AgStar Financial Services, ACA (“Complainant”), just lost its bid to grab the domain name RuralLiving.com from Ashantiplc Ltd, who was represented by John Berryhill, Esq. , who also in full disclosure represents our company in UDRP cases.
The complainant owns the domain name Ruraliving.com (missing the other letter “L”) along with a trademark on the term (also with the missing “L”)
The domain holder registered the domain name RuralLiving.com in August 3, 2005, the Complainant’s trademark was issued by the USPTO on January 17, 2006.
Yet just Two members of the three member panel of HPaul M. DeCicco and James A. Carmody denied the claim.
Panelist Houston Putnam Lowry filed a dissenting opinion, voting to transfer the domain to the Complainant.
Panelist Lowry believed the domain should have be giving to the trademark holder because it was listed for sale at SnapNames.com with a minimum bid of $10,000 or more and quite troubling that since the domain holder held the domain under privacy:
“I would hold this gives rise to a rebuttable presumption of bad faith registration and use.”
Here are the highlights of the rest of a very long opinion:
By way of background, Complainant is one of the largest farm credit associations in the nation with assets in excess of $7 Billion USD.
Complainant provides a full range of financial services including mortgage lending, leasing, consulting, and related services focused at farmers and others in the agricultural and related industries.
Complainant is also the premier provider of custom financing solutions for agribusinesses including, among others, equipment manufacturers, distributors, agricultural wholesalers and retailers, farm commodities merchandisers and processors, and agricultural finance companies that provide services to suppliers, distributors and manufactures. In addition to assisting the agricultural business sector, Complainant also provides financing services to consumers living in farm communities and who are interested in obtaining financing for residences, personal projects and hobbies. Complainant is well-known among the farm communities, especially those located throughout the Midwest.
“Registration and Use in Bad Faith
By a majority vote, the Panel determines Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶4(a)(iii).
First of all, Respondent registered the disputed domain name in August 3, 2005, which is substantially before Complainant’s trademark was issued by the USPTO on January 17, 2006.
Therefore, Respondent could not have registered the disputed domain name with Complainant’s mark in mind. Respondent’s statement that it did not register the disputed domain name with Complainant’s rather generic mark in mind further corroborates this finding.
Respondent has not violated any of the factors listed in Policy ¶4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶4(a)(iii).
Respondent is perfectly entitled to negotiate and sell the domain name at a market value determined by its primary meaning.
The Panel finds Policy ¶4(a)(iii) not satisfied.
Having failed to establish all three elements required under the ICANN Policy by a majority vote, the Panel concludes relief shall be DENIED.
Accordingly, it is Ordered the domain name REMAIN WITH Respondent.”
Here is the dissenting opinion of Houston Putnam Lowry:
“”I differ from my brother Panel on the bad faith element.
Complainant claims Respondent registered and is currently using the domain name in bad faith under Policy ¶ 4(b)(i).
Respondent is offering the disputed domain name for sale through the SNAP names domain name auction site with a minimum bid of $10,000. Prior panels have routinely determined offering to sell a disputed domain name for an excessive price is an indication of bad faith under Policy ¶ 4(b)(i).
Complainant claims Respondent’s previous use of the disputed domain name to resolve to a website displaying links that compete with Complainant indicates bad faith use and registration.
Previous panels have found evidence of bad faith where a respondent provides links to competitors of the complainant through the confusingly similar domain name.
Complainant claims Respondent is attempting to attract Internet users to its resolving website for commercial gain by causing confusion between the disputed domain name and Complainant’s RURALIVING mark.
Complainant claims Respondent’s bad faith is further demonstrated by Respondent’s prior use of the domain name in connection with generating revenue as a click-through website.
Respondent does not dispute it gets an economic benefit of some kind from the “click through” links.
I would find Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Finally, Respondent registered the disputed domain name using a privacy service. I would hold this gives rise to a rebuttable presumption of bad faith registration and use under the penumbra of Policy ¶ 4(b) in the commercial context. Respondent has done nothing to rebut that presumption by showing a bona fide reason to conceal its true identity from the marketplace.””