Berryhill Get’s A Finding Of Reverse Domain Name Hijacking Defending A UDRP On Elk.com
ELK Accesories Pty Ltd. of Preston, Australia brought a UDRP against Elk.com of California, on the domain name Elk.com
Elk.com was represented by John Berryhill, Esq.
Not only did the three member panel find in favor of the domain holder, the domain holder got a rare finding of Reverse Domain Name Hijacking (RDNH) against the complainant.
Even better, not only did the panel find RDNH, its gave the complainant and its counsel a pretty good tongue lashing in its comments.
Its turning out to be a very good day in UDRP land for domain holders
Here are the relevant facts and findings by the panel:
“The Complainant operates a fashion business through a single director company with a showroom in suburban Melbourne, Australia and distributes product through third party owned boutiques and wholesalers in Australia as well as a small number of other countries under the brand ELK.
The Disputed Domain Name <elk.com> was registered on June 28, 1995 and acquired by the Respondent in August 2009.
The Respondent uses the Disputed Domain Name for click-through or pay-per-click (“PPC”) landing pages. ”
“”In this case, when the Disputed Domain Name <elk.com> is typed in, it redirects traffic to a PPC landing page containing links for elks, elk hunting, hunting outfitters and hunting travel, with specific references to Rock Mountain Elk, Hunt elk, Mule Deer Hunting, Hunting in Texas, Guided Elk Hunting, Bear Hunting, Outfitters and Hunting Video, sponsored links for Australian Animals, Fishing Gear Online, Barramundi Fishing Lodge, Top Left Hand Bow Archery, Trophy Shop and others and, more randomly, for cars, tennis courts, computer related services, online dating and other links with no readily apparent common theme. ”
“The main thrust of the commercial content on the website is clearly material that relates to elks, wild animals, hunting and kindred subjects all of which are within a broad description of the subject of the domain name, namely the elk. There are no references to fashion accessories, the field of business of the Complainant.”
“The Complainant argues three bases for a finding that it owns trademark rights in the ELK mark: some trademarks registrations, alleged common law usage since 2008, and some applications to register the mark in the USPTO. ”
After a quite long discussion the panel rejected the complainants common law usage claim and accepted only the “trademark rights in the mark ELK in Australia based on trademark Registration Number 1356304 registered on the Australian register on April 15, 2010.”
On the issue of the domain owner having legitimate interest in the disputed domain name the panel found:
“Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The evidential burden then shifts to the Respondent to rebut that prima facie case”
“It is well established that a respondent may well have a right to register and use a domain name to attract Internet traffic based solely on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant ”
“However, this business model is generally recognized under the Policy as legitimate only if the domain name was registered because of its attraction as a descriptive phrase comprising dictionary words and not because of its value as a trademark and if the website to which the domain name resolves is then used to post links that are relevant only to the common meaning of the phrase comprising dictionary words. ”
“The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Complainant has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark. The Complainant further contends that “there has been no indication that the Respondent intends on using the (Disputed) Domain Name for either commercial or non-commercial purposes”.
“However, the Complainant provided evidence that typing in the Disputed Domain Name on February 21, 2012 diverted traffic to a webpage containing advertisements and a number of links for, amongst other things, elk hunting and hunting outfitters and hunting travel, with specific references to Rock Mountain Elk, Hunt elk, Mule Deer Hunting, Hunting in Texas, Guided Elk Hunting, Bear Hunting, Outfitters and Hunting Video, sponsored links for Australian Animals, Fishing Gear Online, Barramundi Fishing Lodge, Top Left Hand Bow Archery, Trophy Shop and others and, more randomly, for cars, tennis courts, computer related services, online dating and other links with no readily apparent common theme. The main thrust of the commercial content on the website is clearly material that relates to elks, wild animals, hunting and kindred subjects all of which are within a broad description of the subject of the domain name, namely the elk. ”
“There are no references to fashion accessories, the field of business of the Complainant.”
“Prima facie, it appears that the Respondent is not misleadingly directing Internet users to a page composed of advertisements and links in connection with the Complainant or the same industry sector as the Complainant’s trademarks and thereby seeking some illegitimate commercial gain”
“In the present case, the links generated appear to arise not because of any association with the Complainant’s trademark, but simply because of the nature of the Internet user’s search request”
“This Panel finds that the Respondent has shown independently of paragraph 4(c) of the Policy that it has rights or legitimate interests in respect of the Disputed Domain Name. ”
“It is well settled that a respondent may have a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is identical or confusingly similar to the trademark of a complainant, provided it has not been registered with the complainant’s trademark in mind”
“The use of the domain name consistent with such good faith belief may establish a legitimate interest”
“The Respondent says it has a legitimate interest in the Disputed Domain Name because it has used, or made demonstrable preparations to use, the Disputed Domain Name since 2009 for bona fide offerings of goods or services. While the Respondent is silent as to whether such date was prior to any notice of the dispute it seems to this Panel the fact that prior to the Respondent taking ownership of the Disputed Domain Name it had been registered for 15 years for reasons other than the Complainant’s specific trademark value, this should, on balance, create a rebuttable presumption that it continued to be registered for reasons other than the Complainant’s specific trademark value that is dispositive of this issue in favor of the Respondent. The Complainant has not made any submission or not tabled any evidence that would dispel such a finding.”
“In view of this, the Panel finds for the Respondent on the second element of the Policy.”
“Because the Complaint fails for the foregoing reasons, the Panel deems it is unnecessary to consider whether Complainant has prevailed under the third element of the Policy, namely, whether the Respondent registered and used the Domain Name in bad faith. ”
“However, for completeness and in view of a finding on the issue of Reverse Domain Name Hijacking that will be made at the end of this decision, the Panel will give a brief statement of its findings with respect to the issue of registration and use of the disputed domain name.”
