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Posts Tagged ‘Prior Domain Registration’

Grab Your Popcorn…Cinema Drama Unfolds

Monday, February 14th, 2011

In the recent domain name dispute of Prime Pictures LLC v. DigiMedia.com L.P. (WIPO Case No. D2010-1877, February 2, 2011) a three member panel was faced with a dispute over the domain www.cinemacity.com. Complainant uses the mark CINEMACITY throughout Lebanon, UAE, Jordan and Syria for movie theaters. Complainant claims rights to a Lebanese registered trademark from 2006. However, as there is some dispute over the facts presented by Complainant , in that there appears to be multiple companies that are related as presented by Complainant. The Panel noted that Complainant failed to adequately identify how these companies are related. Respondent registered the disputed domain on September 24, 1998 and has used the website as a parked page since that time.

 In accordance with paragraph 4(a) of the ICANN UDRP Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith.

The Panel noted that there are serious questions regarding the first element. As noted above, there were multiple companies referred to in Complainants filing. As a result, the Panel explained “More seriously there is no evidence at all that any of these companies is connected with the Complainant, Prime Pictures LLC, or that Prime Pictures LLC has any right in this mark on any other basis.” The Panel chose not to seek additional proof or information from Complainant in light of its findings under the other prongs.

The Panel then reviewed the second element, and found that Respondent did not have any rights or legitimate interests in the domain. However, as many of you know, all three of the elements must be found in favor of the Complainant. In moving onto the third element, the Panel made the following findings:

In this case the Complaint contains no evidence of any use of “Cinema City” as a mark or company name prior to September 2005. The Domain Name was registered by the Respondent in September 1998. There is no evidence whatsoever that the Domain Name was registered in bad faith. The third requirement of the UDRP has not been satisfied and the Complaint must therefore be rejected.

Normally the Panels stop their analysis at this point, making findings for Respondent. However, in this case the Respondent claimed Reverse Domain Name Hijacking. Panels have ben very reluctant to make such a finding. This Panel made the following findings:

In the present case, the Complaint correctly identified that the Domain Name was registered in 1998. Given that the earliest date of any registration or use of the mark relied upon in the Complaint was in 2005, the registration of the Domain Name could not have been in bad faith on any interpretation of the facts and cases cited in the Complaint….the Panel considers it unlikely that this deficiency was overlooked by the Complainant’s counsel and more probable that it was deliberately ignored in framing the Complaint. In all the circumstances, the Panel finds that the Complaint was brought in bad faith, in an attempt at Reverse Domain Name Hijacking.

Ultimately, the Panel DENIED the request for transfer and made a finding that Complainant engaged in Reverse Domain Name Hijacking.

RUMBERA Loses Based on Domain Registration Six Years Prior to Use

Thursday, January 6th, 2011

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.

A Fight Over Wood Means Lots Of Splinters

Thursday, December 16th, 2010

In the recent cybersquatting dispute of Greenply Industries Limited v. Matthew Poston WIPO Case No. D2010-1748, November 29, 2010, single member panel was face with a dispute over the domain www.greenply.net. Complainant is a supplier of plywood and laminate to the Indian market and has multiple Indian trademark registrations.  Complainant also maintains a website at www.greenply.com. Respondent registered the disputed domain in October 2008 and filed a Response to the dispute. Respondent filed for a U.S. trademark registration for the mark GREENPLY in February 2008, and it was published for opposition in July 2008. Respondent argued that since the USPTO had moved the application to publication, he believed that the registration of the domain was not in bad faith.

According to paragraph 4(a) of the ICANN UDRP Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that: (i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and (ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) The Domain Name was registered and is being used in bad faith.

The Panel quickly addressed the first element, noting that the domain was identical to Complainant’s mark. The case turned on the second prong. The Panel noted that Complainant failed to present evidence demonstrating business in the U.S. prior to the Respondent’s registration of the domain. Additionally the Panel notes there was nothing in the record to indicate that Respondent’s intention to target Complainant’s brand. The Panel further rejected any contention that there has been confusion based upon a lack of evidence presented.

The Panel did not address the third prong in light of finding that Respondent established rights or legitimate interests in the domain. Ultimately the Panel DENIED the request for transfer.

