Frank Schillings North Sound Names has won another Uniform Rapid Suspension (URS) on the domain name Hello.Photo to Complainant, HOLA S.L. of Madrid, Spain, who has trademarked “HELLO!”, “in one or more countries”.
John Berryhill, represented North Sound Names.
Omar Haydar, the examiner found:
The Respondent has registered the domain name , and is the owner of many other domain names, many containing similar commonly used generic terms, purchased primarily for the purpose of resale.
Complainant has claimed that the domain name in question is identical to their protected word or mark; that the Respondent has no legitimate right or interests to the domain, and that the Respondent has registered the domain name in bad faith, for the purpose of selling it to the Complainant.
Respondent has challenged that Complainant has not shown that the protected mark is in current use.
Respondent has also claimed that the protected mark includes an exclamation point, whereas the domain name does not.
Further, Respondent claims the domain involves a commonly used generic term, and is consistent with their business of acquiring domain names including common terms for the purpose of resale. Lastly, the Respondent claims that Complainant has not proven bad faith in the purchase and use of the domain name, and claims the purchase was in good faith based on their business model.
The Examiner finds that Complainant has proven that the domain name is identical through evidence of the trademark registration.
Notwithstanding that Complainant has failed to provide evidence of the current use of the trademark and that the trademark differs by including an exclamation point, Examiner finds that the domain name is identical to the protected mark.
The Examiner finds that the evidence fails to prove that Respondent has no legitimate right or interest to the domain name.
The Complainant has provided no evidence of such, and without clear and convincing evidence, there is not a presumption of such.
The Examiner finds that the evidence fails to prove the domain names were registered and are being used in bad faith.
Although the Complainant has established that the domain name is identical to their protected mark and that Respondent has purchased the domain name for the purpose of reselling it, this by itself does not necessitate bad faith on the part of the Respondent.
Previous decisions involving domain names based on generic, commonly used terms are consistently denied, protecting the right of domain registrants to retain such domains against trademark owners.
The Examiner also finds guidance for the general right to register domain names based on such generic terms that may be identical or relate to protected marks from the WIPO decision in Zero Int’l Holding v. Beyonet Servs. (WIPO May 12, 2000) which found “”Common words and descriptive terms are legitimately subject to registration as domain names on a ‘first-come, first-served’ basis.”
Thus, holders of protected marks which are also commonly used, generic terms should ensure prompt registration of their desired domains, as their trademarks, on their own, will not suffice to succeed on claims against registrants of such domain names.
After reviewing the parties’ submissions, the Examiner determines that
The Complainant has NOT demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be RETURNED to the control of Respondent.