Phase Eight (Fashion & Designs) Limited of London, just lost its bid to get the domain name phaseeight.com through a UDRP.
Unlike the case we discussed yesterday, this panel was most concerned that nine years had passed from the date of registration to the date of the complaint.
The panel refused to find Reverse Domain Name Hijacking (RDNH) based on the fact that the domain was parked and registered under privacy.
Here are the relevant facts and findings by the one member panel:
The Complainant is a United Kingdom corporation with its principal office in London, United Kingdom. First established in 1979 (and under its present name in 1983), the Complainant is involved in the production and retail sales, both in its own branded stores and in boutiques located in third-party stores, of clothes, handbags, jewellery and hats.
The Complainant has held trademark registrations for PHASE EIGHT (the “PHASE EIGHT Mark”) internationally, including the United States, the location of the Respondent. The PHASE EIGHT Mark was first registered as a Community Trade Mark on June 7, 1999, and was applied for and registered in the United States on March 7, 2008, and January 20, 2009, respectively.
The Complainant also maintains an official website at “www.phase-eight.co.uk”. The Complainant also has numerous stores located in the United Kingdom, Germany, Ireland and Switzerland.
The Domain Name <phaseeight.com> was registered on April 10, 2004.
The Domain Name redirects to a website (the “Respondent’s Website”) that consists of a series of links to third party sites with titles such as “Dresses”, “Women Clothing Stores” and “Ladies Fashion”. Such websites are normally operated on a pay-per-click basis.
“The Domain Name has been registered for almost 9 years.
“The longer the time a disputed domain name has been registered, the more difficult it is for a complainant to prove bad faith registration”
“There was no explanation for Complainant’s delay in filing the Complaint. Although the Panel’s decision in this case that Complainant has failed to establish bad faith registration does not rest simply on the passage of time between registration of the Domain Name and Complainant’s assertion of its rights, it is a fact that the Panel cannot ignore”.
“There is no evidence that the Respondent has engaged in a pattern of conduct of registering domain names (including the Domain Name) to prevent trademark owners from registering a corresponding domain name.”
“There is no evidence that the Respondent has ever registered a domain name other than the Domain Name. Nor is there any evidence that the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor: the Complainant and the Respondent are not competitors.”
“There are no circumstances that indicate that the the Respondent has registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant.
“There is no evidence that the Respondent ever attempted to sell the Domain Name until the commencement of the proceeding. ”
“On January 29, 2013, the Respondent’s attorney made an approach to the Complainant indicating that his client was amenable to a settlement, but no formal financial offer was ever made. ”
“Based on the evidence before it, including the length of time the Domain Name was held and the failure to otherwise offer the Domain Name for sale, the Panel cannot conclude from the Respondent’s conduct in exploring the possibility of a settlement that when the Respondent registered the Domain Name in 2004, it did so primarily for the purpose of selling the domain name registration to the Complainant or one of the Complainant’s competitors for an exorbitant price ”
“The Panel finds on the balance of probabilities that the Respondent did not register the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.”
“The Domain Name was first registered in 2004.
The onus is on the Complainant to prove that the Respondent registered and used the Domain Name in bad faith. In the present proceeding the Panel is not satisfied that the Complainant has discharged its onus.
It has provided no evidence that the Respondent knew or should have known of the Complainant at the time of Registration.
The Respondent has provided a plausible reason for registering the Domain Name and some (limited) evidence in support of its claims. The Respondent’s conduct in holding the Domain Name for 9 years without attempting to sell the Domain Name or contact the Complainant in any way provides further support for its assertion that it did not register the Domain Name with the Complainant in mind.
In the absence of a finding that the Domain Name was registered in bad faith it is not necessary to reach a conclusion on whether the Domain Name is used in bad faith.
On the issue of Reverse Domain Name Hijacking,
“The Panel is not persuaded that the circumstances of this case justify a finding of reverse domain name hijacking.”
“At the time the Complainant commenced the proceeding the Respondent’s Website redirected to a pay-per-click site.
“The Respondent has provided no evidence that the Respondent’s Website had ever been active or that there had ever been any information publically available about any Phase Eight movie. Furthermore the Domain Name had been registered using a privacy service, so there was no way the Complainant could investigate the Respondent and its business background. In those circumstances the Panel finds that the Complainant had a plausible basis for its Complaint.”
“The Panel also rejects the Respondent’s assertions that the Complainant contained “numerous misrepresentations in hopes of wrongfully realizing its unlawful goals”. Under the Policy, the Complainant is not obliged to provide evidence of its trade mark rights in the location of the Respondent and its failure to do so, while weakening its case, does not amount to a misrepresentation.”