A UDRP decision released today held in favor of the domain holder on the domain name 7S.com, despite that the fact that the domain holder did not even respond to the UDRP.
The complainant, a German company, holds trademarks on the term “7S”
A majority of the three member panel held in favor of the domain holder based substantially by the fact that he domain name was registered 2 years prior to the trademark.
However one panelist Andrew Frederick Christie filed a dissenting opinion arguing that the domain name should have been awarded to the trademark holder:
“I disagree with the majority’s finding that the Respondent has a right or legitimate interest in the disputed domain name.”
“Prior to pointing the disputed domain name to a generic landing page with PPC links to third parties’ websites, the Respondent pointed the disputed domain name (and numerous other of his domain names) to a website on “categorical geometry” and later to a generic “shopping center” landing page directing to amazon.com. None of the Respondent’s uses of the disputed domain name are of the type described in paragraph 4(c)(i) of the Policy.”
“Although these uses are in connection with an offering of goods or services, they are not, in my view, in connection with a bona fide offering of goods or services (as paragraph 4(c)(i) requires).”
“Where a domain name is used simply to point to a website, I believe there needs to be some semantic relationship between the domain name and the website for that use to be bona fide. “
“To hold otherwise would mean that pointing a domain name to any website – including to a website completely unrelated, in a semantic sense, to the domain name – will trigger a right or legitimate interest in the domain name. In my view, that type of use is not sufficient to give rise to a right or legitimate interest in a domain name. ”
“It is not a bona fide use; rather it is an arbitrary use.”
“This approach to determining whether pointing a domain name to a website gives rise to a right or legitimate interest in it has been recognized by other panels under the Policy, as shown by the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (WIPO Overview). According to paragraph 2.2 of the WIPO Overview: “Factors a panel should look for when determining legitimate use would include … what the domain name is used for (a respondent is likely to have a right to a domain name “apple” if it uses it for a site for apples but not if the site is aimed at selling computers or pornography)”. I believe this logic is as applicable to a domain name that has no obvious meaning (such as “7s”) as it is to a domain name that has an obvious meaning (such as “apple”). Accordingly, in my opinion, it is necessary for there to be a plausible semantic connection between the domain name and the website to which it points for such a use to be a bona fide use for the purposes of paragraph 4(c)(i) of the Policy.”
“In this case, I do not consider that the uses to which the Respondent has put the disputed domain name are bona fide. In none of those uses is there a plausible semantic connection between the disputed domain name and the websites to which it has been pointed. That is to say, there is no plausible semantic connection between “7s” and categorical geometry, shopping or the generic PPC linking landing page. It is notable, but not surprising, that the Respondent did not provide any argument as to how “7s” relates to categorical geometry, shopping or a generic PPC linking landing page. It is not surprising because, in my view, there is no such plausible argument the Respondent could make in relation to this particular disputed domain name.””
“”Finally, I believe the reasoning of the majority has confused principles applicable to trademarks with the principles applicable to domain names under the Policy. While it is true, as the majority state, that “[t]rademark rights are fundamentally grounded in use”, the Respondent has not been using the disputed domain name as a trademark (that is, as a mark indicating the origin of goods or services in trade); rather, the Respondent has been using the disputed domain name merely as a URL pointing to various unconnected websites. Thus, the fact that such use has occurred for more than 12 years does not assist the Respondent in establishing a right or legitimate interest in the disputed domain name if – as I believe – none of this use is bona fide.””
“For these reasons, I would find that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent has failed to rebut this case. Accordingly, I would find that the Respondent has no rights or legitimate interests in the disputed domain name.””
If your a domain holder you may not want Mr. Christie on your panel.