A one member panel just rejected the UDRP brought by LiveOne Group, Ltd. on the domain name CrowdSurfing.com despite the fact that Liveone had an US trademark on the term, the domain name was recently purchased and the domain holder didn’t even bother to respond to the UDRP.
The complainant apparently had the opportunity to buy the domain for around $6,000 through Buydomains.com between May and July of this year.
However Liveone hesitated and the domain was purchased by the current domain holder.
The trademark holder then offered to buy the domain for the same price the currently domain holder paid for the domain in July, which the domain holder rejected and counter offered to sell for $25K.
The trademark holder then filed the UDRP.
Here are the relevant facts and findings from the Decision:
“Since Complainant provides evidence of its United States Patent and Trademark Office trademark registration, the Panel is satisfied that it has trademark rights ‘
“Complainant alleges that the domain name automatically diverts to another domain name also registered by Respondent, <carsurfing.com>, and to an associated website which offers car sharing services. Complainant argues that Respondent’s use of the disputed domain name to redirect Internet users to its own website for commercial gain is neither a bona fide or a legitimate use of the name under Paragraph 4(a)(ii) of the Policy. ”
“Further, Complainant asserts that Respondent lacks rights and legitimate interests because Respondent registered the disputed domain name with the intention to sell it to Complainant.”
“Having reviewed the available evidence the Panel makes the following observations.
“First, Complainant’s business is new. ”
“Its USPTO trademark registration carries a first use in commerce date of April 7, 2011. ”
“The press coverage of Complainant’s business is from 2012 and in one place names Complainant as “one of 2012’s hottest start-ups”.
On the evidence, Complainant’s only website is located at www.liveonegroup.com. ”
“Were it not for the Federal trademark registration of CROWDSURFING (which Panel notes incidentally was only recorded as assigned from its original registrant, Timothy Ganschow, to Complainant on August 12, 2012) and dependent only on the material intended to show public recognition of the Complainant’s business under the CROWDSURFING name, Panel would not support a finding of common law trademark rights. ”
“Secondly, the expression “crowd surfing” has entered popular understanding more than a decade ago and on Panel’s own limited research, it already appears as a listed dictionary term.”
“Thirdly, of itself, Respondent’s car sharing business promoted at www.carsurfing.com seems entirely legitimate and has no likely association in business terms with Complainant’s enterprise. WhoIs records also show that the domain name <carsurfing.com> was first registered in 2004.”
“Fourthly, the Complaint includes a declaration made by the founder of Complainant’s business, Timothy Ganschow, which includes these statements”
“Between May and July of 2012, LiveOne attempted to purchase the crowdsurfing.com domain name from a broker of BuyDomains.
“The broker of BuyDomains represented that the crowdsurfing.com domain name was valued at $8,377, but that the seller would be looking for an offer in the $6,000 range.”
“On July 18, 2012, LiveOne was informed that thedomain name had been purchased.”
“On August 21, LiveOne sent Mr. Shende a letter informing him of LiveOne’s rights in the CROWDSURFING Trademark. The letter also offered to purchase thedomain name for the amount Mr. Shende paid for the domain name and any reasonable transfer expenses. ”
“In response to the August 21, 2012 letter, Mr. Shende contacted me. We have exchanged several emails and telephone calls in attempt to amicably resolve this matter. During our telephone call of September 25, 2012, Mr. Shende represented he would sell us the crowdsurfing.com domain name for $25,000.”
“The Panel draws the following findings. ”
“There is no direct evidence in the Complaint of the fact that, or of the time when, Respondent acquired the disputed domain name. ”
“There is no evidence of the original domain name registrant in 2002.”
“If the registration was still beneficially owned by the 2002 owner the Panel might dismiss the Complaint summarily. ”
“WhoIs data shows that the domain name records were updated on July 30, 2012 but in what way the Panel does not know. ”
“Nevertheless, based principally on the Ganschow declaration, Panel is on balance prepared to proceed on the footing that Respondent acquired the disputed domain name sometime in July 2012 and Panel will treat that time as the relevant time for any assessment of rights or legitimate interests.”
“Whilst the parties are both located in Canada, there is no compelling evidence that Respondent targeted Complainant’s trademark when it acquired the domain name in July 2012.”
“Decisions under the Policy are now aligned on the principle that the existence, per se, of registered trademark rights does not put a respondent on constructive notice of those rights and Panel has already found that the Complaint does not support the existence of common law rights. ”
“Added to this matrix are the facts (a) that “crowd surfing” is a commonly understood dictionary term and that (b) there is at least an argument that the owner of the domain carsurfing.com and the owner of a business behind that domain might wish to acquire the “related” domain name crowdsurfing.com”.
“It follows that there is no cogent evidence to support a finding that Respondent registered the domain name in order to resell it to Complainant, as is alleged. ”
“The Ganschow Declaration is the narrative of a disappointed would-be purchaser which, for undisclosed reasons, failed to secure the domain name at (presumably) auction and which then turned its attention to Respondent in the hope of a second bid attempt to secure a name it desired. Disappointed a second time, it appears from the evidence to have then instructed it attorneys to issue a demand letter which relies on what Panel would describe as an optimistic extension of Complainant’s trademark rights but in any event has very little to do with the UDRP.”
“In short, based on the evidence presented, this Panel sees no clear indication that Respondent has acted in a predatory fashion and, to the contrary, is inclined to find that it has both rights (based on the ordinary meaning of the words, “crowd surfing”) and legitimate interests (based on its current business and domain name holding). ”
“Panel finds that Complainant has failed to make even a prima facie case under the second element of the Policy.”
Of course the complainant already spent more on chasing this domain through the proceeding then it would have cost them to buy it months ago and now they walk away empty hand, left with just a legal bill for its efforts.
A cautionary tale for all over reaching trademark holders