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Posts Tagged ‘Theft’

Theft of “RECENT” “THEY” and “THAN” Not Enough Without Trademark Proof

Monday, March 29th, 2010

In the recent cybersquatting dispute of Taeho Kim v. Skelton Logic FA1305934 (Nat. Arb. Forum March 22, 2010) a single member panel was faced with a dispute over the domains www.recent.net, www.they.net, and www.than.net. Complainaint claimed to have purchased the domains on June 30, 2009 and that they were stolen in December 2009. Complainant contends the domains were ultimately resold to Respondent. As the Panel noted “The Complaint is based on Complainant’s ownership of the domain names and his stated intention to use the marks RECENT.NET, THEY.NET and THAN.NET in the future, even though he does not have a trademark or service mark corresponding to any of the domain names.”

Respondent contends to be a bona fide purchaser of the domain, which were purchased from a common domain marketplace reseller. 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.

The Panel explained that “The Policy is not designed to address cases of theft of domain names, whether brought against the alleged thief or against a subsequent purchaser.” In spite of that statement the Panel chose to review the facts under the policy and stated:

Complainant concedes that he has no trademark or service mark rights and relies solely on his prior registration of the domain names and his stated intent to use marks corresponding to the domain names in the future. Given the generic nature of the second level domains, “recent,” “they” and “that,” the mere acquisition by Complainant of the disputed domain names cannot possibly give rise to trademark rights in RECENT.NET, THEY.NET or THAT.NET. Nor can intent to use give rise to trademark rights.

For this reason the Panel DENIED Complainant’s request for transfer.

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