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RUMBERA Loses Based on Domain Registration Six Years Prior to Use

In the recent domain name dispute of Pidela Holdings Inc. v. Purple Bucquet / Purple (Nat. Arb. Forum FA1356856, December 31, 2010) a single member panel was faced with a dispute over the domain www.rumberanetwork.com. Complainant is a radio and web broadcasting company using the mark RUMBERA NETWORK. Complainant obtained a registered mark in Panama in May 2010. The disputed domain was registered in August 2004. The Respondent did not file a response.

Paragraph 4(a) of the ICANN Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith.

The Panel quickly addressed the first element, noting that the registration was sufficient to establish its rights in the mark. The Panel found that the domain was essentially identical to the mark. Moving onto the second element, the Panel noted that Complainant presented a prima facie case that Respondent lacked any rights or legitimate interests in the domain. Included in the analysis was a review that Respondent was not commonly known by the disputed domain. Additionally, Complainant submitted evidence of screenshots showing the disputed domain containing links to competing products/services. For those reasons, the Panel found that Complainant satisfied the second prong.

The case turned though on the last element. The Panel noted that Complainant provided evidence only of its trademark registration dating back to May 2010. This was a problem for the Panel since the registration of the domain was six years earlier in 2004. For that reason the Panel concluded that the domain could not have been registered in bad faith.

Ultimately the Panel DENIED the request for transfer.

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