3D Glasses Not Needed In UDRP Loss

Monday, December 6th, 2010

In the recent UDRP case of X6D Limited v. Telepathy, Inc. (WIPO Case No. D2010-1519, November 16, 2010) a three member Panel was faced with a dispute over the domain www.xpand.com. Complainant is a supplier of 3D solutions for movie theaters and home use and maintains a website at www.xpandcinema.com. Complainant owns a trademark registration for the mark XPAND BEYOND CINEMA and has pending applications for the single word mark XPAND. The disputed domain was registered on June 25, 2003, which was 3 years prior to the alleged date of first use of the marks by Complainant.

Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present: (i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.

The Panel found that Complainant established the first prong, since the essence of the registred mark was incorporated into the domain. In addressing the second prong the Panel noted that Respondent alleged the domain was generic or at least descriptive. The Panel found that the word “xpand” was descriptive as a short hand for the word “expand.” The Panel recognized the commercial value of descriptive words, which when such domains are offered for sale can be considered a bona fide offering of goods or services.

The case ultimately seemed to weigh heavily on the third prong, wherein the Panel explained:

The Respondent acquired the disputed domain name in 2003. The Complainant did not use the XpanD Mark until September 2006, more than three years after the Respondent registered the disputed domain name. The Complainant did not provide any explanation as to how the Respondent could possibly have been aware of the Complainant and the Complainant’s mark when registering the disputed domain name.

After making a finding that Complainant failed to prove all three elements, the Panel moved its attention to Respondent’s request for a finding of Reverse Domain Name Hijacking. The Panel explained:

In the present case, the Complainant did not provide any explanation as to how the Respondent could possibly have been aware of the Complainant and the Complainant’s mark when registering the disputed domain name, which occurred more than three years before the Complainant started using its XpanD Mark. The Panel therefore accepts the Respondent’s allegation that the Complainant is using the UDRP as an alternative purchase strategy after the acquisition of the disputed domain name failed. Therefore, the Panel finds that the Complaint was brought in bad faith, in an attempt of reverse domain name hijacking: The Complainant knew or should have known at the time it filed the Complaint that it could not prove that the domain name was registered in bad faith.

Ultimately the Panel DENIED the request for Transfer.

MY HEALTH Unable To Find The Right Prescription For Success

Monday, August 30th, 2010

        

In the recent domain name dispute decision My Health, Inc. v. Top Tier Consulting, Inc. FA1332064 (Nat. Arb. Forum August 26, 2010) a single member Panel was faced with a dispute over the domain www.myhealth.com. Complainant is owns a trademark for MY HEALTH, related to, among other things, a website for medical professionals. Additionally, Complainant maintains a website at www.myhealthincorporated.com. Respondent filed a Response to the dispute, contending it registered the domain prior to the Complainant ever being in business.

Paragraph 4(a) of the ICANN UDRP Policy requires that the 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 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.

 Both parties made objections to the level of authenticity of documents required, but the Panel explained as follows: “The Panel reminds the parties of UDRP Policy Rules ¶¶ 3(b)(xv), 5(b)(ix), and 10(d), which in sum direct all parties to submit their complete evidence and that the Panel ‘shall determine the admissibility, relevance, materiality and weight of the evidence.’”

Moving onto the substance of the dispute, the Panel quickly found that the disputed domain was identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). In addressing the next prong, whether the Respondent had any rights or legitimate interests in the domain, the Panel explained that Complainant made its prima facie case. The Panel found that “Respondent’s failure to make an active use of the disputed domain name for the last three years is evidence that Respondent lacks rights and legitimate interests in the disputed domain name as Respondent is not using the disputed domain name for either a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).” The Panel also noted that the burden then shifted to Respondent to prove otherwise.

The Panel then detailed Respondents assertions about its preparations for the website as follows:

Respondent argues that it has made efforts to seek funding for its medical website and has thus demonstrated use and preparations to use the disputed domain name in connection with a bona fide offering of goods or services, namely personal healthcare and related services.  Respondent asserts that its goal has been to use the disputed domain name for a consumer healthcare portal website to put healthcare in the hands of patients and doctors, where appointments with doctors can be made, prior visits confirmed, physician consults made online, and informed decisions made when searching for a new physician.  Respondent further asserts that it has conducted a number of meetings to develop the website by either financing or joint ventures. 

Interestingly, the Panel agreed and found that these preparations were a bona fide offering of goods or services. The Panel moved onto the final prong, bad faith, and explained that there was no evidence presented by Complainant of any bad faith purchase or use of the disputed domain.

