Beehive.com, LLC a corporation formed in the State of Delaware, lost a UDRP brought against the domain holder Alliance Capital Management of New York.
The Disputed Domain Name beehive.com is registered with Melbourne IT Ltd (the “Registrar”) which is generally a brand protection company adding to being an unusual case.
The one member panel found that the complainant didn’t meet any of the three requirements for a UDRP.
The complainant’s trademark application as an intent-to-use application, didn’t give it trademark or other rights to the domain, the domain holder was using the name legitimately although quite lightly in the 12 years it owned it and that the domain holder did not engage in bad faith although indicated they would not sell the domain for less than $100K.
The panel took time to note that the parties seem to have an agreement way back in 2006 for the sale of the domain name for $80,000 but the transaction never concluded.
What is not explained in the decision is how or why the complaint registered their company name as Beehive.com LLC way back in 1991, when they never appeared to own the domain name Beehive.com
It appears the domain holder did not ask for a finding of Reverse Domain Name Hijacking (RDNH) however the panel still could have found it in their own right but did not go down that road.
Here are the facts and findings by the panel:
“Complainant is a limited liability company formed in the State of Delaware, U.S. Complainant is solely an Internet social media business without a traditional store front or “brick and mortar” presence. As such, the foundation of Complainant’s business is based upon its ability to create a website presence that highlights its brand (BEEHIVE).”
“Complainant claims to be the owner of U.S. Federal Trademark Registration No. 85573362 for the word BEEHIVE (the “BEEHIVE Mark”) with three class designations all relating to online services. The Disputed Domain Name was created on September 24, 1991.”
“Respondent is a U.S. based corporation. Complainant’s Mr. Allan Gleisinger has had conversations with Respondent’s Sr. Vice President, Counsel and Corporate Secretary, Ms. Mona Bhalla in regards to purchasing the Disputed Domain Name.””
“Ms. Bhalla said that Respondent would only sell the Disputed Domain Name for USD 100,000.”
“Respondent challenges the enforceability of the BEEHIVE Mark. Respondent alleges that the BEEHIVE Mark registration is an intent-to-use application which has not yet been approved by the United States Patent and Trademark Office. ”
“Complainant has not contested Respondent’s assertion.”
“Therefore, the Panel finds that U.S. Federal Trademark Registration No. 85573362 is not a proper basis for asserting enforceable trademark rights in this proceeding.
“Complainant has not developed a theory of common law trademark. Therefore, the Panel finds that Complainant has failed to show enforceable trademark rights and Complainant cannot meet the requirements of the Policy, paragraph 4(a)(i).
Complainant has sustained its burden of coming forward with allegations that Respondent lacks rights or legitimate interests in the Disputed Domain Name.
Respondent contends that it has rights and legitimate interests in the Disputed Domain Name.
The use to which the Disputed Domain Name has been put was in a unix-to-unix-copy intranet site known as the Research Platform used for Respondent’s business of asset and investment management. In addition, the Disputed Domain Name was used for at least one employee’s email address. While the site was not available to the public, it was in service for the sharing of research within Respondent.
Complainant alleges that any use of the Disputed Domain Name occurred only after the filing of this proceeding. Respondent has filed declarations attesting that a predecessor, Sanford C. Bernstein, has used the Disputed Domain Name since 1993.
Respondent further demonstrates that it acquired the Disputed Domain Name through acquisition in 2000, and has used it continuously since then.
The Panel finds that Respondent’s use preceded the filing of this proceeding and that this use was in connection with a bona fide offering of goods and services pursuant to the Policy, paragraph 4(c)(i). Therefore, Complainant has failed to show that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Respondent contends that the negotiation for the purchase of the Disputed Domain Name by Complainant originally began in 2006 and culminated in an offer to purchase from Complainant of USD 80,000.
Respondent further contends that to have countered with a purchase price of USD 100,000 does not demonstrate any bad faith use.
Furthermore, Complainant has presented no evidence of bad faith registration. The Panel notes that the Disputed Domain Name was registered years before the Complainant filed its trademark application with the United States Patent and Trademark Office.
The Panel finds that the four (4) non-exclusive criteria of the Policy, paragraphs 4(b)(i-iv), do not include elements regarding any appraised value for the Disputed Domain Name, the relative importance of the Disputed Domain Name between the Parties or a refusal to reduce an offered sale price.”
“No convincing evidence has been presented to support a determination of bad faith”.
“The element of offering to sell the Disputed Domain Name needs to be shown in conjunction with a passive holding of the Disputed Domain Name. In this matter, Respondent has shown a use of the Disputed Domain Name sufficient to establish rights and legitimate interests.
Therefore, the Panel finds that Complainant has failed to show sufficient facts to support a finding that the Disputed Domain Name was registered and used in bad faith pursuant to the Policy, paragraph 4(a)(iii).”