Electronic Transaction Systems Corporation just lost its attempt to grab the domain name eMoney.com which was registered back in January 2000.
The domain owner was represented by Ari Goldberger and Jason Schaeffer of Esqwire.com
The panel found, unlike other panels have found that they $300K price tag was not outrageous.
Here are the facts and finding of three member panel of Debrett G. Lyons, Dianne Cabell, Ho-Hyun Nahm:
Complainant provides a system to facilitate monetary payments under the name EMONEY.
Complainant references two United States Patent and Trademark Office (“USPTO”) registrations for the trademark EMONEY but neither nominates Complainant as its proprietor.
Respondent is a domain name reseller.
The disputed domain name was registered on January 11, 2000.
The domain name was not in use at the time the complaint was filed but has, in past times, been used to advertise various financial services.
Complainant approached Respondent to purchase the domain name in response to which Respondent asked for USD300,000 in exchange.
The USPTO registrations on which Complainant relies stand in the name of “Edward Vaughan” and there is no proof of a connection between that owner and Complainant.
Accordingly there is no clear evidence that Complainant has registered trademark rights.
Neither is there adequate proof of common law trademark rights.
Whilst Complainant states it has used the trademark since 1999, the only corroborating evidence of that claim is the 1999 first use in commerce date from the USPTO registrations which, as noted, do not belong to Complainant. In any event there is none of the usual indicia of secondary meaning which a panel would expect to see.
The Respondent first had notice of the dispute on June 16, 2014, the date on which the Forum served the complaint on Respondent.
Nothing turns on that date since all relevant events took place more than a decade earlier.
Respondent states that he is a generic domain name reseller and that he registered the domain name during the ecommerce boom when there was a rush of interest in “e-” prefixed names.
Respondent submits that the sale of domain names comprising generic terms is a bona fide offering of goods or services. The domain name is generic in the sense that it is apt to describe any electronic monetary matters or monetary dealings.
Panel is of the view that Respondent made bona fide use of the domain name either as part of a business which resells generic domain names and this was one such domain name, or as the host site for links to third parties offering goods or services linked in some way with electronic monetary matters.
That said, Panel also accepts the consensus viewpoint of those applying this Policy that good faith use of that kind requires vigilant avoidance of the registration or use of domain names which might be confusingly similar to third party trademarks.
The mere descriptiveness of a domain name does not create a legitimate interest in that domain name if it corresponds with
the prior trademark of another. Put another way, the issue is not simply the legitimacy of Respondent’s business model, but whether it has a legitimate interest in the disputed domain name itself.
In this case, there is no cogent evidence that Respondent has shown a “willful blindness” of third-party rights, nor that constructive knowledge of such rights should attach to Respondent.
. Even if it is accepted that Complainant is somehow the beneficial owner or licensed user of the USPTO trademark registrations, Reg. No. 4,462,300 was only filed May 23, 2013 and Reg. No. 2841887 was filed on January 4, 2002, both postdating registration of the domain name. Moreover, whilst the domain name registration postdates the claim to first use in commerce of the trademark by some few months, the only “proof” of first use in 1999 is the USPTO record. There is no evidence of a common law reputation in 2000 or indeed at any later point.
Accordingly, at the time of registration Respondent could not have done any meaningful due diligence on the term EMONEY and it would not have discovered Complainant’s USPTO filings.
Finally, Panel notes that the offer to sell the domain name to Complainant was only in response to Complainant approach and the $300,000 is consistent with what must be a very desirable name.
The only evidence that might point away from Respondent’s bona fides is its involvement in two earlier UDRP proceedings, both resulting in findings adverse to Respondent.
Respondent registered those names more than a decade ago and although that fact of itself might not excuse bad faith action, Panel takes the view that on the totality of the evidence before it in this case and having regard to the manifestly generic character of the term EMONEY, those earlier contested registrations already arbitrated should not cause this Panel to prejudge Respondent’s intentions.
In the result, Panel finds that Respondent has discharged the onus of proof that fell to it by showing that its actions came under Policy ¶ 4(c)(i).
Accordingly, Complainant has also failed to establish the second limb of the Policy.
Registration and Use in Bad Faith
For the sake of a more complete understanding of this decision, Panel has gone on to undertake the Policy ¶ 4(a)(iii) analysis.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it was used in bad faith.
Even if Respondent was an astute cybersquatter who spotted the (unproven) public use of the Complainant’s trademark in 1999, fourteen years has since elapsed.
In the absence of any compelling physical evidence, this passage of time makes the meaningful assessment of Respondent’s state of mind in 2000 difficult
Panel accepts as more likely than not to be true Respondent’s claim that, at the time it registered the disputed domain name, it had no knowledge of Complainant or of its trademark.
The use is all linked to the dictionary meaning of the word “money” and to the natural connotation of the term, “emoney”. By definition, the use of the domain name can be said to conflict with Complainant’s interests.
However, Panel finds that Respondent did not intend “emoney” to refer to any particular good or service, still less to Complainant’s services. Panel considers that the use does not tell anything meaningful about bad faith.
Complainant has failed to establish the third element under the Policy.
Reverse Domain Name Hijacking
Panel takes the view that a claim of reverse domain name hijacking is not to be taken lightly. \
A complainant’s failure to satisfy the Policy is a necessary but not sufficient condition to render a finding of reverse domain name hijacking.
Nonetheless, in the present case, Complainant has not only failed in its complaint, but it has failed to show each and every element of its case.
Complainant’s assertion that Respondent is a “recalcitrant, serial cybersquatter” is, on the evidence, overstated.
There is nothing to indicate Respondent has been recalcitrant (indeed, its reasonably argued Response in these proceedings is evidence otherwise) and the evidence of cybersquatting is limited to the two former UDRP proceedings already discussed, both concerned with domain names registered over a decade ago. Given that Respondent appears to continue to do business as a domain name reseller more than ten years afterwards, one view is that those were the mistakes of an immature business.
Panel observes that the disputed domain name is clearly the name of choice for Complainant’s business and it would defy common sense if Complainant were to deny that it had not followed that path of the domain name over the course of fourteen years, looking for the time and opportunity to acquire it.
But does the bringing of these proceedings alone after failure to agree a price for the domain name constitute harassment? Probably not, unless it could also be said that Complainant uncontrovertibly knew either that it had no rights or that Respondent had rights.
Neither issue is plain.
Given time and opportunity it is possible that Complainant could show trademark rights under Policy ¶ 4(a)(i).
In any case Panel would be reluctant to say that Complainant had no trademark rights and was unable to show trademark rights.
Additionally, the activity of a domain name reseller is a precarious one as already noted. Complainant’s polemic regarding the business of speculation in domain names would suggest that it has a legitimate belief Respondent had no rights, a position no doubt underscored by Respondent’s earlier transgressions.
On balance, Panel finds that although Complainant might have better tempered its submissions there has been no attempt at reverse domain name hijacking. Contrary to Respondent’s submission, there is no evidence of overtly misleading, incorrect, and inaccurate information in the complaint.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the
Panel finds that Complainant has not engaged in Reverse Domain Name Hijacking.