One Complainant, two similar domain names, two different outcomes

Success in UDRP actions largely depends on when trademark rights arise. A pair of recent UDRP decisions underscores the critical importance of a Complainant establishing that its trademark rights arose prior to the time the Respondent registered the disputed domain name. Two different Panels came to two different decisions concerning two very similar domain names (<rocketpay.com> and <rocketpays.com>). The key difference between the two cases is when the disputed domain name was registered relative to the first use of the Complainant’s trademark in commerce.

RocketPay.com

In the case of Rocketgate PR LLC v. Mack Sullivan, an NAF Panel denied the Complainant’s efforts to have the domain name <rocketpay.com> transferred because the Complainant failed to demonstrate the Respondent lacked rights or legitimate interests in the disputed domain name.

The Complainant is in the business of providing online payment services, and claimed trademark rights in its registered mark ROCKETPAY, which it first used in commerce in January 2014. The Respondent registered the disputed domain name nearly 12 years earlier, in November 2002, but as of the time of the filing of the complaint, did not use the disputed domain name in connection with an active website.

The Panel found that the Complainant failed to establish the Respondent lacked rights or legitimate interests. The Panel observed that Complainant only argued that the Respondent was “apparently making no business or other use of the registered domain” and that “there is no active web-page at the address.” Absent any “pre-existing rights which may be implacable to impugn a registration,” the Respondent in this case — who registered the disputed domain name first, prior to the existence of any trademark rights on the part of the Complainant — was entitled to use it for any legitimate purpose.

RocketPays.com

The same Complainant brought an action against a different Respondent over the domain name <rocketpays.com> (Rocketgate PR LLC v. DANIEL CHAVES / ROCKET PAYS INTERNATIONAL). NAF assigned the case to a different Panel. In this case, the Respondent likewise did not use the disputed domain name to establish a website. But the key difference was that the Respondent did not register the disputed domain name until October 2014 — after the Complainant first used the ROCKETPAY mark in commerce, and likewise after it had filed its application to register that mark with the United States Patent and Trademark Office.

Takeaway

While at first glance the two decisions appear inconsistent, after some reflection, and application of the principles underlying the UDRP as an anti-cybersquatting mechanism, one can reconcile the two cases. One must remember that an action for cybersquatting under the UDRP is not the same as an action for trademark infringement. The UDRP seeks to curb abusive registration. In the case where the Respondent acquired the domain name prior to the time the Complainant’s trademarks arose, it is impossible to conclude the registration could be abusive. But in the second case, where the Respondent registered the domain name after the trademark rights arose, one may more reasonably make the inference of abusive registration.

RocketPay.com decision: Rocketgate PR LLC v. Mack Sullivan, NAF No. FA1602001662354 (April 5, 2016)

RocketPays.com decision: Rocketgate PR LLC v. DANIEL CHAVES / ROCKET PAYS INTERNATIONAL, NAF No. FA1602001662361 (April 6, 2016


Evan_BrownAbout the Author: Evan Brown is a technology and intellectual property attorney helping clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, internetcases, for more information about general internet law.

Complainant did not assert rights during pre-action negotiations; Panel finds reverse domain name hijacking

In the case of Bryn Mawr Communications, LLC v. Linkz Internet Servicesa three-member WIPO Panel denied the Complainant’s efforts to have the domain name <eyetube.com> transferred because the Complainant failed to demonstrate that the Respondent lacked rights or legitimate interests, and failed to show that the Respondent registered and used the domain name in bad faith. Moreover, the Panel found that the Complainant engaged in reverse domain name hijacking in pursuing the action.

The Complainant provides online educational resources related to ocular health and practice management for ophthalmologists, and claimed trademark rights in its registered EYETUBE mark, which if first used in commerce in February 2008. The Respondent registered the disputed domain name in December 2005, and used the disputed domain name to establish a parked page with sponsored advertising.

Rights or Legitimate Interests

The Panel found that the Complainant failed to show that the Respondent had no rights or legitimate interests in the disputed domain name. The Respondent established its ongoing “use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services.”

