Palace Sports & Entertainment LLC of Auburn Hills, Michigan, lost its bid to grab the domain name Palace.com away from the domain holders Palace Enterprises, NV of New York, which was represented by David Lin of Lewis & Lin, LLC.
However the panel failed to find Reverse Domain Name Hijacking which it should have found in our opinion as all the elements were present. A generic domain, a dictionary word,, the lack of a direct match trademark, lack of evidence of a common law mark, a 20 year old domain that was legitimately used by the domain holder and the lack of bad faith by the domain holder
Here are the relevant facts and findings by the three member panel
The Complainant owns a U.S. federal trademark registration the palace of Auburn Hills but did not own a federal trademark on just the term “Palace”
“”According to the publicly available WhoIs database, the palace.com Domain Name was created on July 16, 1993; it does not currently lead to an active website.
The declaration of Respondent’s president states he acquired the Domain Name in December 2008 – several years prior to its receipt of the Complaint – through another entity with the intention of using it in connection with an online casino.
Shortly thereafter, Respondent’s president engaged in preliminary activities including: designing a logo and creating an initial home page to which the Domain Name resolved. The initial page stated:
“The very best in online gaming is coming to Palace.com. We have all your favorite new and classic “table games, and slots for free or cash. Sign up today for membership information!”
He also planned a search engine optimization strategy, took steps to implement use of Google Analytics for the site, and later posted a different “Coming Soon” message on the site.
In June 2009, the Domain Name was transferred to Respondent, a corporation organized in Curacao, one of the oldest and most politically stable providers of regulated e-gaming licenses.
Respondent subsequently entered into an agreement for development of computer software for the site, opened a corporate bank account with an e-commerce payment company, and entered into an agreement for co-location and bandwidth.
Sometime in August 2011, Respondent decided to delay launch of its site upon learning that the U.S. might legalize online gambling;
Respondent is currently awaiting developments.
Complainant does not claim any registration for the mark PALACE and must therefore establish common law rights in the unregistered mark.
Here, Complainant has not provided any evidence of the type that establishes rights in a mark that has not been registered.
The Complaint asserts in a conclusory fashion that Complainant’s facility has been commonly known to the public for over 20 years and the mark is “renowned” in the Detroit area.
Apart from a copy of unidentified “promotional material” (apparently a screen shot from a web page) that depicts the term “Palace” in larger type above the phrase “sports & entertainment,” Complainant has not provided any evidence regarding length of use, sales, nature and extent of advertising, consumer surveys, media recognition or other information that would establish rights in a mark that is not registered.
“The Panel concludes that Complainant in the present proceedings has not established rights in the unregistered mark PALACE.
The Panel finds that Complainant has rights in the mark THE PALACE OF AUBURN HILLS and design by virtue of its U.S. federal trademark registration.
The question then becomes whether the Domain Name is in effect (disregarding “.com”, etc.) identical or confusingly similar to that mark.
Complainant’s registered mark and the Domain Name are not identical.
For purposes of confusing similarity, Complainant must establish that the Domain Name is confusingly similar to Complainant’s mark, determined with reference to the degree of resemblance between the domain name and mark at issue as to appearance, sound, and meaning. See, e.g., WIPO Overview 2.0, paragraph 1.2 (generally, test for confusing similarity involves straightforward comparison of trademark and alphanumeric string making up the domain name).
As a general matter, a domain name is likely to be deemed to be confusingly similar to a mark if it incorporates the mark or a variation or dominant portion of the mark; however, such a finding is not automatic. Here, the Domain Name does not incorporate the mark in its entirety, but only the single term “palace.” Complainant argues that “palace” is the dominant feature of its mark. The Panel finds, however, that the additional words in Complainant’s mark–“the” and “of Auburn Hills” – serve to differentiate it from the Domain Name in appearance, pronunciation, and connotation, and is therefore not convinced of the likelihood of Internet user confusion in this case.
The Panel therefore finds that the Domain Name is not identical to or confusingly similar to a mark in which Complainant has been shown to have rights under paragraph 4(a) of the Policy.
In light of the conclusion that Complainant failed to establish the first element, it is not necessary to address the issue of Respondent’s rights or legitimate interests in, or bad faith in registering and using, the Domain Name.
However, in the interests of completeness, and because Respondent argues that Complainant has engaged in Reverse Domain Name Hijacking, the Panel finds it appropriate to include a discussion of its findings on the second and third elements in the decision.
The Panel concludes that, under the circumstances presented here, Complainant failed to make a prima facie showing under this element for the following reasons:
First, Complainant asserted that the Domain Name was first registered twenty years ago – in 1993 – supporting its claim that “Respondent is not using the domain name in commerce” with a single 2013 website test showing an inability to connect to a “www.palace.com” website.