Respondent asserts, correctly, that there is no evidence that Respondent has either registered or used the domain name in bad faith as Respondent registered the disputed domain name more than fourteen months before Complainant or its MY HEALTH mark even existed.  Respondent indicates that it purchased the <myhealth.com> domain name in early February 2007 for $150,000.   Respondent further contends that this was long before Complainant’s first use of the MY HEALTH mark in mid-April 2008.  The Panel finds that Respondent’s purchase and registration of the disputed domain name nearly fourteen months before Complainant’s first use of its mark in commerce is evidence that Respondent has not engaged in bad faith registration as defined in the Policy.

The Panel, on its own noted that it could be determined that this was a case of reverse domain name hijacking, but since it was not raised nor briefed by either party it would not make such a finding. Ultimately, the Panel found that Complainant failed to establish all the elements and DENIED the request for transfer.

SHOE LAND Was Generic… But Not SHOE ZONE?

Tuesday, September 15th, 2009

              shoe-zone

In the recent domain name dispute decision of Shoe Zone Limited v. Moniker Privacy Services / DNS Admin (WIPO D2009-0946, September 2, 2009) a single member Panel was faced with a dispute over the domain www.shoezone.com. Complainant is a retailer and distributor of footwear throughout Ireland and the U.K. Complainant has multiple trademark registration, including one in the U.K. and a Community Trademark registration.  Complainant maintains a web site at www.shoezone.net. The disputed domain was registered in November 1998. According to the decision, the disputed domain has changed ownership at least three times since its original registration, with Respondent gaining ownership some time after June 2006. Complainant contends that sometime in May 2009 the disputed domain started to have advertising links to competitors of Complainant. Respondent failed to respond to the Complaint.

Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) That the disputed domain name has been registered and is being used in bad faith.

The Panel simply and quickly found that the disputed domain was identical to the mark and that Complainant has rights through its registrations to the mark. Moving to the second element, whether the Respondent had any rights or legitimate interests in the domain, the Panel noted that Complainant made a sufficient prima facie case. The Panel found that there was no suggestion of authorization by Complainant, no evidence of “commonly known” by proof of Respondent, and that the use was clearly commercial through use of the sponsored links. The Panel thus found that Complainant satisfied the second element as well.

Moving to the final element, bad faith, the Panel noted that Respondent’s use of the domain as a landing page with sponsored links, without any explanation from Respondent, was sufficient proof of this element. The Panel also justified finding bad faith due to Respondent’s failure to respond and Respondent’s use of a privacy service.

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

DefendMyDomain Commentary: Compare this case to the SHOE LAND case we previously blogged on (available here), Shoe Land Group LLC v. Development, Services c/o Telepathy Inc. (Nat. Arb Forum 1255365, June 9, 2009). Of course the facts are different, but one has to wonder whether a response by Respondent would have created a different outcome.

“Rare Names” Sees Rare Event…Panel Finds Reverse Domain Name Hijacking

Friday, September 11th, 2009

                  lincs

In the recent domain name dispute, Spinsix Strategic Marketing Design, LLC v. RareNames, WebReg FA1273907 (Nat. Arb. Forum, September 3, 2009), a single member Panel was faced with a dispute over the domain www.lincs.com. Complainant appears to be an marketing firm, which sells computer related online marketing tools. Complainant maintains a web site at www.spinsix.com. Complainant owns a trademark registration for the mark LINCS. Respondent appears to be a domainer and registered the disputed domain in September 2003.

Paragraph 4(a) of the Policy requires that the 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 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.

In addressing the first element, the Panel found that Complainant had established rights to the mark LINCS through its trademark registration. However, the Panel noted Complainant did not provide sufficient evidence of common law rights dating back to the first use date of January 2004. The Panel recognized that Respondent argued that the disputed domain registration date predated the first use allegations from Complainant, but declined to review the information for this element. The Panel found this element satisfied by Complainant.

Moving to the second element, the Panel found that Complainant failed to establish a prima facie case under the Policy. The Panel noted:

Respondent has offered convincing proof that it is in the business of registering generic domain names and displaying advertising that relates to the generic nature of the terms in the domain names. Respondent asserts that engaging in the sale of generic domain names is a legitimate business.  The Panel finds that Respondent has used the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)….Respondent also argues that the term in the <lincs.com> domain name is generic and of common use and therefore, Complainant does not have an exclusive monopoly on the term on the Internet. Respondent has offered convincing evidence that the contested domain name is comprised of a common term, such that the Panel finds that Respondent has established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).