The evidence indicated that the links on the disputed domain name were related to the domain’s generic meaning. The disputed domain name consisted of two generic words, “eye” and “tube,” that have meanings independent of any connection with the Complainant’s business, and that together form a generic phrase related to television programming. Respondent used the disputed domain name in association with these generic meanings. Although the disputed domain name consisted one link to an eyewear retailer, that link was only visible upon a user’s custom search. In any event, the Panel found that the Complainant failed to show how the eyewear retailer was related to Complainant’s provision of educational resources to ophthalmologists.

Bad Faith

The Panel found that the Registrant did not register the domain name in bad faith, because the Respondent registered the domain name prior to the time that the Complainant established any trademark rights in its mark comprising the disputed domain name. Moreover, in this case, the Registrant’s offer to sell the disputed domain name to the Complainant for more than $145,000 did not constitute bad faith.

Reverse Domain Name Hijacking

Under the circumstances of this case, the Panel found that Complainant engaged in reverse domain name hijacking. It found that the Complainant knew or should have known at the time it filed the Complaint that it could not prove one of the essential elements required by the UDRP. The following circumstances supported a finding of reverse domain name hijacking:

  • The Complainant acknowledged in the Complaint that the Respondent had registered the disputed domain name several years prior to the Complainant’s registration or use of its marks.
  • The Complainant must have known at the time that it registered its <eyetube.net>, <eyetube.org>, and <eyetube.info> domain names that the <eyetube.com> domain name was being used by Respondent and might never be available to Complainant.
  • At least three individuals employed by the Complainant initiated communications with the Respondent’s broker regarding the purchase of the disputed domain name between May 2011 and July 2015, and at no time over the course of those four years did the Complainant make any claim of right, reference any trade or service mark, or suggest it was seeking to settle a legal claim of any kind.
  • The Complainant filed its Complaint only after it failed to negotiate a sale of the disputed domain name.
  • The Complaint failed to make any mention of its pre-suit communications
  • The Complainant misleadingly indicated to the Panel that the disputed domain name contained an advertisement related to the Complainant’s business, when the advertisement at issue was generated through the Complainant’s own use of the disputed domain name’s search function and had no relation to the educational services offered by the Complainant.

For these reasons, the Panel found that the Complainant engaged in reverse domain name hijacking.

Bryn Mawr Communications, LLC v. Linkz Internet Services, WIPO Case No. D2016-0286 (March 29, 2016)


Evan_BrownAbout the Author: Evan Brown is a Chicago technology and intellectual property attorney helping clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, internetcases, for more information about general internet law.

Demonstrable preparations to use domain name gave Respondent rights or legitimate interests

In the case of Kevin Michael Gray d/b/a Approve Me v. Progressive Finance LLC / Hostmaster Hostmaster, Prog Finance, LLC, a WIPO Panel denied the Complainant’s efforts to have the disputed domain name <approve.me> transferred.  The Panel held that the Complainant failed to demonstrate that the Respondent lacked rights or legitimate interests in the disputed domain name.

The case provides an example where the Respondent may indeed be infringing the Complainant’s trademark,  but the circumstances do not give rise to cybersquatting as prohibited under the UDRP.

Timeline:

  • January 14, 2014 – The Complainant obtained a U.S. trademark registration for APPROVE ME in connection with “computer software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information”.
  • April or June 2014 – the Respondent acquired the disputed domain name.
  • May 7, 2014 – the Respondent incorporated a company in Utah under the name “Approve.me LLC”.
  • September 2014 – the Complainant learned of the Respondent’s acquisition of the disputed domain name.
  • October 3, 2014 – the Complainant sent a demand letter to the Respondent.
  • September 22, 2015 – the Respondent announces the launch of Approve.Me, a solution for retailers to offer a single application across the full spectrum of finance and lease products.

Rights or Legitimate Interests

The Panel observed that under paragraph 4(c)(i) of the UDRP, a Panel shall find that a Respondent has demonstrated rights or legitimate interests where the Panel finds that, based on an evaluation of all the evidence presented, before any notice to the Respondent of the dispute, the Respondent was using, or making demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.

