Vendita Technology Group, LLC just lost its bid to grab the domain name Vendita.com
The domain owner was represented by Ari Goldberger and Jason Schaeffer of ESQwire.com.
Although the complainant had a trademark on the term Vendita the three member UDRP panel found the term was generic and would have found Reverse Domain Name Hijacking (RDNH) if not for the citation of one case by the Complainant
Here are the relevant findings by the panel:
The Domain Name was registered by Respondent on November 28, 1996, over 9 years before Complainant claims to have first used its VENDITA trademark (on January 7, 2006), over 16 years before Complainant’s trademark rights arose by virtue of its US application for trademark registration (on December 17, 2012) and over 17 years before that registration (on July 23, 2013) and the filing of this Complaint (on August 12, 2013).
The Panel does not accept that the defense of laches has any place in proceedings under the Policy and respectfully adopts the following words of the learned Panelist in BREAD & Butter GmbH & Co. v. Paul E. Grindle WIPO Case No. D2013-1195 September 5, 2013):
“The non-applicability of the defense of laches (i.e. undue delay) in UDRP proceedings has long been recognized by UDRP panels, over many years and a large body of jurisprudence. See e.g., in addition to this panel’s earlier-mentioned decision in Chocolaterie Guylian, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.10, and cases cited therein. While this Panel is aware that a small number of UDRP panelists have, on occasion, sought to put this question in issue (see e.g. Laminex, Inc. v. Yan Smith, NAF Claim No. FA1470990), this Panel sees no compelling reason to disrupt or depart from years of well settled UDRP jurisprudence on this point.”
There is no evidence to suggest that Respondent had Complainant or its non-existent mark in mind when he registered the Domain Name, one of numerous common dictionary words Respondent has registered as part of its business.
Under these circumstances, insofar as the Domain Name redirects to or is otherwise associated with a visibly commercial webpage unrelated to Complainant, for services unrelated to those provided by Complainant, Respondent’s use of the Domain Name does not give rise to any inference of bad faith use.
Of the three cases cited by Complainant in support of its contention that Respondent has engaged in a pattern of conduct preventing complainants from reflecting their marks in corresponding domain names, two were rejected, as Complainant rightly concedes.
In the third, Pifer d/b/a/ Colchester Rubber Co., Inc. v. Stenzel, FA588409 (Nat. Arb. Forum, Dec. 27, 2005) the domain name was registered in 1999, the trademark was registered in 2003 and, despite this, a finding of bad faith registration and use was made because the domain name had not been used since registration.
That decision was based on the principle of “passive use” formulated in Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) and followed in DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) and Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000). In each of those cases, however, the trademark rights existed prior to registration of the domain name and the respondent was found likely to have been aware of the trademark at the time of registration. Thus, none of those cases support the decision in the Pifer case and this Panel does not accept that case as establishing a pattern of conduct on the part of Respondent.
Accordingly, there is no evidence of bad faith registration and use of the Domain Name by Respondent.
But for Complainant’s citation of Pifer d/b/a/ Colchester Rubber Co., Inc. v Stenzel, this Panel might well have made a finding in the present case of Reverse Domain Name Hijacking.
However, it is conceivable that Complainant, in reliance on that case, could have held a genuine belief that it might have succeeded in this case despite the lapse of so many years after the Domain Name was registered until Complainant acquired trademark rights in VENDITA.
Accordingly the Panel declines to make a finding of Reverse Domain Name Hijacking.