The Panel then simply stated that the disputed domain was registered before Complainant’s first use of the mark, and then concluded that section finding Respondent had rights or legitimate interests in the domain.

The Panel declined to review the bad faith element in light of this finding and instead moved to Respondent request for a finding of Reverse Domain Name Hijacking. The Panel repeated some of Respondent’s arguments, but did not provide much of its own analysis. Respondent argued:

Complainant has attempted to engage in reverse domain name hijacking by filing the instant UDRP case, with the knowledge both that Respondent had rights or legitimate interests in the disputed domain name, and that Respondent could not have registered  the disputed domain name in bad faith, because its registration of September 01, 2003, pre-dated Complainant’s asserted common law usage of the mark in January of 2004.

In light of these arguments, the Panel found that Complainant engaged in reverse domain name hijacking and DENIED Complainant’s request for transfer.

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.

John Berryhill Wins Another Based on Complainant’s Failure to Establish Trademark Rights

Tuesday, March 17th, 2009

In the recent decision of Oystar USA, Inc. v. Domain Administrator info@heavylifting.com HeavyLifting, LLC (WIPO D2009-0025, March 6, 2009)(available here), a single member Panel was faced with a dispute over www.oystar.com. Complainant, Oystar USA is the subsidiary of Oystar Holding GmbH, based in Germany. Oystar operates a website at www.oystar.de. Oystar USA is involved in the packaging and processing industry and operates a website at www.oystarusa.com. Oystar claims to be the owner of the mark OYSTAR used in commerce in the U.S. since June 2007. Respondent, Heavy Lifting LLC, claims that it was not the original registrant of the domain, which was first registered in 2000. Respondent acquired the domain on April 19, 2006.

Respondent’s attorney, John Berryhill, provided some important arguments in favor of a denial. The Panel summarized the arguments as follows:

The Respondent contends that the Complainant has not demonstrated that it has rights in the OYSTAR marks. According to the Respondent, the Complainant is not the owner of the German national registrations for the OYSTAR marks, which the Respondent argues in any event, are of no legal effect in the United States. Even assuming that the Complainant’s German parent has granted its subsidiary the right to use the OYSTAR marks in the United States, the Respondent points out that there are no United States registrations for the marks, and that the USPTO has provisionally refused to extend protection to the OYSTAR marks. Nor, according to the Respondent, has the Complainant demonstrated enforceable rights based on use of the OYSTAR marks in the United States.

The Respondent’s arguments went further to explain:

According to the Respondent, the earliest date of any registration for the OYSTAR marks is a German registration in June 2008 obtained by the Complainant’s German parent, based on an application not filed until late 2007. The Respondent maintains that it acquired the disputed domain name in the spring of 2006. Even assuming arguendo that the Complainant had used the OYSTAR marks in commerce in the United States since June 2007, the Respondent asserts there is no conceivable basis to conclude that the Respondent registered the disputed domain name with the aim of exploiting the Complainant’s then non-existent rights in the marks.

The Panel then addressed the elements of paragraph 4(a)of the Policy which require a finding that (i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the respondent has no rights or legitimate interests with respect to the domain name; and (iii) the domain name has been registered and is being used in bad faith.

The Panel began to address the first prong, where Respondent’s assertions regarding ownership of the mark proved to be fatal to Complainant. The Panel explained:

There is no dispositive basis in the provided record, however, upon which the Panel can conclude that the Complainant is the owner or exclusive licensee of the German registrations, and the United States applications for the OYSTAR marks (also held by the German parent company) are still in examination, and have not achieved the status of registered marks. Hence, the Complainant’s assertion of rights in the OYSTAR marks cannot on the present record be based on registration rights….While the Complainant asserts that is has continuously used the OYSTAR marks in the United States since June 2007, the Complainant has not submitted any evidence to substantiate this claim. The marketing brochures submitted by the Complainant upon examination appear to have been prepared by the German parent for general use by its various subsidiaries. Portions of the materials reflect a creation date of February 2008.

In addressing the nature and amount of evidence presented by Oystar, the Panel stated: “The Complainant has offered no evidence of the length and amount of sales under the marks, the nature and extent of advertising, or other relevant information such as consumer surveys or media recognition.”