In this case,  the Panel found that the Respondent had been making demonstrable preparations to launch a business under a name corresponding to the disputed domain name prior to receiving the Complainant’s cease and desist letter. The Panel credited the Respondent’s assertion that it was not aware of the Complainant and its business at the time it acquired the disputed domain name. Despite the Complainant’s assertions, the Panel found no objective evidence that would allow it to infer that the APPROVE ME trademark was in fact well-known or had a substantial profile in the financial services industry, such that the Respondent could be reasonably presumed to have known about it. Without such evidence, and taking into account that APPROVE ME is capable of being used and understood in a descriptive manner in respect of financial services (e.g., in statements such as, “approve me for credit”), there was no basis on the record on which the Panel could find that there was knowledge on the part of the Respondent that would call into question the bona fides of its adoption of the disputed domain name.

Bad Faith

Though it had sufficient grounds to deny the Complaint on the second UDRP element,  the Panel nonetheless also found that the Complainant failed on the third element,  namely,  bad faith registration and use.

There was no evidence that would allow the Panel to infer that the Respondent was aware of the Complainant prior to acquisition of the disputed domain name, and that the Respondent intended to capitalize on the Complainant’s reputation and goodwill. The Panel noted that did not, of course, mean that the Respondent’s activities may not infringe the Complainant’s trademark rights. That was, however, an issue that the Complainant would need to pursue separately in a different forum.

Kevin Michael Gray d/b/a Approve Me v. Progressive Finance LLC / Hostmaster Hostmaster, Prog Finance, LLC, WIPO Case No. DME2015-0015 (March 18, 2016)


Evan_BrownAbout the Author: Evan Brown is a Chicago technology and intellectual property attorney helping clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, internetcases, for information about general internet law.

Panel slaps Complainant with reverse domain name hijacking even though Respondent did not ask for it

In the case of Rack’ n Stack Warehouse (Admin) Pty Ltd v. Chris Carrol, The Rack N’ Stack Warehouse SEQLD, a WIPO Panel denied the Complainant’s efforts to have the disputed domain name <racknstack.net> transferred because the Complainant failed to demonstrate that the Respondent lacked rights or legitimate interests in the disputed domain name, and failed to show that the Respondent registered and used the disputed domain name in bad faith. And the most interesting part of the case came at the end — where the Panel sua sponte determined that the Complainant had engaged in reverse domain name hijacking.

The Complainant and the Respondent are in the same line of business — selling shelving and other storage solutions — but are in different parts of Australia. They both each legitimately purchased separate “branches” of the same business from the original owner of the business.

The Panel found that the Complainant failed to make out a prima facie case on the second UDRP element (rights or legitimate interests). That the Complainant was successful in a trade mark opposition proceeding concerning a mark that was different from the disputed domain name did not demonstrate that, for the purposes of the UDRP, the Respondent had no rights to or legitimate interests in respect of the disputed domain name.

Further, the Respondent demonstrated to the satisfaction of the Panel that the Respondent has been operating a genuine business under its company name (corresponding to the domain name) for nearly seven years, since when he purchased the original owner’s south-east Queensland business. Moreover, even before that time, the Respondent had been operating a business under a similar name (which incorporated the term “Rack’nStack”), with permission from the original owner, in northern New South Wales. Finally, the Panel found that the Respondent had been commonly known by the disputed domain name for purposes of the UDRP.

Though its determination on the second UDRP element was sufficient to deny the complaint, the Panel went on to consider the third UDRP element — bad faith registration and use. The Panel observed that the the Respondent registered the disputed domain name for the purpose of operating a legitimate business, which it legitimately purchased from the original owner. Accordingly, the Respondent did not register the disputed domain name for the purpose of attracting the Complainant’s customers, or to cause customer confusion, but to attract its own customers and to reflect its company name. Any evidence of actual customer confusion because the Complainant and the Respondent were trading under similar names was not of itself determinative of bad faith registration or bad faith use of the disputed domain name.

Interestingly, even though the Complainant did not ask for such a finding, the Panel concluded that the Complainant had engaged in reverse domain name hijacking. It found that the Complainant had launched the proceedings primarily to harass the Respondent. The Panel did not take too kindly to the Complainant’s style — it particularly criticized the way that the Complainant had submitted a Complaint which was incomplete, that did not directly address the second element of the UDRP, and told a selective story in relation to the background to the dispute. In particular, the factual background and relationship between the parties was described only in an annex to the Complaint and was not otherwise referenced by the Complainant. These facts are of central relevance to the questions of whether the Respondent had rights or legitimate interests and whether the Respondent registered and used the disputed domain name in bad faith. The Panel expressed this dissatisfaction by its sua sponte finding of reverse domain name hijacking.

