AriGoldberger just successfully defended a UDRP on the domain name Stage.com, from a complaint brought by Specialty Retailers, Inc. which owned a trademark on the term “Stage”, despite the fact that the domain name was parked and that the domain holder offered to sell the domain to the Complainant for hundreds of thousands of dollars.
Here are the relevant facts and finding by the TWO member panel:
“Complainant has used the STAGE mark in commerce since 1969 and has acquired a trademark registration with the United States Patent and Trademark Office Complainant, Specialty Retailers, Inc., is active in the retail business. Complainant has used the STAGE mark in commerce and in connection with retail store services, since 1969 and has acquired a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the mark (Reg. No. 1,525,762 registered February 21, 1989).”
“Respondent, a Canadian resident, registered the disputed domain name on June 4, 1997.”
“Respondent has only made a limited use of the disputed domain name and currently uses the disputed domain name for pay-per-click advertising”
” In 2012, Respondent’s representative has approached many companies, including Complainant, regarding their potential interest in purchasing the disputed domain name in the price range of $300,000- $500,000
“The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). ”
“The Panel finds that a respondent is free to register a domain name consisting of common terms and that the domain name currently in dispute contains such common term. ”
“For multiple years, Respondent did not use the disputed domain name in a way that was considered a violation of Complainant’s trademarks and Complainant itself is of the opinion that it had no indication of Registrant’s alleged subjective intent at the time of registration.”
“Respondent has recently offered to sell the disputed domain name to at least 10 parties for an amount vastly exceeding Respondent’s documented out-of-pocket costs directly relating to the disputed domain name. ”
“However, the Panel is of the opinion that there are no other circumstances indicating that the disputed domain name was registered primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant. ”
“According to the Panel, there are no indications that the Respondent targeted the Complainant, a trademark or service mark holder or any of their respective competitors when, in 1997, registering the disputed domain name, consisting of a dictionary word. ”
“Therefore, the Panel is of the opinion that it is not evidenced that Respondent registered the disputed domain name in bad faith. ”
”
Respondent has mentioned the possibility of finding reverse domain name hijacking in the instant case on the part of Complainant. In this regard, the Panel finds no evidence that the Complainant had lodged a vexatious action and accordingly rules out such possibility.”
Great News! Congratulations, to Ari Goldberger!
That guy is good.
Sure they are both dictionary words but STAGE is no CHASE.
Congrats Ari
Great news, Its about time our side won one. I can’t to wait to hear what happens with Rick in saveme.com dispute!
Don
Can anyone show me evidence that according to ICANN a trademark owner does not have rights for a generic domain?
In addition, if the owner of the TM did not even ask for the domain, can a registry say that the domain is unavailable for registration b/c there is a TM owner somewhere out there for that generic term?
Love this:
“The Panel finds that a respondent is free to register a domain name consisting of common terms and that the domain name currently in dispute contains such common term. ”
Forget whether the investor bought it to sell it how about when the company was founded and the trademark granted they had no intention of being a website
That’s why there are trademarks so the same word can be used when it doesn’t compete
Apple has a trademark to make records
Another Apple has a trademark to sell records
Trademarks that specify to sell records in retail stores and over the Internet are broader
In 1989 there was email, aol and expensive IP lawyers who should have understood the future and protected their client
Their business was based on someone walking into a location and walking out with an order
They weren’t even a mail order business
Had they got a trademark on offering goods to a customer, taking money and delivering to the door without the need for stores, salespeople and customer visits like Sharper Image or J Peterman at the time- then one could say their trademark covered electronic commerce- if they had that name as a 1-800 # etc
But here 12 years later their business gets hurt not by someone’s registration of their domain, but competitors eating their lunch who embraced the Internet and beat them to the punch- It’s Amazon hurting their biz, bloggers reviewing fashion, friends sending friends to better selections and lower prices
Fortunately for them this name isn’t taken forever and given what they spend on rent and ads, it’s a small price to pay to cut their losses and have a giant head start advantage to innovating the future
ps looked them up- they have 800 stores, 13K employees and a billion in sales the domain is cheap
and their mission statement makes it clear they are brick and mortar – reads like the anti-net
“Our mission is to be America’s leading small town and neighborhood retailer dedicated to delivering desirable brand name family apparel with exceptional value and service!”
btw, Stage is the holding co name- business done under Bealls and others
Trifecta!
In my opinion, offering the domain to the TM holder is bad faith. The domain owner probably knew ahead of the time – before contacting the TM holder – that they could make a huge profit from selling the domain to them.
Whereas the domain is highly generic, the domain owner attempted to sell the domain to Speciality Retailers. He must have known the TM holder held “Stage” to target them. People will suggest this is a good decision; however, there evidence (IMO) the domain owner is at fault.
It doesn’t matter if the domain name precedes a TM. Because if you try to sell the domain name to a trademark owner, you are engaging in cybersquatting. It is different when the buyer comes to you, rather than you go to them with a conflicting domain (TM).
Stage is a common term. However, the domain owner did try to sell the domain to a TM holder. In such a way, the domain owner is trying to profit off of the TM holder at an inflated price. He could have offered the domain to another end-user than take a risk dealing it to the TM holder.
Even though the domain owner never registered the domain in bad faith, there is some evidence of bad faith (offering to sell to TM holder). The same applies if the domain owner allowed the domain to drop and then another domainer won it an auction – using the domain in bad faith such as parking it with conflicting search links and or to make an attempt to sell to the end-user with the TM.
The content above and below are based on my opinion. I doubt people will assess the real facts. They will congratulate the domain owner based on his generic domain name instead of his attempt to sell to the TM holder. Great domain name, but bad decision to offer it to the TM holder.
In the abstract – the idea of offering for sale to someone who later gets TM – I can’t really see your reasoning for seeing this as bad faith.
Anyone who registers a trademark would be on notice of the existence of a matching domain name registered to someone else. It would be found in the trademark search.
And the person registering the TM would have to consider that to obtain that domain name, he would probably have to pay for it in a private sale.
So the good faith thing to do is never ever to offer the domain name to the TM registrant for a price? What does that achieve?
Your reasoning may be sound. I just can’t follow it.
Would you risk offering AdWord dot com (if they own it) to Google? You know they own the AdWords TM and also have first use. It is not wise to sell a video game name to a video game company that owns the TM.
You can take the chance to sell to a TM. Be prepared to deal with the consequences. What if a domain name predates the TM? You win this domain name in an auction. Would you try to sell the domain name to the best possible end-user with a TM?
If you feel confident, then take a risk. In most cases, it is best to operate under the radar with good domain names with multiple meanings (IMO).
If Google didn’t own the domain name