Hedera AB of Lund, Sweden, just lost its bid to grab the domain name stabletable.com in a UDRP which was registered back on November 24, 2007.
The Panel basically threw the Complainants case out and only failed to find Reverse Domain Name Hijacking because they believed the owner of the domain changed in 2011.
The domain holder who is represented by Mike Rodenbaugh, Esq. already filed a lawsuit in federal court to get a declaratory judgement once the UDRP was filed.
Here are the facts and findings of the one member panel:
The Complainant is a Swedish company which states that it has introduced a patented, self-stabilizing table base for all kinds of tables in hotels, restaurants, bars and cafés.
The said table base, branded “StableTable”, is said to automatically adjust to any floor surface without the need for manual adjustment.
The Complainant is the owner of a variety of registered trademark rights with regard to the mark STABLETABLE, namely; (1) South African Trademark Registration No. 1997/04925, STABLETABLE (word), filed on April 2, 1997 and registered on August 2, 2001 for goods in class 20;
(2) European Community Trademark Registration No. 008755531, STABLETABLE (figurative), filed on December 14, 2009 and registered August 18, 2010 for goods and services in classes 6, 20 and 45; and
(3) International Trademark Registration No. 1049912, STABLETABLE X (word and device), registered on July 1, 2010 for goods and services in classes 6, 20 and 45 in respect of various designated countries including the USA. The said international mark was registered in the USA on September 27, 2011 with a designation containing the rider “NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE “STABLETABLE” APART FROM THE MARK AS SHOWN”.
The Respondent states that it, then doing business as “Crosspath”, registered the disputed domain name in good faith on or about November 24, 2007 and that the Respondent ultimately changed its name to Captive Media in 2012. The Respondent therefore maintains that it has retained unbroken ownership and possession of the disputed domain name since the date of its creation.
On November 14, 2008, a representative of the Complainant approached the Respondent by email indicating that it was “looking for a new domain name for a planned new business” and referencing the Complainant’s interest in the disputed domain name.
The Complainant’s representative made an offer of $500 to purchase the disputed domain name; however it appears that the Parties were not able to agree on a price and negotiations ceased on about November 18, 2008.
“On December 9, 2013, the date on which it received notification of the Complaint, the Respondent filed the civil action described in the Procedural History above. The Respondent seeks termination or suspension of the administrative proceeding in light of such action. ”
“The present Panel takes the view that the Complainant has made a valid Complaint under the UDRP and, absent circumstances to the contrary, is entitled to a decision on the merits of its Complaint without delay. The Panel entertains no notion of what may be done with the Decision after the Panel is functus officio and does not address its Decision to the attention of any other forum. The Panel is also concerned that as a general principle, and without any aspersion as to the motivation of either Party in this case, diversions that may create inordinate delay, and thereby negate the best intentions of the UDRP, should be avoided unless the circumstances are exceptional. Partly for this reason the Panel does not consider a significant stay of the proceeding to be a viable option.”
For the same reasons, the Panel in the instant case denies the Respondent’s request for suspension or termination of this administrative proceeding and will therefore proceed to a Decision on the Complaint and Response.
The Panel is satisfied that the Complainant has rights in its registered trademark for the word mark STABLETABLE.
The requirements of paragraph 4(a) of the Policy are conjunctive. A consequence of this is that failure on the part of a complainant to demonstrate one element of the Policy, including that the disputed domain name has been registered and is being used in bad faith, will result in failure of the complaint in its entirety.
Accordingly, in light of the Panel’s finding under the next head, it is unnecessary for the Panel to address the issue of the Respondent’s rights or legitimate interests in the disputed domain name.
As noted below in the section on Reverse Domain Name Hijacking, the Complainant’s case relies upon the premise that the disputed domain name changed hands at some point during 2011.
If such a change of ownership had taken place, the question of registration in bad faith would require to be assessed as at the date when the current registrant took possession of the disputed domain name
However, while the Complainant is correct that there was a formal change in registration data, the evidence clearly establishes an unbroken chain of underlying ownership by a single entity, namely the Respondent.
The Panel is satisfied that the change identified on the WhoIs relates to the Respondent’s registered fictitious business names, sometimes characterized as “doing business as” names, whereas the Respondent’s contact details have remained the same throughout the period of registration. In these circumstances, the Complainant has not demonstrated that the question of registration in bad faith should be assessed as at any date other than the original date of registration of the disputed domain name.
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove the conjunctive requirement that the disputed domain name has been registered and is being used in bad faith.
It follows that if the Complainant fails to prove registration in bad faith the Complaint must fail. That is the position in the present case. The Complainant is the holder of a single trademark that predates the disputed domain name, namely the South African trademark dating from August 2001.
The Complainant did not become the holder of this mark until it acquired it by assignment in September 2011.
As such, the Respondent could not have contemplated and intended to target the Complainant in 2007 when the disputed domain name was created. While it is theoretically possible that the Respondent might have intended to target the rights of the Complainant’s predecessor in title at that time there is no such evidence before the Panel.
For its part, the Respondent has given a plausible explanation as to why it registered the disputed domain name by its showing that the term “stable table” is in use by a variety of third parties who are not referencing the Complainant’s trademarks but have come upon the term independently as a combination of two ordinary English words.
In these circumstances the Panel finds that the Complainant has failed to establish the third element under the Policy
E. Reverse Domain Name Hijacking
To establish Reverse Domain Name Hijacking, a respondent would typically need to show knowledge on the part of the complainant of the complainant’s lack of relevant trademark rights, or of the respondent’s rights or legitimate interests in, or lack of bad faith concerning, the disputed domain name. Evidence of harassment or similar conduct by the complainant in the face of such knowledge (e.g. in previously brought proceedings found by competent authorities to be groundless, or through repeated cease and desist communications) may also constitute a basis for a finding of abuse of process against a complainant filing under the UDRP in such circumstances.
WIPO panels have found Reverse Domain Name Hijacking in circumstances including where: the complainant in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP…”
In the present case, the Panel does not agree with the Respondent’s submission that the Complainant’s awareness of the disclaimer in the Complainant’s USA trademark registration leads to a finding of Reverse Domain Name Hijacking.
While the disclaimer may demonstrate the weakness of the Complainant’s USA trademark, as the Respondent contends, it is not conclusive of the question of whether the Respondent was or was not targeting the Complainant’s rights in that mark, or in its other trademarks.
As such, the Panel does not believe that the Complaint was bound to fail on this point.
The Respondent’s other criticism is of the Complainant’s characterization of its South African trademark as its “initial […] trademark registration”.
The Panel agrees that this appears at first sight to be disingenuous; the Complainant must have been aware that it had acquired this trademark by assignment some two years after the disputed domain name was created, yet chose to overlook this in its submissions.
However, it occurs to the Panel that the reason why it may have done so is that, from the point of view of the Complainant’s case as pled, that detail was not particularly important.
It is clear from the Complaint that the Complainant was working on the incorrect basis throughout that the disputed domain name had changed hands at some point after the middle of 2011.
The Complainant believed this to be the case as it had previously dealt with what it thought was a different organization, named “Crosspath.”
In fact, this is one of the Respondent’s registered fictitious business names.
Had the Complainant been correct in its assumption, the Panel would have been required to assess the question of registration in bad faith at a date when the Complainant’s rights were more established. The Complaint might still have failed in light of the Respondent’s extensive rebuttals of the remainder of the Complainant’s case, with which the Panel has not required to deal in its analysis; however mere lack of success of the Complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking.
In all of these circumstances, the Respondent’s request that the Panel enter a finding of Reverse Domain Name Hijacking is denied.