FileSense, Inc. represented by Ronnie Allen Sheppick of Utah just lost its 2nd UDRP this year on the domain name FileSense.com.
Back in March 2013, we covered this same company’s attempted to grab this same domain name away from the same domain owner.
The domain name owner has now defended two UDRP on the same domain per se, (without the representation of an attorney) so he didn’t have to incur legal fees but has now spent a lot of time defending a domain he got for $350 on the drop.
While not finding Reverse Domain Name Hijacking, HallofShame.com might want to start another section for company’s that bring two or more UDRP’s on the same domain name.
In that first case the one member UDRP panel found in favor of the domain holder said FileSense, Inc. did not have a trademark & misrepresented facts to the panel:
“The first question that arises is whether Complainant has a trademark or service mark on which it may rely”
“Complainant claims that it has a registered trademark, i.e. a trademark registered with the USPTO, namely trademark No. 85, 779,926, registered on November 15, 2012.”
“That statement is incorrect”
“Complainant has in fact only filed an application, which is now pending, for the FILESENSE mark
“Complainant appears to have been incorporated in Delaware on November 2, 2012. The Domain Name was registered on December 9, 2010 and acquired by Respondent on January 16, 2013.”
“Complainant filed its application for a trademark on FILESENSE on November 15, 2012.
“At that time, it claimed a first use in commerce from November 16, 2011.”
“It has not yet been registered.”
“Accordingly, on January 16, 2013, when Respondent acquired the domain name, Complainant did not have rights in a registered trademark and apparently does not have such rights today.”
“If Complainant was incorporated in Delaware on November 2, 2012, by whom was the trademark FILESENSE used in commerce from November 16, 2011 until November 2, 2012?””
In August of 2013, FileSense, Inc went for a 2nd bite at the apple, by filing this 2nd UDRP and lost again, this time appearing to want to blame the current domain holder for the acts of the previous domain holder.
Although now the complainants trademark was registered the panel still found the domain holder had rights to the domain and did not engage in any bad faith
“The Complainant previously submitted a complaint to the National Arbitration Forum (“NAF”) on January 31, 2013, contesting Respondent’s registration of the <filesense.com> domain. That complaint and a response by the Respondent were considered by the NAF in FileSense, Inc. v. Bogdan Mykhailets, FA 1483102 (Nat. Arb. Forum Mar. 11, 2013), and a Panel chaired by the Honorable Neil Anthony Brown rendered a decision on March 11, 2013. That Panel rejected the complaint on the grounds that the Complainant failed to satisfy the first criterion under ¶ 4(a)(i) of the Policy. ”
“Complainant here omitted this fact and failed to address the prior decision in its Complaint.”
“The Complainant’s recent USPTO registration of the FILESENSE mark provides new material evidence to Complainant’s case under Policy ¶ 4(a)(i). As Complainant has overcome the prior reason for denial by establishing rights in the FILESENSE mark, a decision as to the remaining elements of the Policy is warranted.”
“In the instant case, Respondent claims that it acquired the <filesense.com> domain because the descriptive terms “file” and “sense” are valuable in the advertisement of file sharing services.”
Respondent referred to Google’s use of “adsense” in online advertising and “Websense,” a company that provides online security.”
“A Respondent may have rights in a domain name comprised of dictionary words if the domain is demonstrably intended to host content in connection with the meaning of those words.”
“In this dispute, the domain directs users to file storage services. ”
There is no evidence that Respondent sought to mislead potential customers of the Complainant, nor is there evidence that Respondent was aware of Complainant’s trademark at the time it acquired the domain.
For the foregoing reasons, this Panel finds that the Complainant has failed to show a prima facie case that the Respondent lacks rights or interests in the filesense.com domain name.
“Therefore, this Panel finds that the Complainant has failed to prove the second element of the Policy.”
“For purposes of completeness, this Panel will analyze whether Respondent’s registration and use of the disputed domain was in bad faith.”
“Complainant asserts that the previous owner of the <filesense.com> domain repeatedly attempted to sell the domain to Complainant.”
“Complainant further asserts that Respondent is likely associated with the prior owners, and should have this bad faith conduct imputed upon him.”
“In this dispute, however, Complainant did not provide any evidence establishing Respondent as the same entity as the prior registrant, and failed to introduce any documents or other evidence corroborating the alleged offers.”
“Complainant has thus failed to provide evidentry support for its allegations of Respondent’s bad faith registration and use of the disputed domain.”