Rack’ n Stack Warehouse (Admin) Pty Ltd v. Chris Carrol, The Rack N’ Stack Warehouse SEQLD, WIPO Case No. D2016-0102 (March 16, 2016)


Evan_BrownAbout the Author: Evan Brown is a Chicago technology and intellectual property attorney helping clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, internetcases, for more information about general internet law.

General allegations of bad faith not enough to prove third UDRP element

In the case of Webster Financial Corporation and Webster Bank, National Association v. Kendall Almerico / Kendall A Almerico PA, an NAF Panel denied the Complainant’s efforts to have several domain names, each comprised primarily of the term “bankroll” (e.g. <bankrollco.com>, <bankrollstartups.com>, and <bankroll.ventures>) transferred because the Complainant failed to meet its burden of proof of bad faith registration and use under UDRP paragraph 4(a)(iii).

The Complainant provides a blog about finance, economics, business, market analyses, investment opportunities and market outlooks, and claimed trademark rights in its registered mark THE BANK ROLL, which it began using in 2011. The Respondent provides a funding platform for equity crowdfunding and JOBS Act related securities transactions, primarily from a website at the <bankroll.ventures> domain name. It filed a U.S. trademark application to register the mark BANKROLL prior to being put on notice of the present domain name dispute, and the examiner at the USPTO did not find that the BANKROLL mark would likely cause confusion with THE BANK ROLL.

The Panel found that the Complainant offered no credible evidence to prove that the Respondent registered the disputed domain names in bad faith. It found that the Complainant’s general allegation of bad faith, namely, that the Respondent would have searched the USPTO records and thereby knew or should have known of the Complainant’s rights, was without merit.

Further, the Respondent failed to demonstrate bad faith through any of the factors found in paragraph 4(b) of the policy. There was no allegation that the Respondent had offered to sell the disputed domain names to the  Complainant or anyone else. The parties were not competitors. The fact that for a time the disputed domain names led to Godaddy-created parked pages, in light of the fact that the Respondent had since redirected the disputed domain names to its own pages, did not support an allegation that the Respondent had attempted to disrupt the Complainant’s business. Finally, the Complainant offered no credible evidence that the Respondent intentionally attempted to attract online users for commercial gain by creating a likelihood of confusion as to the Complainant’s mark.  Nor had Complainant offered any direct proof of actual confusion.

Webster Financial Corporation and Webster Bank, National Association v. Kendall Almerico / Kendall A Almerico PA Claim Number: FA1510001644257, (NAF, December 7, 2015)


Evan_BrownAbout the Author: Evan Brown is a Chicago technology and intellectual property attorney helping clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, internetcases, for more information about general internet law.

Respondent had rights or legitimate interests because of its status as bulk reseller of 4-letter domain names

In the case of Randall E. Kay v. Sebastian Kleveros, a three-member NAF Panel denied the Complainant’s efforts to have the domain name <nvrt.com>  transferred because the Complainant failed to demonstrate that the Respondent lacked rights or legitimate interests in the disputed domain name, and failed to demonstrate the disputed domain name was registered and used in bad faith.

Concurrent Court Proceedings

As an initial matter, the Panel first considered whether it should forbear deciding the present domain name dispute pending federal litigation in the U.S. brought by the Complainant against a number of parties, including the disputed domain name (as an in rem case under 15 U.S.C. 1125(d)). The Panel decided to make a determination in this proceeding because the parties were not identical to the parties in the litigation. Neither party to this proceeding had asked the Panel to abstain from exercising its jurisdiction. It was not certain the Nevada federal court would be able to issue an order which bound the current registrar located in the Cayman Islands (something this Panel could do). Complainant had submitted to the jurisdiction of the courts at the principal office of the registrar in its Complaint. This Panel also had substantial expertise in the subject area, having issued a combined 2,261 decisions. A court could also review the Panel’s decision, so the Panel was not ousting a court of jurisdiction. These factors weighed in favor of the Panel deciding this case.

