How bad was Horizon’s case?
Consider that the domain holder didn’t even file a response and the panel on its own initiative found RDNH.
Here is what the one member panel Paul M. DeCicco, said in part on the issue of RDNH:
“In bringing its Complaint and as discussed above, Complainant overtly disregards facts and law which should have been well known to Complainant prior to filing; namely that the at-issue domain name domain name was registered about six years prior to Complainant having any possible trademark interest in the OPULENCE mark(s),and that it is black letter in all but very specific circumstances a UDRP complaint must fail when the complainant lacks trademark rights at the time the at-issue domain name was first registered.”
“Since Complainant, through Counsel, knew, or should have known, that its Complaint should, and likely would, fail but nevertheless choose to file the Complaint anyway, the only purpose for doing so must have been in the hope that the reviewing panel would overlook Complainant’s lack of rights at the time the domain name was registered and erroneously rule in Complainant’s favor.”
“Alternatively, Complainant may have filed its losing Complaint to intimidate an unwitting domain name’s owner into making a favorable deal with Complainant, rather than risk an unfavorable decision where he or she would get nothing. Filing a complaint for either of these purposes represents an abuse of the UDRP process.”
Here are the rest of the facts and findings of the one member panel:
“The at-issue domain name was first registered in 2004.
OPULENCE is a generic dictionary word.
Complainant’s rights in the OPULENCE marks, if any, manifested no earlier than October 13, 2010.
Complainant filed trademark registration applications for the SOUTHERN FLORIDA OPULENCE mark with the State of Florida on or about January 31, 2011.
Complainant filed a trademark registration with the USPTO for the OPULENCE mark on September 25, 2012. As of the date of this decision, a trademark registration has not been issued.
Respondent registered and used the at-issue domain name before Complainant had rights in any of the OPULENCE trademarks.
Identical and/or Confusingly Similar
Complainant fails to demonstrate that it is has rights in a mark pursuant to Policy ¶4(a)(i).
Complainant presents the Panel with its trademark applications to the USPTO and to the State of Florida for the marks OPULENCE and SOUTH FLORIDA OPULENCE respectively.
However, it is well settled that an application, without issuance, does not establish a Complainant’s trademark rights under the Policy.
Although trademark registration is not necessary to show rights under paragraph 4(a)(i) of the Policy, and a complainant may demonstrate such rights by showing that it has common law trademark rights in a relevant mark, in the instant case there is insufficient evidence for the Panel to find common law rights regarding the OPULENCE or SOUTHERN FLORIDA OPULENCE marks. Since the Complainant lacks the requisite rights in a mark, it is not necessary need for the Panel to further consider whether the mark and the at-issue domain name are identical or confusingly similar.”
“While finding that Complainant lacks rights in a mark might be the end of the Panel’s inquiry in that it precludes a decision in favor of Complainant, the Panel nonetheless elects to consider the remaining Policy ¶4(a) factors.
Rights or Legitimate Interests
Complainant suggests that Respondent has no rights or legitimate interest in the at-issue domain name because Respondent was dissolved in November of 2011.
The dissolution, implies Complainant, divests Respondent of any contractual rights to the at-issue domain name.
Additionally, since Respondent never made an active use of the domain name opulence.com and Respondent only used the opulence.com domains name as either a parking or landing page, Respondent has no rights or legitimate interests.
Complainant does not, and cannot, show Respondent’s bad faith under Policy ¶4(a)(iii).
Opulence.com domain name was first registered in 2004. These two facts foreclose the Panel from finding bad faith registration and use under Policy 4(a)(iii)
Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right.
“As this Panel has set forth in prior decisions, it is axiomatic that if a complainant does not have trademark rights at the time of an at-issue domain name’s registration, there can be no bad faith registration on the part the domain registrant/respondent.”
“The record in the instant case contains absolutely no evidence to support any contention that might allow an exception. Even if Complainant currently had rights in OPULENCE or one of the related at-issue marks, such rights would not magically extend to Respondent’s domain name or relate back to a time six years before the OPULENCE marks were claimed to have been first used in commerce.”
Therefore, the Panel concludes that Complainant fails to meet it burden of proof regarding Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii).