Ednovo d/b/a Gooru of Palo Alto, just lost its attempt to grab the domain names Gooru.com; Gooru.net; Gooru.org; and Gooru.biz registered in 1999 on the basis of a trademark filed in 2012 with a UDRP Panel
Here are the relevant facts and findings from the one member panel
The Complainant is a non-profit organization established in 2011, and based in the United States of America, that operates a free search engine via its domain name <goorulearning.org>, for teachers and students to search for learning materials, such as multimedia resources, digital textbooks, videos, games and quizzes (“Complainant’s Website”).
The Complainant holds a trade mark registration for GOORU in the United States of America since March 27 2012.
The Respondent is based in Italy.
The Disputed Domain Names were registered as follows: <gooru.com> on December 9, 1999 and <gooru.biz>, <gooru.net> and <gooru.org> respectively on February 21, 2003.
The Disputed Domain Names <gooru.org> and <gooru.biz> currently resolve to parking pages that includes sponsored links, and <gooru.com> and <gooru.net> are currently inactive and resolve to a website that states that the site is under construction.
The Complainant alleges that the Disputes Domain Names have been inactive ever since they were registered, and the Disputed Domain Names <gooru.org> and <gooru.biz> currently resolve to parking pages that provide sponsored links.
The use of a domain name containing a well-known trade mark for the purpose of collecting referral fees from sponsored advertising links, has been consistently held not to be a legitimate offering of goods or services
However, the Respondent argues that he has been making preparations to use the Disputed Domain Names in connection with a bona fide offering of services, and has provided evidence in support.
In addition, the Complainant has provided copies of email correspondences with the Respondent dated January 18, 2011 and February 22, 2013, whereby the Complainant had asked the Respondent if he was interested in transferring the Disputed Domain Names to the Complainant.
The Panel notes that the Respondent informed the Complainant that he was unwilling to transfer the Disputed Domain Names to the Complainant, as he intended to use the Disputed Domain Names for his own business projects. Further, if the intent of the Respondent was to make a profit from the Disputed Domain Names, the Panel believes that it would have been logical for the Respondent to try to negotiate with the Complainant in order to sell the Disputed Domain Names to the Complainant for profit. Contrary to this, the email correspondence provided by the Complainant shows that the Respondent had no desire to enter such negotiations. The Panel finds that this further supports the Respondent’s contention that he is making preparations to use the Disputed Domain Names for a bona fide offering of services, rather than to misleadingly divert consumers for commercial gain.
Lastly, the Panel notes that the Complainant first approached the Respondent in January 18, 2011, around the time that the Complainant was first established; over a year before it registered its trade mark GOORU in the United States of America, and 12 years after the first Disputed Domain Name was registered. The Complainant had therefore been aware of and knew that the Respondent was unwilling to transfer the Disputed Domain Names, and intended to use the Disputed Domain Names for its own business purposes, before the Complainant registered and began using the GOORU mark.
The Panel finds that the Respondent has shown that he has rights or legitimate interests in the Disputed Domain Names and that the Complainant has failed to satisfy paragraph 4(a)(ii) of the Policy.
In light of the Panel’s finding under the second limb, the Panel need not consider whether or not the Disputed Domain Names were registered and used in bad faith.
The Respondent requests a finding of Reverse Domain Name Hijacking. Paragraph 15(e) of the Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. In addition, Reverse Domain Name Hijacking is defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
The onus is on the Respondent to prove that the Complainant filed its Complaint in bad faith for the purposes of Reverse Domain Name Hijacking, and mere lack of success of the Complaint is not in itself sufficient for a finding of Reverse Domain Name Hijacking.
The Panel, on the balance, finds that the Complaint was not made in bad faith as an attempt at Reverse Domain Name Hijacking.