Rights or Legitimate Interests

By a majority vote (two of the three members), the Panel found that the Complainant had not established a prima facie case in support of its arguments the Respondent lacked rights and legitimate interests under the UDRP.  The Respondent did not know about any claims related to the disputed domain name because the Complainant never served or sent notice to the Respondent regarding the pending in rem action against the domain name. The Panel observed that a four-letter domain is a valuable property and can have many different purposes related to its letters which do not involve a complainant’s mark.  In this case, the Respondent purchased the domain in a batch of 41 four-letter domains.  The Panel further observed that a respondent may have rights or legitimate interests in a disputed domain name where the the Respondent is a generic domain name reseller, depending of course on the facts of the individual case. According to the Panel, the Respondent had rights or legitimate interests based on its status as a generic domain name reseller under the facts of this case.

No Bad Faith

Since the Respondent had rights or legitimate interests in the disputed domain name pursuant to the second element of the UDRP, the Panel found that the Respondent did not register or use the disputed domain name in bad faith under the third element. Specifically, the Panel found that the Respondent had not registered or used the disputed domain name in bad faith because the Respondent had not violated any of the factors listed in UDRP or engaged in any other conduct that would constitute bad faith registration and use.  Apart from those issues, the substance of this case in the opinion of the majority of the Panel was that a bad faith finding would be inappropriate because the Respondent bought the domain name as part of a commercial transaction involving 40 other four-letter domain names.  On the evidence, the Respondent had no intent or knowledge of any potential infringement of the Complainant’s rights.

Randall E. Kay v. Sebastian KleverosNAF Case No. FA1602001659119

 


Evan_BrownAbout the Author: Evan Brown is a Chicago technology and intellectual property attorney helping clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, internetcases, for more information about general internet law.

Complaint failed on bad faith element where there was no evidence Respondent knew of Complainant’s mark

The Complainant’s use of its trademark before the Respondent registered the disputed domain name was not enough in and of itself to show bad faith at time of registration.

In the case of Uline, Inc. v. Hulmiho, a WIPO Panel denied the Complaint seeking transfer of the domain name <uline.com>. It held that the Complainant failed to demonstrate that the Respondent registered and used the disputed domain name in bad faith.

Unlike many UDRP cases which fail on the bad faith element, the Complainant in this case introduced evidence that it began using using its mark prior to the time when the Respondent registered the domain name. But that in and of itself was not enough in the Panel’s mind to demonstrate bad faith use and registration.

The Panel found no evidence that the Respondent had the Complainant in mind when  it registered the disputed domain name. Further, that fact that the disputed domain name appeared to be up for sale at a price likely exceeding the Respondent’s out-of-pocket costs in registering it was of no consequence if the Respondent did not have the Complainant in mind at the time.

And the Panel rejected the Complainant’s argument under Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 that non-use of the domain name showed registration in bad faith. The panel in Telstra concluded that no lawful use could have been made of the domain name. But in this case, the Panel had insufficient information to come to that conclusion. The Panel had no information upon which to conclude that back in 1998 (when the disputed domain name was registered) the Complainant’s trade mark was sufficiently well-known to merit the inference that the Respondent was targeting the Complainant when it registered the disputed domain name.

Uline, Inc. v. Hulmiho Ukolen, WIPO Case No. D2016-0065 (March 13, 2016)


Evan_BrownAbout the Author: Evan Brown is a Chicago technology and intellectual property attorney helping clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, internetcases, for more information about general internet law.

Reverse domain name hijacking found where Respondent’s registration of domain name preceded Complainant’s trademark rights by 14 years

In the case of Dreamlines GmbH v. Darshinee Naidu / World News Inc, a WIPO Panel denied the Complainant’s efforts to have the domain name <dreamlines.com> transferred because the Respondent did not register the disputed domain name in bad faith. Moreover, the Panel found that the Complainant engaged in reverse domain name hijacking by bringing the complaint.

The Complainant began providing international travel agency services in 2011, and claimed trademark rights in its registered mark DREAMLINES. The disputed domain name was registered in 1997, and the Respondent presented evidence that the domain name was reconfigured in 2014 to resolve to a page that features a wingsuit video.

