Posts Tagged ‘generic’

Panel tells Alcohol Monitoring Systems to SCRAM

Thursday, April 18th, 2013

In a recent domain name dispute over the domain www.SCRAM.com a single member panel denied a request to transfer. See Alcohol Monitoring Systems, Inc.v. Peter Stranney (Nat. Arb. Forum FA 1488482, April 11, 2013). Complainant, offering continuous alcohol monitoring systems and operates a domain located at www.alcoholmonitoring.com. Complainant is the owner of the trademark SCRAM with rights dating back to at least 2003. Complainant alleges that the disputed domain is not functioning site is a sample word press site which is not active and is not used as a commercial website only as a placeholder. Complainant also noted that the respondent offered to sell the domain for approximately $40,000 pursuant to an invitation to sell the domain name. The Respondent provided a defense and response to the allegations noting that the disputed domain name incorporates a generic term and therefore is not exclusive to the trademark holder. The Panel found that the respondent is the sole owner of a business located in the UK. The Respondent also has experience in web development and online marketing and acquired the domain in January 2007 for approximately $6000. The Panel found that Respondent indicated an intention to focus the disputed domain on development for a traveling business to be launched in approximately August or September 2013

Paragraph 4(a) of the ICANN UDRP 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.

In addressing the first element, the panel noted that the respondent did not oppose complainants claim to its trademark rights. The panel explained that complainant only valid registered trademark and that it was identical or confusingly similar to the demeaning. Therefore the panel found that this factor have been met by complainant.

Regarding the second element rights or legitimate interests, the panel found the complainant made a prima facie case the respondent lack rights religion interest in the domain name. If you’ve the evidence however the Panel found that respondent met the shifted burden and demonstrated that he did have rights or legitimate interests in the domain name under the policy section 4(a)(ii) and 4(c). The Panel noted that prior to any notification of the dispute that the Respondent made preparations to use the domain name in connection with a bona fide offering of goods or services. Respondent’s materials revealed that he developed a business plan for the opportunity to advertise goods and services for people wishing to travel to particular destinations within the UK. The business plan provided details regarding Respondent’s preparation of the domain with that purpose. For those reasons the Panel found the Complainants second prong allegations failed.

Despite the fact that Complainant failed to meet the second prong the Panel still chose to review the third prong of elements regarding registration in use in bad faith. The Panel noted that “scram” is a generic term and that transferring such a generic term for value is not bad faith unless the registration was undertaken with the intent of selling it to a Complainant or its competitor. The Panel noted that generic domain names possess intrinsic value that for all intents and purposes exceed the cost of registration. For those reasons the Panel noted that scram as a generic term has intrinsic value that can go beyond on the cost of registration. Accordingly the Panel found the Complainant failed to satisfy the sprung as well.

The Panel also reviewed an allegation of the first domain name hijacking but found that there was no evidence of reversed meaning hijacking in this instant case. The Panel noted there was no evidence of harassment or similar conduct by Complainant in lieu of knowledge of Respondents rights or legitimate interests.

As a result, the Panel denied Complainant’s request to transfer the disputed domain.