Southpaw Enterprises, Inc. just won the rights to the domain name southpaw.com in a UDRP
As a term, Southpaw refers to someone who is left handed.
The domain name was registered on April 18, 1995.
The Respondent bought the domain name in 2002.
The Complainant federal trademark registration is dated March 8, 1983
Despite the domain being 19 years old and owned by the current registrant for 12 years, The one member panel of Debrett G. Lyons explicitly considered and rejected the concept of Laches finding that it was the “Respondent’s conduct which is relevant, not the years the domain name has been in existence. ”
In this case the domain holder’s conduct seems to have been to have parked the page and include an inquiry link, although the domain holder says they did not receive any parking revenue from the page, it seems to be that landing page, which included links from some products of the Complainant sank the domain holder.
Still UDRP panels have found that the domain holder has to explain why it took them so long to get up a proper site, the trademark holder does not seem to have to explain or is even discussed why they waited some 20 years to bring the UDRP.
All and all it’s troubling and of course the domain holder should never have gone with a one member panel.
Here are the relevant parts of the decision:
“It is well established by former decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights.
Since Complainant provides evidence of its United States Patent and Trademark Office (“USPTO”) trademark registration for SOUTHPAW, the Panel is satisfied that it has trademark rights Respondent “expresses no opinion as to the validity of Complainant’s trademark but notes that because Complainant’s trademark consists entirely of a common, generic word, many other companies use the word in their businesses and some of them have trademarks to it. … Thus, the fact that Complainant’s trademark may be similar to Respondent’s domain name is diluted by the reality that many other companies have trademarks to the word southpaw, and, what is more, the word is widely used by English speaking—and some non-English speaking—countries to refer to left-handers.”
Panel observes that Complainant has made very little effort to present even a prima facie case. Nonetheless, Respondent has not taken serious issue with that shortcoming.
The publicly available WHOIS information identifies Respondent as “HB” and so there is no prima facie evidence that Respondent might be commonly known by the disputed domain name.
There is no evidence that the disputed domain name has been used in connection with a bona fide offering of goods or services prior to notice of the dispute. Complainant provides evidence that the domain name resolves to a website that carries links to the websites of third parties, some of whom offer goods the same as those offered for sale from Complainant’s website.
Panel finds that such use does not demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent submits that it has rights and legitimate interests in the domain name because (a) “southpaw” is an ordinary word with a commonly understood dictionary meaning and is therefore available to anyone on a first come, first served basis; and (b) Respondent has made demonstrable preparations to use the domain name in connection with a bona fide business.
Respondent states that “numerous panels have found that common, generic words are available for domain name registration on a first come, first served basis.” That statement is not a comprehensive formulation of the way in which the Policy has been applied. Respondent goes on to state that “the fact that Complainant holds a trademark in a common, generic word for a specific commercial use, does not in any way preclude Respondent, or anyone else, from registering and using the domain name when used in connection with the dictionary meaning of the word. The difficulty is that this is not how the domain name has been used. On the contrary, it has been used in a manner which collides with Complainant’s business under the trademark.
Respondent’s alternative submission is that it has made demonstrable preparations to use the domain name in connection with a bona fide business. The Response includes sworn evidence to the effect that a Korean born individual, Heesuk “Mike” Kim, is the founder and co-owner of a US business said to be a well-known manufacturer of hair extensions, wigs, hairpieces and similar products. Kim declares that business employs 300 people and had sales of US$300 million in 2013.
Panel pauses to note that neither Heesuk “Mike” Kim, nor the company he founded, is the named Respondent. At one level, this evidence is irrelevant. The Response attempts to explain this by the following statement:
“With regards to the fact that was privately registered and that the registrant’s name appears as “HB,” Respondent does not recall why it was registered in this fashion, but Respondent states that at no point has he sought to evade any of his responsibilities as the domain name holder.”
That statement is largely unsatisfactory, a point to which Panel will later return, but for the moment will accept what Respondent has to say for itself.
Respondent states that it came up with the idea of developing a business that specialized in selling left-handed products in Asia. Accordingly it is said that in or about 2002, Respondent acquired the domain because of the dictionary meaning of the word “southpaw” – i.e. – a reference to left-handed person, particularly in sports, such as a left-handed pitcher or boxer. The Response goes on to state that:
“… the fact that Respondent is the founder and owner of a large manufacturing company and was born in Korea provide supporting evidence that Respondent’s planned use of is a credible and (sic) business plan.”
Panel does not see any supporting evidence for that conclusion but, in any event, the issue is not simply the legitimacy of Respondent’s business plan, but whether it has a legitimate interest in the disputed domain name itself.
Put another way, the question is not (as it is framed by Respondent) whether or not Respondent has made demonstrable preparations to use the domain name in connection with a bona fide business, but whether or not, for the purposes of paragraph 4(c)(i) of the Policy, Respondent has made demonstrable preparations to use, the domain name or a name corresponding to the domain name, in connection with a bona fide offering of goods or services.
In deciding that question, the relevant date is June 18, 2014, the date on which the Forum served the complaint on Respondent. Panel notes, first, that there is no evidence of use, or preparations to use, a name corresponding to the domain name. The issue resolves to whether there is a demonstrated intention to use the domain name in connection with the sale of left-handed goods.
Panel notes, secondly, that the use proven to have occurred is utterly unconnected with the sale, or intended sale, of such goods. Panel notes, thirdly, that the alleged proof of preparatory use consists of e-mail exchanges where Respondent states, for example, that it “ha[d] a long term plan for the domain.”
