A one person UDRP panel rejected the attempt of the The Restored Church of God of Wadsworth, Ohio, to steal the domain name RT.org from Alexa Properties, LLC of Las Vegas, Nevada.
But the bigger story is the panel failed to find Reverse Domain Name Hijacking (RDNH) despite the panelist couldn’t even attempt to utter the grounds for which she did not issue a RDNH finding.
For one the complainant didn’t have a registered trademark, but alleged a common law trademark to the term “RT”
Second the common law mark at best went back to 2003 while the domain name was registered since 1998.
Third the panel didn’t even address the issue of bad faith finding that the Church failed to present any evidence that it had a common law trademark in the generic term “RT”.
While the sole panelist Harrie R. Samaras spent the entire opinion chatting about how the complainant didn’t have a trademark, even if they did had a trademark it would have been 5 years after the domain was registered and assailed the Church for not presenting an evidence of its trademark or bad faith, when it came to the issue of Reverse Domain Name Hijacking she simply concluded by stating:
“In any event, based on the available record, the Panel sees insufficient basis on balance to conclude that the Complaint was brought in bad faith and accordingly declines to make a finding here of reverse domain name hijacking”
Has this panelist ever made a RDNH ruling?
If she didn’t make it here, I’m not sure what it going to take for her to make a finding.
If a panelist refuses to find RDNH in any case they should not be allowed to hear cases.
Here are the relevant facts and findings:
“Complainant claims common law rights in RT (“the alleged RT Mark”) through commercial use in association with “The Real Truth Magazine” (“the Magazine”) that it publishes monthly.”
“To establish common law rights as a trademark in the alleged RT Mark, Complainant must show the Mark acquired secondary meaning, that the public associates the asserted mark with Complainant’s goods or services. ”
On the record here, the Panel agrees with Respondent, Complainant has not shown any rights in the alleged RT Mark.”
“To begin with, Complainant failed to provide the Panel with any evidence of its use of the alleged RT Mark for even a small amount of time, let alone a time sufficient to establish common law rights.”
Complainant’s assertion of common law rights is based on bald assertions that the Mark has been in “commercial use, in association with The Real Truth Magazine and that “The Real Truth” has been in circulation and used the “RT” mark throughout the U.S. and in other countries for 10 years”.
So the best that Complainant can do is to try to piggyback rights for the alleged RT Mark on its claimed 10-year use of the term “The Real Truth Magazine”.
“Complainant has provided the Panel the cover of the November 2012 edition of the Magazine and a recent front page from the Magazine website – certainly not sufficient evidence even to support the alleged ten years of using the term “The Real Truth Magazine”.
“Nothing on the Magazine cover or the website page shows any use whatsoever of the alleged RT Mark, only use of the term “The Real Truth”.
“Similarly, the subscriber numbers for the Magazine (hard copy and online) relate to “The Real Truth Magazine” not to the alleged RT Mark.”
“Mere assertions of common law rights in a mark, here the alleged RT Mark, are insufficient without the requisite accompanying evidence to demonstrate that the public identifies Complainant’s mark exclusively or primarily with Complainant’s products.”
“Complainant’s claim that the Domain Name “is confusing” people suggests that Complainant might have evidence of actual confusion, but none was made of record.
“Notwithstanding that, the Panel is not persuaded that any confusion is likely to exist. ”
First, how can use of the Domain Name cause confusion with the term “rt” when there is no evidence that “RT” is being used in any capacity, let alone as a trademark. ”
“Complainant offers no evidence demonstrating that the public associates the alleged RT Mark with either The Restored Church of God or The Real Truth Magazine so it is not clear how confusion could occur between the Domain Name <rt.org> and such very different terms as “The Real Truth Magazine” or “The Restored Church of God”.
Because Complainant has failed to meet its burden under paragraph 4(a)(i) of the Policy, no further issues need to be decided.
“In this case, however, the relationship between Complainant’s allegations of common law rights and Respondent’s alleged bad faith registration warrant discussion.
“It has been noted that “[t]he longer the time a disputed domain name has been registered, the more difficult it is for a complainant to prove bad faith registration”.
“Here, Respondent registered the Domain Name back in 1998, but the e-mail exchange aimed at persuading Respondent to transfer the Domain Name to Complainant did not occur until 2012.
“That is about 14 years after Respondent registered the Domain Name.”
“The Panel’s decision in this case, however, 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. Complainant has not provided the Panel with any facts or circumstances sufficient to show Respondent registered the Domain Name in bad faith. ”
“Because Complainant failed to provide the Panel with any evidence to support its allegations of common law rights the Panel has no evidence even to infer bad faith registration when Respondent registered the Domain Name.
“Indeed, the Panel could not even infer that Respondent knew of Complainant’s use of “The Real Truth Magazine” when it registered the Domain Name because Complainant began using that term well after Respondent registered the Domain Name.”
“More specifically, it is undisputed that Respondent registered the Domain Name back in November 1998. At best, Complainant claims to have been using “The Real Truth Magazine” for the past ten years.”
“On the website for “The Real Truth Magazine” at “www.realtruth.org/home.html”, the Panel noticed a tab for “Back Issues” of the magazine dating back to 2003. ”
“And the current issue of the magazine is an Anniversary Issue that has a large “10 YEARS” title on its cover.”
This is some confirmation of Complainant’s claim of using “The Real Truth” and/or “The Real Truth Magazine” for the past 10 years. But this merely confirms that Complainant began using these terms after Respondent registered the Domain Name in 1998 and, so, bad faith registration is not tenable on these facts.”
“The Panel has not addressed Complainant’s arguments regarding bad faith use of the Domain Name because of the omission of proof on bad faith registration.”
On the issue of Reverse Domain Name Hijacking, however the panel wimped out
“Respondent argues that because Complainant cannot demonstrate trademark rights in the alleged RT Mark existed at the time Respondent registered the Domain Name and, thus, that bad faith registration is not possible, an inference can be drawn that the Complaint was brought in bad faith.”
“Paragraph 1 of the Rules defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.
To prevail on such a claim, Respondent must typically show that Complainant knew of Respondent’s unassailable rights or legitimate interests in the Domain Name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith”
“In any event, based on the available record, the Panel sees insufficient basis on balance to conclude that the Complaint was brought in bad faith and accordingly declines to make a finding here of reverse domain name hijacking.”
The domain holder was represented by Roger H. Doumanian, Esq