Based upon the above stated reasons the Panel found that Oystar USA failed to establish it had any rights to the OYSTAR marks. The Panel elected to skip the remaining UDRP 4(a) prongs in light that finding. The Panel was also tasked with a determination of possible reverse domain hijacking. Based upon other presented evidence of Respondent’s use of the domain, the Panel found that a reverse domain hijacking claim was not merited. Ultimately the Panel DENIED Complainant’s request for transfer.

DefendMyDomain Commentary: We tip our hat to Mr. Berryhill for his insightful arguments in this dispute. The lesson to be learned herein is to make sure the proper Complainant brings the case, or at least to provide sufficient evidence of ownership of the trademark(s).

Prior Domain Registration, Limited Use, Parking Service…Trumps Mark Registration

Thursday, November 20th, 2008

In the recent case of DRB Systems, Inc. v. Lycos, Inc., (Nat. Arb. Forum 1219769, Oct. 9, 2008) a Panel was faced with a determination regarding the domain of www.sitewatch.com. The Complainant owns a registered trademark for SITEWATCH, registered on August 31, 1999, with rights dating back to November 24, 1997. The Complainant appears to offer a computer management system for car washes and quick lubes. The Complainant maintains a website located here. However, the Respondent asserts that the domain was registered in April of 1996.

The Panel addressed the preliminary procedural issue of a deficient additional submission from the Complainant. As explained in Supplemental Rule 7 of from the National Arbitration Forum, parties have specific deadlines to submit an additional submission. The Panel explained that Complainant was deficient in this respect, and that Respondent did provide an additional submission timely. However, the Panel noted, that a preference of substance over procedure caused the Panel to review the materials anyway. Regardless, the Panel noted that the result of the decision would not have changed based upon these additional submissions.

Moving on to the substantive arguments, the Panel explained:

Respondent does not dispute that its <sitewatch.com> domain name is identical to Complainant’s mark.  However, Respondent does contend that Complainant’s trademark rights do not predate Respondent’s domain name registration.  Some Panels have held that Policy ¶ 4(a)(i) requires that Complainant’s trademark rights predate Respondent’s domain name registration in order to satisfy the Policy….However, this Panel disagrees with that line of reasoning.

As a result the Panel found that the domain was identical or confusingly similar. The Panel next addressed whether the Respondent had any rights or legitimate interests in the domain. The Panel made specific findings, which included that Respondent was not commonly known by the disputed domain and that the disputed domain was not comprised entirely of generic terms. The Panel went further and explained:

Complainant contends that Respondent is using the <sitewatch.com> domain name to operate a website that features sponsored links to advertisements for various commercial websites.  Moreover, Complainant contends that from 1996 until 2007, Respondent did not use the disputed domain name for any purpose.  However, the Panel finds that Complainant has not shown that Respondent is not using the disputed 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 pursuant to Policy ¶ 4(c)(iii)….The Panel finds that Respondent made a showing of rights to or legitimate interests through registration that was prior to Complainant’s registration of the mark and through bona fide use that was not shown to compete with Complainant or limit Complainant’s ability to use its mark in a domain name….Further, coupled with Respondent’s registration [of the domain] prior to the date of Complainant’s registration of the [trade]mark, Complainant has not shown that Respondent’s use is directed at diverting those who would seek Complainant’s services to Respondent’s own services or toward preventing Complainant from using a domain name to promote its own business efforts.

The Panel found that Complainant failed to satisfy the second element of the ICANN policy. The Panel still chose to review the final element of the ICANN policy, namely whether the domain was registered and used in bad faith. One of the often cited reasons for proving bad faith is whether the domain owner offered to sell the domain. In this case, the Panel found that both parties made allegations regarding the offer of sale regarding the domain, and that there was not enough evidence present to make a finding of bad faith based on that fact alone. The Panel went further to explain:

Complainant did not show that Respondent’s manner of use competes with Complainant or that it will likely lead to confusion among Internet users as to Complainant’s sponsorship of or affiliation with the resulting website.  While, as Complainant contends, such use may support findings of bad faith registration and use pursuant to Policy ¶ 4(b)(iv), Complainant did not establish this. 

Ultimately, the Panel DENIED the Complainant’s request for transfer or cancellation.

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