Panel finds that those statements are vague and imprecise in terms of the intended use of the domain name, but also fail to qualify as “demonstrable preparations” for use of the domain name. Finally, Panel notes that whilst Respondent only acquired the domain name in 2002, there are examples of the afore-described e-mails dating back to November 2005 with no other suggestion of relevant use over the near decade which has since passed.
Panel finds that Respondent has not shown that it falls within paragraph 4(c)(i) of the Policy and has not otherwise shown a right or legitimate interest in the domain name.
Panel has already found the domain name to be legally identical to the trademark and so there is a per se likelihood of confusion.
Panelists have generally found that a domain name registrant will be responsible for content appearing on a website at its domain name, even if the registrant does not exercise direct control over that content. The Overview of WIPO Panel Views on Selected UDRP Questions states:
To the extent that the presence of certain advertising or links under such arrangement may constitute evidence of bad faith use of the relevant domain name, such presence would usually be attributed to the registrant unless it can show some good faith attempt toward preventing inclusion of advertising or links which profit from trading on third-party trademarks.
There is no evidence before Panel that Respondent showed any good faith effort to avoid such advertising.
On the contrary, Respondent seemed over a long period indifferent to such matters. I
Indeed, on Respondent’s own evidence, some years ago a company officer of Complainant approached Respondent with a view to purchase of the domain name and it would appear that even that overture did not prompt a review of how the domain name was being used.
The only issue which deserves some further attention is the requirement that the actions be taken “for commercial gain”.
Respondent goes to some trouble to provide evidence that its actions have not resulted in monetary gain, a narrower category of reward it should be observed.
Respondent submits that it “clearly has not benefited commercially or otherwise from any advertisements shown on and therefore the Panel should find, on this basis alone, that Respondent has not used in bad faith and indeed should rule in favor of the Respondent.”
The words, “for commercial gain”, have been understood broadly. Non-fiscal reward is included, as is the potential for future reward. Further, Respondent may gain through any conduct that, because it harms Complainant, eventually benefits Respondent.
In that regard, panels often cite a complainant’s loss in addition to a respondent’s gain, finding it significant that while Internet users may become aware that the website they reached was not the (complainant’s) website they were looking for, they may be satisfied with the content or services of the website they reached and may then abandon efforts to locate the original site, thereby indirectly causing Complainant commercial harm.
Moreover, Panel returns to the unconvincing explanation as to why the domain name was registered to “HB”, letters which do not correspond with the name of the individual alleged to control the domain name, still less with the name of the wig company that individual is said to own. The material provided to show that there was no commercial gain has almost no connectivity with the named Respondent and can be given little weight by Panel.
Panel finds that Complainant has established this third aspect of the Policy.
Respondent points out that the domain name has been registered since 1995 and states that Complainant, without explanation, has waited until 2014 to bring these proceedings.
Respondent purchased the domain name in 2002 and it is Respondent’s conduct which is relevant, not the years the domain name has been in existence.
Still, as in the Board of Trustees case, 14 years has passed since then but here there has been no legitimate usage by Respondent – at best, passive holding of the domain; at worst (and, as found) use in bad faith.
Patrick Hipskind says
Landing pages/ parking pages are going to have to be designed by attorneys. Instead of a link farm, they might have to display well targeted video ads. And the advertisers should sign an agreement saying they will not bring a UDRP action against any domain that their ads appear on.
A lot of these one panel decisions are bogus, with false representations made by the Complainant about the ads and saying that they link to their competitors.
The parking companies need to respond by offering better landing pages that will lower the risk of UDRPs for domain investors.
Raymond Hackney says
You are spot on Patrick, I think its a good idea for there to be some qualifying legal opinion for the design of a parked page.
Maybe a new service for Mr. Berryhill to offer to these companies.
This is long overdue. Once parking companies are named as defendants we will see some movement, but until then they don’t seem to care. After all, a click on an infringing link pays just as well.
Perhaps one of the newer parking companies will see “safe” parking as an opportunity to gain market share.
Raymond Hackney says
I like that Accent “safe parking” very good.
John Berryhill says
“The parking companies need to respond by offering better landing pages that will lower the risk of UDRPs for domain investors.”
Good luck. That was the point of my talk at the first T.R.A.F.F.I.C. in 2004. Hard to believe it was ten years ago.
Isn’t Panelist Debrett G. Lyons normally pro respondent
or am I thinking of someone else
“Smart Parking” – let me know when you experts figure it all out – and where it is cost effective.
I am sure Frank, Marchex, BuyDomains and all the rest will be all over it as well 🙂
Actually I said “safe” parking, but nevermind.
Safe parking would be cost effective once domain owners start moving to the compani(es) that offer it. Cost effective in the sense that those without it would lose a lot of business.
Perhaps a trademark search can be done for the domain. Positive results would trigger a filter for keywords in that sector. Admittedly that would not solve the problem, but it gets a lot of it. Using such a service might count as “due diligence” in the panel’s eyes. It seems more plausible to change parking than to change the way UDRP panels view parking.
DNS does sometimes present a generic lander, I am not sure what triggers it. Nor do I understand why I often see results in Chinese when I am in the US.
The safer the parking gets the less the revenue. but given the state of ppc in general it is time for “Smart Offers” and Selling targeted typeins – that is a Lot a fiking work – not just the google gravy many of us have gotten used to.
Raymond Hackney says
I made an error Accent and wrote smart as I was writing something else about smart technology and had smart on my mind. I edited, sorry about the misquote.
and there we go with this old discussion on one vs three member panel. there is still to be proven having three member panel produces better decisions. the problem in some cases is the fragile defense, like in this case
Michael Berkens says
Selecting an attorney with an excellent track record in UDRP’s is equally important to getting a three member panel.