Zak Muscovitch, Esq., Gets UDRP Panel Finding of Reverse Domain Name Hijacking On GTMS.com

Global Transmission Media Solutions of Utah was just found guilty of reverse domain name hijacking (RDNH) on the domain name GTMS.com by a UDRP panel from the National Arbitration Forum

The domain holder was represented by Zak Muscovitch.

The one member panel found that 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. ”

Here are the relevant facts and findings:

Complainant is the registered owner of the trade mark [GTMS Design mark image redacted] (U.S. Registration No. 3,351,273) (the “GTMS design mark”) covering “Installing satellite dishes; satellite dish installation and repair” (International Class 37) and “Planning, development and technical support of electronic communications networks; Technical support, namely, monitoring of network systems; Custom design and engineering of telephony systems; Engineering services, namely, engineering for the Satellite Telecommunications Industry; Technology consultation in the field of Satellite Telecommunications, Content Management, and System Engineering” (International Class 42). The mark is reflected on the trademarks register as having been in use since 2006.”

 

“Whilst Complainant has made various statements towards supporting its claim that Respondent has no rights or legitimate interests in respect of the disputed domain name, the Panel is of the view that Respondent has provided admissible and relevant evidence which demonstrates that he has a legitimate right and interest therein, namely the evidence submitted showing the use of the dispute domain name for e-mail purposes and the printing of his business cards for the Global Trade Management Services business in 2003. ”

“The Panel agrees that the use of a domain name for e-mail is a legitimate interest within the meaning of the Policy”

“The Panel is not persuaded that there is a pattern of conduct that can be said to exist simply from the fact that Respondent has registrations of two other domain names which do not appear to be used. ”

“Respondent has explained that the domain names mentioned, namely <modayil.com> and <saintgregorios> refer, respectively, to the family name of the Respondent’s sister-in-law and to the patron saint of the Respondent’s family in Kerala, India. There is nothing to suggest that these are identical to registered and/or recognizable trade marks. Moreover, these certainly fall short of the standard which ought to be applied to the sort of evidence required to make a finding of a “pattern of conduct”.

 

 

“The Panel also finds that Complainant has failed to establish that the disputed domain name was registered in bad faith. The Panel agrees that there is no way the disputed domain name could be said to have been registered in bad faith when it was registered so many years before Complainant was incorporated as a company and before it commenced use of the GTMS design mark. ”

In the circumstances, since Complainant has failed to establish the first requirement under paragraph 4(a)(iii), namely the registration of the disputed domain name in bad faith, there is no need for the Panel to consider the issue of use in bad faith.”

 

Reverse Domain Name Hijacking

In this case, the Panel is of the view that a finding of Reverse Domain Name Hijacking is warranted.

What is rather clear from the contents of the Complaint is that the main motivation for the commencement of these administrative proceedings stems from a frustration on the part of Complainant in not having been able to obtain the domain name <gtms.com> which corresponds to the initials of its company name and the letters in the GTMS design mark, its attempts to contact Respondent to negotiate a transfer of the domain name having failed.

Complainant was clearly aware that the disputed domain name had been registered since December 1999 and should have realized from that fact alone that it had no basis whatsoever  for alleging bad faith registration on the part of Respondent, which is one of the essential elements required by the Policy.

To use the UDRP administrative proceeding as Complainant’s last resort to “[securing the domain name] for [its] branding to match with [its] trademark” and because of its concern “that a growing number of [its] potential customers will be unable to connect with [them]” constitutes an abuse of the proceedings.

“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, see Sustainable Forestry Management Limited v. SFM.com and James M. van Johns “Infa dot Net” Web Services,WIPO Case No. D2002-0535.

“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.”

This was a Complaint that should never have been filed. Complainant knew that the disputed domain name was registered at least around seven years before it was incorporated and before it acquired registration rights in the GTMS design mark. The Panel therefore makes a finding, pursuant to Paragraph 15(e) of the Rules, that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceedings.

Comments

Comment Policy:

TheDomains.com welcomes reader comments. Please follow these simple rules:

  • Stay on topic
  • Refrain from personal attacks
  • Avoid profanity
  • Links should be related to the topic of the post
  • No spamming. Listing domains, products, or services will get the comment deleted

We reserve the right to remove comments if we deem it necessary.

Join the Discussion