The Panel found that the Complainant failed to satisfy the third UDRP element (bad faith registration and use) because its earliest registered trademark post-dated the creation date of the disputed domain name by some fourteen years. And the Complainant itself was not incorporated until more than a decade following registration of the disputed domain name. The disputed domain name in this case could not have been registered in bad faith in 1997 even if a recent change in use had given rise to use in bad faith so long as there was an unbroken chain of registration (and the Panel found that there was an unbroken chain).

On the issue of reverse domain name hijacking, The Panel was satisfied that the Complainant must or at least ought to have appreciated at the outset that its complaint could not likely succeed. It entered a finding of reverse domain name hijacking in addition to finding against the Respondent.

Dreamlines GmbH v. Darshinee Naidu / World News Inc, WIPO Case No. D2016-0111 (March 8, 2016)


Evan_BrownAbout the Author: Evan Brown is a Chicago technology and intellectual property attorney helping clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, internetcases, for more information about general internet law.

No bad faith where first word in domain name signaled Respondent’s intention to target parties other than Complainant

In the case of AXA SA v. Discover Domains, a WIPO Panel denied the Complainant’s efforts to have the domain name transferred because the Complainant failed to demonstrate the disputed domain name was used and registered in bad faith.

The Complainant provides business, insurance, financial and communications services, and first used its registered mark AXA in 1985. The Respondent used the disputed domain name to establish a website which, according to the Complainant’s evidence, featured pay-per-click links to offers of financial services, including the Complainant’s services.

The Panel found that the Complainant’s evidence of bad faith registration and use of the disputed domain name was simply too “slender”.

Prompted by what the Panel believed to be the “inherent improbability* of any Internet user starting with the word ‘dating’ in a search for the Complainant as a provider of insurance financial services only,” the Panel conducted its own search of the disputed domain name and observed something different than the evidence the Complainant submitted, namely, the Panel observed that all the PPC links on the Respondent’s website referred to dating services.

The Panel went on to conclude that use of the word “dating” as the first word in the disputed domain name showed a clear intention of the Respondent to target some activity entirely different than the Complainant’s provision of goods and servies. The Panel was also mindful of dating sites and which, in the Panel’s view, were more likely to have been the Respondent’s intended targets.

* The Panel’s decision used the word “probability” here, but one can only conclude that to be a typo, as the only sensible reading of the sentence requires the sentence to be “improbability”.

AXA SA v. Discover Domains, WIPO Case No. D2016-0033 (March 7, 2016)


Evan_BrownAbout the Author: Evan Brown is a Chicago technology and intellectual property attorney helping clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, internetcases, for more information about general internet law.

Unauthorized reseller of possible gray market goods had rights or legitimate interests in disputed domain name

The Panel denied the Complainant’s efforts to have the disputed domain name <plastidipsingapore.com> transferred, holding that under the analysis found in the case of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No.D2001-0903, the Respondent had rights or legitimate interests in the disputed domain name.

The WIPO Overview 2.0 distills the Oki Data test and instructs that:

Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include [1] the actual offering of goods and services at issue, [2] the use of the site to sell only the trademarked goods, and [3] the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder. The respondent must [4] also not try to “corner the market” in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles.

The web site at the disputed domain name in this case did not disclose the Respondent’s relation with the Complainant. That notwithstanding, the Panel was of the view that the dispositive element here was “that not only authorized but also unauthorized resellers may fall within [the] Oki Data principles.” As the Complainant stated, the Respondent did not have a direct relation with it. Therefore there was no relation between the Complainant and the Respondent that the Respondent should have disclosed on its web site.

The Complainant initially alleged that the Respondent was selling counterfeit goods, but retracted that allegation in an additional submission. What appeared to be the case, according to the Panel, was that the Respondent was selling genuine products that may or may not have been gray market goods. To the extent that this activity was legal, it was legitimate and could not be considered to be the sort of cybersquatting that the Policy was created to prevent.

Plasti Dip International, Inc. v. Yong Quek Peow, Case No. FA1601001658830 (Nat. Arb. Forum, Feb. 24, 2016)

Evan_BrownAbout the Author: Evan Brown is a Chicago technology and intellectual property attorney helping clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, internetcases, for more information about general internet law.

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