Gongshow Gear Inc. just won a UDRP on the domain name GongShow.com, after the domain holder asked for $18,000 to sell the domain.
Complainant contends it has rights in the GONGSHOW mark, used in connection with lifestyle hockey apparel. Complainant has rights in the GONGSHOW mark with the United States Patent & Trademark Office (“USPTO”) (e.g., Reg. No. 3,400,170 registered March 18, 2008).
Complainant provides evidence of the fame of its GONGSHOW mark by providing exhibits of a Google search for the term “gongshow” and “gong show.”
The disputed domain name was purchased by Respondent November 15, 2012.
Respondent offered to sell the disputed domain name to Complainant for $18,000.00
Complainant contends it has rights in the GONGSHOW mark, used in connection with lifestyle hockey apparel.
Complainant states that its rights are established by registration of the GONGSHOW mark with the USPTO registered March 18, 2008).
Although Complainant notes that Respondent stated in an e-mail correspondence to Complainant that the <gongshow.com> domain name is “for a project that is currently under development,” Complainant states that the resolving website remains undeveloped as of July 3, 2013.
The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent’s failure to make an active use of the <gongshow.com> domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i).
Complainant contends that Respondent offered to sell the disputed domain name to Complainant for $18,000.00 and never specifically disclosed any out-of-pocket costs to acquire the domain name.
Complainant describes e-mail correspondence between the parties, wherein Respondent claims that it did not buy the domain name to sell for a profit, but later admits that it would seek compensation of a price “as high as reasonably possible.”
Complainant contends that such an offer to sell by a respondent has been found to be in bad faith pursuant to Policy ¶ 4(b)(i)
Therefore, since the Panel finds that Respondent acquired the <gongshow.com> domain name for the primary purpose of selling it to Complainant, the Panel finds that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(i).
Complainant states that Respondent’s alleged “project” for which the disputed domain name was originally purchased could potentially attract Internet users by creating a likelihood of confusion with Complainant’s mark, from which Respondent would commercially benefit.
The Panel notes that Complainant does not assert that Respondent is receiving any current commercial gain from the disputed domain name, only that there is a possibility for such future commercial gain.
Past panels have found that such an attempt to obtain commercial gain by misleading Internet users, even for a project unrelated to Complainant, constitutes bad faith
The Panel further finds that Respondent’s passive holding, which is not a bona fide use, also supports findings of bad faith registration and use.
