Reckon Limited of North Sydney Australia, just lost a UDRP on the domain name Reckon.com which is owned by Multitech s.r.l. of Rome, Italy.
The domain name was originally registered in 1996 but has been owned by the current domain holder since 2005.
The complainant has a trademark on the term “reckon” registered in 2007.
Here are are the relevant facts and findings by the one member panel
“”The Complainant is an Australian publicly listed company, founded in 1987, specializing in accounting and bookkeeping software for individuals, professionals and small to medium sized businesses in Australia and New Zealand.
In its first year of trading (1987) the Complainant turned over AUD 197,000.
In its tenth year (1997) it turned over approximately AUD 10,000,000.
Over the last 7 years the Complainant’s annual operating revenue has risen from approximately AUD 45,000,000 in 2006 to in excess of AUD 95,000,000 in 2012.
The Complainant is the registered proprietor of several Australian and New Zealand trade mark registrations comprising or including the word “Reckon”, the earliest of which is Australian registration number 1211282 dated November 21, 2007.
The Complainant also holds a number of domain names featuring the word, “reckon”, including the domain name, <reckon.com.au>.
On March 28, 2013 the Complainant’s representative sent an email to the administration contact for the Domain Name in the following terms:
“Our client, who at this stage chooses to keep their identity confidential, has become aware that you are the administration contact for the domain name reckon.com. This domain name is registered to Multitech s.r.l.. We note that there is currently no active site associated with this domain and, according to information available on webarchive.org, this has been the case for quite some time. It therefore seems the registrant may have lost active interest in the domain.
Our client is interested in acquiring the domain name reckon.com for use with its business in Australia. It is willing to pay a reasonable sum for transfer of the domain.”
The Respondent did not reply.
The Domain Name was first registered on October 7, 1996.
It was transferred into the keeping of the Registrar on October 12, 2005.
The Registrar has confirmed that since at least October 12, 2005 the Domain Name has been registered to the Respondent.
This section of the Complaint commences: “When considering all the circumstances surrounding the registration and use of the Disputed Domain Name it is clear that the Respondent registered, and is using, the Disputed Domain Name in bad faith”.
For it to be “clear” that a respondent registered and is using a domain name in bad faith, one would expect to find some evidence indicating (whether directly or indirectly) that the respondent in question was targeting the complainant at date of registration of the domain name.
If the brand in question is a dictionary word and the evidence in support of the bad faith contention is wholly circumstantial, the burden on the complainant is likely to be greater than if the brand in question is a made-up distinctive name.
In this case, as can be seen from the factual background in section 4 above, the Complainant’s evidence from the Internet Archive WaybackMachine all points the other way. It appears from that evidence that “Reckon” is (or was) a computer brand of e-group Italia S.p.A. and that the website to which the Domain Name was connected from 1996 to 2007/2008 was a website of e-group Italia S.p.A., promoting that brand.
The Panel finds that the probability is that the Respondent registered the Domain Name for the benefit and with the approval of the Italian company, e-group Italia S.p.A., the proprietor of the “Reckon” brand of computers, and that the Domain Name was used for the benefit of e-group Italia S.p.A. until about 2007/2008.
Since then, the Domain Name has not been used, the Registrar’s WhoIs contact details have not been kept up-to-date and the Respondent has moved on.
Striking by their absence are (i) any Italian company registry check on e-group Italia S.p.A. (ii) any Italian trade mark search for “Reckon” (iii) any search for “Reckon” as a computer brand. If evidence from these sources had been presented and had demonstrated that e-group Italia S.p.A. and its computer brand never existed, then it would have been easier for the Panel to infer bad faith registration and use, but there is nothing in the Complaint to suggest that the Complainant believes the web pages exhibited to the Complaint to be anything other than what they purport to be.
The Complainant’s bad faith contention is based entirely on the fact that since 2008 the Domain Name has not been connected to an active website and relies solely upon two propositions, which it claims to be applicable to this case, namely:
1. “passive holding of a domain name in which a Respondent has no rights or legitimate interests may amount to bad faith use” and “passive holding interspersed with sporadic or intermittent use can also ground a claim of bad faith use.”
2. “the providing of false contact details or the failure to update contact details can be determinative of bad faith use and registration in cases of ‘passive holding’.”
The first point to note is that in so contending the Complainant ignores its own evidence as to the use that was made of the Domain Name from 1996 to 2007/2008, which strongly suggests to the Panel that the Domain Name was registered in good faith.
The Complainant has failed to satisfy the Panel that the Domain Name was registered and is being used in bad faith.””