Glykka LLC of San Francisco, California lost its bid to grab the domain name SignEasy.com.
The domain name SignEasy.com was registered back on October 7, 2005.
The Complainant wasn’t even incorporated until March 8th 2013.
So the domain owner registered the domain some 7 years before the Complainant even existed.
The Complainant trademark is dated July 30, 2013 which is 7+ year after the domain holder registered the domain.
Not only did the one member panel of Sebastian M.W. Hughes refuse to find Reverse Domain Name Hijacking (RDNH) the panelist found that using the domain “since creation as an advertising billboard for the sole purpose of selling the disputed domain name was not a legitimate noncommercial or fair use of the disputed domain name”.
Of course the domain holder didn’t help himself by placing a logo on the sale page that the panel found to be similar in look and feel to the Complainants own logo and by contacting the trademark holder and offer to sell the trademark holder the domain for sale for $80,000
Here are the relevant parts of the opinion:
“”Circumstances indicating that the respondent has registered or the respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name.
Paragraph 4(b)(iv) of the Policy provides as follows:
“By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Although, in all the circumstances, in the Panel’s view there is a strong likelihood of confusion between the Website and the Trade Mark, there has been no evidence adduced, nor is it contended by the Complainant, that the Respondent has been using the Website for commercial gain in accordance with the parameters of paragraph 4(b)(iv). To the contrary, the Complainant submits, and the evidence suggests, that the Website has been used solely in order to offer the disputed domain name for sale, or otherwise in order to facilitate the Respondent’s opportunistic objective of selling the disputed domain name.
Such a conclusion is fortified by the Respondent’s conduct in offering to sell the disputed domain name to the Complainant’s representatives for as much as USD 80,000.
There can be no doubt, on the evidence, that the Respondent has registered the disputed domain name for opportunistic reasons. It appears that the disputed domain name was dormant for many years and that, upon finding out about the Complainant and its business, the Respondent set up the Website, which features prominently the Trade Mark (albeit in a font different to the font used by the Complainant) and, at first glance, mimics the look and feel of the Complainant’s Website1 . Furthermore, upon being contacted by the Complainant’s representatives, the Respondent has clearly offered to sell the disputed domain name for as much as USD 80,000.
The difficulty faced by the Complainant, however, is that paragraph 4(b)(i) of the Policy is expressly linked with the first limb under paragraph 4(a) of the Policy, and requires that the Respondent targeted the Complainant or its Trade Mark at the time it registered or acquired the disputed domain name.
On the facts, the Complainant is unable to establish that the Respondent registered the disputed domain name for the purpose of selling it to the Complainant, as the Respondent could not have contemplated the Complainant’s then non-existent trade mark (see paragraph 3.1 of the WIPO Overview 2.0).
The panel is aware of the approach of a minority of UDRP panels which suggests panels should look at the totality of the circumstances of a case and assess the concept of bad faith registration and use as a unitary concept.
The Panel is also aware of the Octogen line of authorities, also supported by a minority of UDRP panels. However, the Panel is of the view that the Complainant is unable to avail itself of such approaches in the present case and agrees with the majority of UDRP panels that, in particular in cases such as the present proceeding where complainants seek to rely on paragraph 4(b)(i) of the Policy to establish bad faith registration and use, a complainant must prove that the respondent has both registered and used the domain name in bad faith in order to succeed under paragraph 4(a)(ii) of the Policy.
In all the circumstances of this proceeding, in accordance with the parties’ submissions, and on the evidence filed, the Panel therefore finds that the requisite element of bad faith has not been satisfied. Accordingly, the third condition of paragraph 4(a) of the Policy has not been made out.
On the issue of Reverse Domain Name Hijacking the panel wrote “In all the circumstances, the Panel concludes the Complainant was entitled to file its Complaint…the Panel is therefore unable to conclude that this is a case 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 Policy.””