UDRP Panel Rejects Claim of TM Holder On The Generic Domain Name; Six.com Despite $2M Offer For Sale
In a UDRP panel decision that will be published tomorrow, the domain holder, beat back The Complaint of SIX Group AG of Zürich, Switzerland on the domain name Six.com.
The domain holder, Xedoc Holding SA of Luxembourg, was represented by Paul Keating of Law.es, Spain.
To summarize, the complainant held a trademark for the term Six in a number of countries; the domain was parked prior to 2011 and pointed to an adult site after; the domain holder offered to sell it to the complainant for $2 Million Dollars.
Unlike some UDRP panels who have held a substantial asking price for a domain against the domain holder, in this case the panel found the price to be reasonable:
“”The Panel accepts that the Disputed Domain Name, which is a .com domain name and consists of a generic three letter word, may hold considerable inherent value as, in fact, shown by the Respondent in a valuation that it had conducted.”
Although the panel was less than thrilled that the domain had been directed to an adult site, the panel undertstood that Six is a common typo for Sex and found it to be a legitimate use.
Here is the relevant facts and finding by the three member WIPO panel.
“The Complainant is a Swiss stock exchange operating primarily in the Swiss financial sector, under the trade mark SIX.”"”
“”The Complainant is present in 24 foreign countries, with the largest locations in these countries being Paris, Vienna, Stockholm, Stamford, Connecticut (United States of America) and London. ”
“The Complainant’s 2011 fiscal year showed an operating income of CHF 1,257,655,000. ”
“The Complainant first registered the trade mark SIX in 1989, as a Swedish registration obtained on July 10, 1989. ”
“The Complainant also owns two other trade mark registrations for SIX, being International trade mark registrations acquired in October 2008 and March 2009 respectively. ”
“The Disputed Domain Name was registered in 1995 and was acquired by the Respondent in 2004. :”
“Up until approximately January 2011, the Respondent used the website associated with the Disputed Domain Name in connection with Pay-Per-Click (PPC) landing pages. ”
“Thereafter, the website was redirected to an adult content website, namely “www.sexvideos.com”, which is owned by the Respondent. ”
“The Complainant approached the Respondent anonymously in December 2010 to purchase the Disputed Domain Name and received a counter offer for USD 2 million in response.”
“”The facts of this matter are that the Respondent acquired the Disputed Domain Name in 2004. At that time the Complainant owned a Swedish trade mark registration dated July 1989.”"
“The initial, pre-2011 use of the Disputed Domain Name was in connection with PPC links and the Panel is prepared to accept the Respondent’s evidence that there was a single entry to “finance” in January 2006 and that this single link to a general term is not directly linked to the Complainant. ”
“PPC websites are not in and of themselves unlawful or illegitimate. ”
“Much depends on whether the links are contextually related to the defined meaning of the domain name in question or whether there is targeting, or a taking of an advantage of another mark in the process of generating advertising revenue. “:
“The Panel accepts the Respondent’s evidence that reference to “finance” which is a category link, does not specifically indicate a targeting of the Complainant. The Panel also takes note of the general nature of the other links on the page submitted by the Complainant in support of its argument of targeting, and also those having appeared prior to and following the January 2006 use complained of, as submitted by the Respondent. “”
“The post 2011 use of the Disputed Domain Name in connection with adult content, as deplorable as it may be, also can not in and of itself be said to be illegitimate.”"
“The Panel takes account of the fact that there is extensive third party use of the term “six”, both as trademarks and as domain names, and that it cannot by any stretch of the imagination be considered famous or exclusively associated with the Complainant. ”
“The Panel also takes account of the reasons offered by the Respondent for the change in content of the website attached to the Disputed Domain Name to adult content. ”
“The Panel accepts that the Respondent’s decision was to increase the traffic to its website following investigations that it had undertaken concerning the traffic sources that arrived at the Disputed Domain Name, which shows that “six” is considered a common search term for sex.”
“The Panel finds that the Respondent’s post 2011 use also does not show that the Respondent lacks legitimate interests in the Disputed Domain Name.”
“In this UDRP proceeding, there is no evidence that the amount that the Respondent sought as a consequence of the offer made by the Complainant to purchase the Disputed Domain Name involved taking advantage of whatever goodwill attached to the Complainant’s mark. ”
“The Panel accepts that the Disputed Domain Name, which is a .com domain name and consists of a generic three letter word, may hold considerable inherent value as, in fact, shown by the Respondent in a valuation that it had conducted. After all, the Complainant’s offer was unsolicited and anonymous and made no reference to any trade mark rights.
The Complainant has not carried its burden of proof under this Policy head.
“The lack of any evidence of the Respondent targeting the Complainant or its trade mark also precludes a finding that the Respondent selected and registered the Disputed Domain Name to take advantage of the Complainant or its mark. ”
“The Respondent asks the Panel to rule that the Complaint represents an attempt by the Complainant at Reverse Domain Name Hijacking. ”
“The Panel finds that there is no evidence to show that the Complainant did not believe it had a legitimate case under the UDRP based on the information available to it when the Complaint was filed. The evident weakness of the Complainant’s UDRP Complaint is not sufficient in itself for a finding of Reverse Domain Name Hijacking.”
“Accordingly, the Panel declines to enter a finding of Reverse Domain Name Hijacking against the Complainant.”