name.
The Complainant argues that the Respondent registered the domain name for a potential extortion or cyber-attack. The Panel finds that the mere lack of use of the disputed Domain Name on a website is not sufficient evidence to prove bad faith. In addition, the acquisition of the disputed Domain Name prior to the Complainant’s trademark registrations proves that there was no bad faith by the Respondent. Since the Panel has concluded that the Respondent has rights or legitimate interests in the disputed Domain Name pursuant to Policy, the Panel finds that the Respondent did not register or use the disputed Domain Name in bad faith pursuant to Policy. Thus, the Panel concludes that the Complainant failed to prove that the disputed Domain Name was registered and is being used in bad faith.
Complaint Denied
Complainants’ Counsel: Jeremy Zaccherini, France
Respondents’ Counsel: Javier Yeo of Drew and Napier LLC, Singapore
Case Comment by ICA General Counsel, Zak Muscovitch: The Panel rightly denied the Complaint for all of the clear and conclusive reasons cited in the decision. But why was Reverse Domain Name Hijacking not considered? We must first look to what the Complainant knew before bringing the UDRP because what is disclosed afterwards by a Respondent in its Response, may be news to a Complainant who could not have taken such exculpatory evidence into account in deciding to bring a Complaint. Here, the Complainant could not have known who owned the Domain Name prior to the registrar revealing the underlying Whois information. Nor could the Complainant have known about the Respondent’s Zama group of companies which preceded the Complainant’s trademark rights. Nor could the Complaint have known that the Respondent used the Domain Name for a personalized email address. So it does seem that the Respondent succeeded but that the Complainant did not necessarily proceed in bad faith. The Complaint was based on apparent non-use of the Domain Name and Whois privacy. The Complainant apparently tried emailing the Respondent as well prior to proceedings were commenced, but received no response. In other words, it wanted the domain name for itself but had barely any evidence and took a shot in the dark. Moreover, the Complainant was represented by its marketing manager rather than a lawyer. In such circumstances, it is reasonable to conclude that no RDNH occurred but it should probably have been expressly considered nevertheless.
Lapsed Domain Name Scooped Up
Revued, LLC v. Andrew Jack, NAF Claim Number: FA2309002061242
<revued .com>
Panelist: Mr. Steven M. Levy, Esq.
Brief Facts: The US Complainant is a software/technology retailer providing a website-based plug-in and video review application. The Complainant owns a trademark USPTO trademark registration for the REVUED mark (April 3, 2018). The disputed Domain Name was formerly owned by the Complainant but was inadvertently allowed to lapse. Within mere days after it lapsed, the disputed Domain Name was purchased by the Respondent who erected a website. The Complainant contacted the Respondent through GoDaddy, who replied that it would sell the disputed Domain Name for USD $15,000. The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed Domain Name as it is used for a website that incorporates the same set-up and color scheme as that formerly used by the Complainant and it is not offering any goods or services. Rather, the Respondent is attempting to gather valuable information from the Complainant’s consumers or is seeking to resell the domain name to the Complainant at an exorbitant price.
The Respondent contends that the word “revue” is a common French word meaning “review” and that he owns a business in the United Kingdom called Revued LTD and operates a business-to-business (B2B) review site. The Complainant’s trademark registration is subject to cancellation for non-use as the Complainant’s business entity, Revued LLC has been dissolved by the state of Texas, its app has been disabled and there have been no sales associated with the trademark in over 3 years. The Respondent set up a website using a template and any similarities to the Complainant’s former site are merely coincidental. Finally, at no time did the Respondent contact the Complainant or try to sell the domain name, while the Respondent received an anonymous inquiry from GoDaddy asking if the domain name was for sale.
Held: Upon a review of all the submitted documents and arguments, the Panel concludes that, while the Complainant has made a prima facie case, this has been rebutted by the Respondent at a level sufficient under the Policy. It is worth noting that the Policy does not provide the same level of factual inquiry that is afforded to most court systems around the world and it is an open question whether a forum might reach a different result upon a more in-depth analysis of the case. However, by a preponderance of the evidence presented here, the Panel finds that the Respondent has demonstrated that it is making a bona fide offering of services under the disputed Domain Name. Further, based on its submission of a business registration certificate from Scotland, the Panel finds that there is evidence to conclude that the Respondent is commonly known by the name “Revued” under the Policy.
Further, there is no indication that the Respondent had any hand in causing the deletion of the disputed Domain Name, which the Complaint notes that this was inadvertent. Moreover, the screenshot from the Texas Secretary of State’s website states that the Complainant has ceased to exist in the state or country of formation or has ceased doing business in Texas. This calls into question the current validity of the Complainant’s trademark and its authority to bring the present Complaint. Lastly, the Complainant claims that the Respondent responded through GoDaddy that it would sell the domain to the Complainant for USD $15,000. However, it is apparent from the email exchange that this inquiry was made anonymously and that the Complainant was never mentioned. For the foregoing reasons, and by a preponderance of the evidence presented, the Panel finds insufficient ground upon which to conclude that the Respondent registered or uses the disputed Domain Name in bad faith to target Complainant’s mark under any element of the Policy.
Complaint Denied
Complainants’ Counsel: Melissa Gray of Melissa H. Gray PLLC, Texas, USA
Respondents’ Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: This is truly a frustrating situation for the Complainant. Domain names sometimes inadvertently lapse and if scooped up by someone else, can still sometimes be recovered through the UDRP if the Complainant has trademark rights and can demonstrate that the Respondent had targeted the Complainant. But here, unfortunately for the US Complainant, the person that scooped it up had immediately erected a website, and as such appeared to have rights and a legitimate interest in the Domain Name. The Panel noted that although the “Complainant has made a prima facie case, this has been rebutted by Respondent at a level sufficient under the Policy. It is worth noting that the Policy does not provide the same level of factual inquiry that is afforded to most court systems around the world and it is an open question whether a forum might reach a different result upon a more in depth analysis of the case. [emphasis added] The Panel accordingly ruled based upon the facts before it and within the limited jurisdiction of the UDRP, while acknowledging that a court could come to a different conclusion with its more robust fact finding procedures.