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Posts Tagged ‘Domain Lapse’

An F-Bomb Is Not For Everyone- Jumping On Lapsed Domain Causes Injury

Tuesday, March 24th, 2009

In the recent decision of FBomb Clothing c/o Joel Jordan v. Domainly.com (Nat. Arb. Forum 1245522, March 16, 2009), a single member Panel was faced with a dispute over www.fbomb.com. Complainant has operated a sportswear clothing company for extreme outdoor sports since late 2002. Complainant claimed to mistakenly let the domain registration lapse after forgetting to pay the renewal fees. Complainant contends that Respondent immediately registered the disputed domain upon its lapse and parked the page with an offer for sale. Complainant and Respondent then entered into some negotiations to purchase the domain back. Those negotiations fell apart after Respondent demanded additional funds.

UDRP Panels are required to analyze each case by reviewing a three prong element test which includes proving that (1)  the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the 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 first made some initial findings, which included the following:

Complainant has submitted as evidence of its use of the FBOMB mark the following: its registration of its fictitious business name with the San Diego County Recorder; its California State Seller’s Permit; a sample manufacturer’s invoice; and screenshots of its website resolving from the <fbomb.com> domain name as they appeared in 2002 and 2008.  (These screenshots were provided by using the Way Back Maching from InternetArchive.org.)  Based upon this evidence of Complainant’s Internet-based business, the Panel concludes that Complainant has established sufficient secondary meaning the FBOMB mark to establish common law rights in the mark pursuant to Policy ¶ 4(a)(i).

Based upon an establishment of trademark rights, the Panel reviewed the first prong and made a quick finding that Complainant had satisfied this element. The Panel Next addressed the second prong, whether the Respondent had any rights or legitimate interests in the domain and made the following observations:

Though Complainant does not argue such, the Panel finds that Respondent is not commonly known by the <fbomb.com> domain name pursuant to Policy ¶ 4(c)(ii) because the WHOIS information identifies Respondent as “Domainly.com,” and Respondent has not asserted otherwise…. According to Complainant, Respondent has used the <fbomb.com> domain name solely to offer it for sale, first generally and later through an auction.  The Panel finds that Respondent has not used the <fbomb.com> domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)….Respondent allegedly registered the <fbomb.com> domain name on that same day, and immediately began offering it for sale.  The Panel finds that this further evidences Respondent’s lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).

Determining that Respondent did not have any rights or legitimate interests in the domain, the Panel moved onto the last prong, whether Respondent registered the domain in bad faith. The Panel found that “Since Respondent has allegedly not used the <fbomb.com> domain name for any reason other than to offer it for sale, the Panel concludes that Respondent registered the <fbomb.com> domain name primarily for the purpose of selling it.” The Panel also noted that since the domain was immediately registered after it lapsed, this was further evidence that Respondent’s registration was in bad faith.

Ultimately, the Panel found that Complainant satisfied all three elements, and ordered the domain to be TRANSFERRED.

Don’t Forget to Renew Your Trademark-Otherwise Domain is Lost

Monday, September 29th, 2008

A company found out the hard way, that not only must you remember not to let your trademark registrations lapse, but you must remember to renew your domain registrations. In O’Reilly Automotive, Inc. v. Bjarne Lorenzen FA 1220459 (Nat. Arb. Forum Sept. 24, 2008), the domain transfer was DENIED and Mr. Lorenzen of Denmark was able to keep the registration of www.partscity.com. Complainant is an automotive parts retailer who was the owner of federal registrations (Reg. Nos. 2,312,510 and 2,233,940) for the mark PARTS CITY. Unfortunately, those registrations were cancelled on December 31, 2005 and October 28, 2006. Complainant did get a new registration for PARTS CITY on July 15, 2008 (Reg No. 3,465,437). Complainant operated the disputed website until it inadvertently lapsed on June 10, 2003. The Respondent registered the domain on August 23, 2003. The decision does  not indicate how Complainant was using the domain prior to its lapse, nor why it did not notice the loss of the domain for the two months prior to its acquisition by Respondent.

The Panel reviewed each of the three (3) elements of the UDRP policy. First, the Panel noted  that Complainant had not established the identical and/or confusingly similar element. Although this element seems to not require a timeline of trademark ownership, the Panel relied upon other decisions which established that Policy ¶4(a)(i) assumes the Complainant’s rights must predate Respondent’s domain name registration. The Panel noted, “the UDRP was not established to assist current business owners in correcting poor business decisions of the past.”

The Panel also found that the Complainant had not established the second requirement of Rights or Legitimate Interests. In an effort to prove bad faith, Complainant’s own allegations that Respondent is a competitor selling automotive parts, helped to support the finding that Complainant’s rights are therefore junior to Respondent’s registration of the domain. The panel further noted:

Complainant would have the Panel find that it has protectable rights in the domain name despite letting it lapse and languish for months while Respondent has no such rights despite validly registering the unclaimed name and holding it in an undeveloped state for years. Holders of valid domain names are not required to develop them in any particular way within a fixed time or risk losing them, especially when they are not using the domains in a manner that is offensive to the rights of another.

Third, the Panel reviewed the Bad Faith element. The Panel noted that “Complainant’s assertion that merely holding a parked domain disrupts its business because it can not use that domain name for its own benefit does not satisfy this element. Fair competition should not be confused with bad faith use or registration.”

Ultimately, the Panel DENIED the Request for Transfer.

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