“The Panel finds that the Disputed Domain Name was not registered in bad faith and has not been used in bad faith. ”
“Essentially, this is for two reasons.”
“First, the Panel has already noted that the registered trademark that the Complainant is able to rely on was not registered until April 15, 2010, but that the Disputed Domain Name had been registered 15 years before that date, on June 28, 1995 and, indeed, that it was registered 13 years before the Complainant was incorporated in 2008.”
” Even the year when the Respondent acquired the Disputed Domain Name, 2009, was before the trademark was registered.”
“That being so, it was impossible for the Respondent to be motivated by bad faith toward the Complainant at the time the Disputed Domain Name was registered. There was therefore no registration of the Disputed Domain Name in bad faith.”
“Secondly, there has been no use of the Disputed Domain Name in bad faith as its use for the purpose, principally, of advertising goods and services applicable to the elk, is entirely legitimate. Moreover, there is no evidence that the Respondent pretended that it was the Complainant, advertised goods that the Complainant sells, tried to confuse Internet users, sought to damage the Complainant or its business or engaged in any other bad faith activities.”
On finding Reverse Domain Name Hijacking the panel said:
“RDNH, is defined in the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
“Moreover, paragraph 15(e) of the Rules provides as follows: “If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
“In the present case, the Panel considers that the Complainant is represented by Counsel who even on a rudimentary examination of the Policy and its application in this area should have appreciated that the Complaint could not succeed where the Respondent’s domain name had been acquired by the Respondent two years prior to filing the ELK trademark application.”
“The Respondent submitted that “whether the Complaint was filed in bad faith is a question which goes to the state of mind of the Complainant at the time the Proceeding was brought”.
“Egregiously, the Complainant’s Counsel held the incorrect belief that the Disputed Domain Name was registered by the Respondent for thirteen years prior to the Complainant’s existence. “
“Only in the Respondent’s Reply is the Complainant’s incorrect belief corrected by the admission, unhelpful to its own defense, that it purchased the Disputed Domain Name in 2009, still prior to registration of the Complainant’s ELK trademark in 2010.”
“The Respondent states “the Complainant does not consider it the least bit odd to claim that such a registration was undertaken with a bad faith intent directed toward the Complainant. Not one word in the Complaint addresses this glaring oddity” and allegations of reverse domain name hijacking have been upheld in circumstances where the registration date of the domain name at issue preceded the dates of the complainant’s trademark registration”
“In reaching its conclusions on Reverse Domain Name Hijacking, the Panel has also been influenced by the following considerations.”
“The Complainant made two principal assertions regarding bad faith registration and two more on bad faith use: (i) that the Respondent registered the Disputed Domain Name in a deliberate attempt by the Respondent to “take advantage of a popular and commonly used acronym or phrase Domain Name which could be used by other entities with a real connection to the acronym or phrase” and (ii) that by doing so “the Respondent has registered the (Disputed) Domain Name for the purpose of disrupting the business and activities of those persons/business proposing to use the word “Elk” and in particular the Complainant’s business and activities” (iii) that the Respondent “does not operate a website at the (Disputed) Domain Name” and (iv) “that the Respondent has not used the (Disputed) Domain Name as an operating website since the date of registration”.”
“As the evidence provided by the Complainant itself showed, however, none of these assertions had any basis in fact.”
“Accordingly, the Panel accepts the Respondent’s allegation that the Complaint was filed in willful disregard of the requirements of the Policy.”
“It is clear to the Panel that the Complainant knew or ought to have known that the Respondent’s registration and use of the disputed domain name could not, under any fair interpretation of the reasonably available facts, have constituted registration and use in bad faith.”
” The Panel therefore finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. ”
“The Complainant’s statement in paragraph 1 of the Complaint that “the Complainant wishes to secure the domain name and has made previous attempts to secure this domain name” indicates that the Complainant is using the UDRP as an alternative purchase strategy after the acquisition of the Disputed Domain Name failed.”
“Initiating domain name dispute resolution proceedings necessarily involves putting the parties to a considerable expenditure of time and in many cases cost and the Policy must not be used unless the complainant has a reasonable and credible belief it is entitled to succeed.”
“In particular, proceedings must not be commenced in an unjustifiable attempt to pressure a domain name owner into releasing a legitimately held domain name predating any trademark rights held by the complainant”
“In that regard it should also be said that the Complainant has entirely misconceived the nature of the proceedings it has brought. It says in the Complaint that it, the Complainant, “is a more appropriate owner and to which it has better rights that the Respondent.” It has been said many times that this is not the test or even one of the tests of success in UDRP proceedings, which are concerned with abusive registration of domain names.”
“Finally, it should also be said that it was the Complainant who, on no evidence at all, accused the Respondent of acting in bad faith.”
“That, itself, is an act of bad faith and is part of the reason why the Panel has made the finding of Reverse Domain Name Hijacking.”
“Such allegations should not be made lightly or without cogent evidence to support them and certainly not where, after obtaining instructions, it must have been apparent to the Complainant that no such allegation could properly be made against the Respondent.”
“Indeed, in a curious inversion of the roles of the Complainant and the Respondent, it was the Complainant who tendered evidence that the Respondent’s advertising links on its website were mainly within the genus of the elk and activities associated with it and hence entirely legitimate and in good faith.”
“For all of the above reasons, the Panel therefore makes a finding of Reverse Domain Name Hijacking.”
Debrett G. Lyons
The Hon Neil Brown Q.C.
Dated: May 14, 2012