A one person UDRP panel just denied the Alcohol Monitoring System, Inc attempted grab of the generic domain name Scram.com
While the Complainant owned registered Trademarks for SCRAM and SCRAMx with the United States Patent and Trademark Office (Reg. No. 2,902,677), registered November 16, 2004 (“the Trademark”) the panel found that the term was generic and the domain holder didn’t act in bad faith in registering the domain name.
The domain name was acquired by the domain holder for $6,000 in January 2007 and the domain holder rejected a $40,000 offer from the Complainant.
However the panel failed to find Reverse Domain Name Hijacking (RDNH) although I think the panel easily could have.
Here are the relevant facts and findings:
“”The Complainant Alcohol Monitoring Systems, Inc. is an American company, specializing in the monitoring of alcohol offenders via the SCRAMnet software processes.
SCRAM is the acronym for “Secure Continuous Remote Alcohol Monitor” for the alcohol monitoring program that the Complainant markets and claims to manage in the USA, Canada, UK and Australia. This claim is however contradicted with respect to the UK, since the Complainant declares in its Complaint that it intends to do business in the UK.
Both SCRAM and SCRAMx are registered US trademarks of the Complainant. The Complainant has provided documentary evidence to this effect and is not opposed by the Respondent.
The Complainant also provided evidence that the Domain Name is currently actively listed on a Domain Name Auction site.
The Respondent Peter Stranney is the sole owner of the business and Domain Name and located in the UK. The Respondent has experience in web development and online marketing.
In January 2007, the Respondent acquired the Domain Name for US$6,000.
Annex 4 reveals that there was a telephone discussion between the parties in January 2013 for the transfer of the Domain Name where the Complainant invited the Respondent to make an offer.
The Respondent offered to transfer the Domain Name for the amount of US$40,000.
This offer was rejected by the Complainant. The Complainant ended the negotiations by communicating to the Respondent that it would file the present Complaint.
For the reasons that follow, the Panel finds that the Complainant’s claim is denied. Specifically, the Complainant has not satisfied Policy ¶ 4(a)(ii) and ¶ 4(a)(iii).
“The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights and legitimate interest in the disputed Domain Name under Policy ¶ 4(a)(ii). The burden now shifts to the Respondent to show that he does have rights or legitimate interests in the Domain Name
In view of the evidence, the Panel holds that the Respondent has met his burden and demonstrated that he has rights or legitimate interests in the Domain Name
The Respondent has demonstrated before any notice of the present dispute that he had made preparations to use the Domain Name in connection with a bona fide offering of goods or services.
Annex 2 of the Respondent’s materials reveals that ’s purpose is to offer UK businesses the opportunity to advertise goods and services for people wishing to travel to a particular destination within the UK. The business plan provides details as to the Respondent’s preparation to use the Domain Name in connection with that purpose. Such a demonstration is sufficient to establish a legitimate interest in the disputed Domain Name
Therefore, the Complainant’s claim fails on this ground.
The Panel finds that the Complainant has failed to demonstrate any intention of bad faith of the Respondent. SCRAM is a generic term, meaning “to go away quickly.” Transferring such a generic domain name for value is not bad faith unless the registration was undertaken with the intent of selling it to the Complainant or its competitor
Moreover, Annex 5 of the Respondent’s materials explicitly provides many examples of generic domain names transfered or sold for significant value. These generic domain names possess an intrinsic value that, for all intents and purposes, exceeds the costs of registration.
Accordingly, SCRAM is also a generic term whose intrinsic value can go beyond that of its registration costs. From this, it goes without saying that where a Domain Name is a generic term, an offer to transfer the domain name at a price higher than the costs incurred for registration does not necessarily lead to bad faith. Furthermore, in this case, the Respondent did not initiate the discussions for the sale of the Domain Name; it is rather the Complainant who did.
The Panel also finds that the Respondent’s use of the Domain Name was not primarily for the purpose of selling the Domain Name, considering the business plan prepared by the Respondent.
As such, this ground of the Complaint is also dismissed.””
Reverse Domain Name Hijacking
“The Panel finds that there was no Reverse Domain Name Hijacking in this case.
The evidence does not demonstrate that there was harassment or similar conduct by the Complainant in lieu of the knowledge of the Respondent’s rights or legitimate interests in the Domain Name.
While the Complainant may have had knowledge of the Respondent’s rights, the evidence does not suggest that any type of harassment or similar conduct has occurred. Therefore, the Respondent’s request for a finding of Reverse Domain Name Hijacking is dismissed”.