It appears, in fact, as Respondent’s evidence shows, that Respondent not did not acquire the Domain Name until December 2008.
Whether Respondent acquired the Domain Name in 1993 (as Complainant apparently believed) or in 2008, the Panel finds that the use of a single contemporaneous website test is not sufficient in the present proceedings to establish a prima facie case.
This is particularly true, where, as here, archived copies of web pages from the “www.palace.com” website are freely and readily available through the Internet Archive’s Wayback Machine. In addition to archived pages dating back to 1996, a search of the archive discloses Respondent’s initial “coming soon” page and subsequent similar announcements.
Second, Complainant knew that the WhoIs record identified the registrant of the Domain Name as “Palace Enterprises, NV.” Apparently in an effort to address this, it asserted that:
“A search on the internet for Respondent’s entity name yields no results aside from domain registration records. See Annex 8. Respondent owns no U.S. federal trademark application or registration containing the word “palace.” Indeed, no U.S. federal trademark records were found that are associated with the Respondent. Therefore, the Respondent does not have any legitimate company or trademark containing the word ‘Palace’ and the Respondent is not known under the name ‘Palace.’”
Complainant’s Annex 8 (the results of a Google search for “Palace Enterprises, NV”), however, contradicts the first assertion quoted above. The document does contain more than references to domain name registration records. Complainant’s search results include two similar results, each of which contains a reference to “Palace Enterprises N.V.” and associates it with the Domain Name <palace.com> on a table that also lists a license number and status. Each result gives the same address in Curacao, Netherlands Antilles.
While the abbreviation “N.V.” may not be as widely understood in the U.S. as in other countries, it is not obscure. One can readily learn, and one would expect a party represented by counsel would learn, that it can be an abbreviation for the Dutch words, “Naamloze Vennootschap,” signifying a particular corporate form.
The fact that an entity does not own any U.S. federal trademark applications or registrations may be somewhat relevant. Without more, however, it is not sufficient to establish a prima facie case, much less that Respondent could not be a “legitimate company” or be known under the name “Palace.” This is particularly true here where it is evident that the entity in question is not a U.S. corporation.
In any case, the Panel concludes that Respondent has established, through the declaration of its president and other documentary evidence, that it acquired the Domain Name several years before learning of Complainant. That evidence also shows the demonstrable preparations that Respondent has undertaken to use the Domain Name with a bona fide offering of goods or services as well as Respondent’s use of “Palace” in its corporate name.
Accordingly, based on the case record the Panel finds that Complainant has not established that Respondent lacks rights or legitimate interests in respect of the Domain Name under paragraph 4(a) of the Policy. Further, the Panel finds that Respondent has established its rights and legitimate interests in the Domain Name under paragraph 4(a)(ii) of the Policy.
Complainant’s sole argument on the element of bad faith is that Respondent is “trafficking” in the domain name, seeking to get more money from Complainant than the USD 10,000.00 that Complainant previously bid when Respondent learned the Domain Name was being offered at auction.
The fact that Respondent rejected Complainant’s bid for USD 10,000.00 does not establish that Respondent’s purpose in registering the Domain Name was to sell it to Complainant.
Accordingly, the Panel finds that Complainant has not established that Respondent registered or is using the Domain Name in bad faith under paragraph 4(a) of the Policy.
Despite not having a federally registered trademark and not presenting evidence to support a common law mark, and despite the panel found the domain holder had a legitimate interest in the domain and no bad faith the panel somehow failed to find Reverse Domain Name Hijacking.
“As discussed above, the Panel has concluded that Complainant failed to establish the required elements.”
” Complainant did not provide support for its claim of common law rights in the ordinary English word “palace” and did not persuade the Panel that its design mark that contained the word “palace” was confusingly similar to the Domain Name. ”
“The Panel noted that the Complaint contained some assertions that appeared to be contradicted by Complainant’s own exhibits and that, under the circumstances, some readily and publicly-available Internet research would have been appropriate.
“Nonetheless, Complainant did establish ownership of a U.S. federal trademark registration containing a term used in the Domain Name and presented an argument that the Domain Name was confusingly similar to that mark.”
“Further, it does not appear that Complainant had access to the details of Respondent’s company registration or Respondent’s preparations to use the Domain Name before filing the Complaint.”
“Therefore, the Panel does not conclude that the Complaint was brought in bad faith or brought primarily to harass Respondent and declines, on this record, to find that Complainant attempted to engage in Reverse Domain Name Hijacking.
For the foregoing reasons, the Complaint is denied.””
Hum sounds like a very weak reason for not finding Reverse Domain Name Hijacking.
Just because you own a trademark of a long term that incorporates many words your now allowed to bring a UDRP based on that trademark for any word contained in the registered trademark?
We don’t buy it.
The panel should have found RDNH.