LML Investments LLC (LML) represented by Jeremiah A. Pastrick of Continental Enterprises, Indiana was just found guilty of Reverse Domain Name Hijacking (RDNH) on the domain name CountryGirl.com
The domain holder P.A. Gordon represented by Ari Goldberger of Esqwire.com, New Jersey, USA.
The three member panel of Paul M. DeCicco, Esq., The Honourable Neil Anthony Brown, QC, James A. Carmody, Esq found that LML which had a trademark since 2008 attempt to grab the domain name that was registered 7 years earlier was a clear case of RDNH.
Here are the highlights:
Complainant, LML Investments LLC, has been using the COUNTRY GIRL mark in commerce since 2004 in connection with the sale of clothing, accessories, paper goods etc, and has a valid registration with the United States Patent and Trademark Office (“USPTO”) for the COUNTRY GIRL mark (Reg. No. 3,443,872, registered June 10, 2008).
Respondent’s registration of the disputed domain name predates Complainant’s registration of the Country Girl mark by 7 years.
Respondent has used the disputed domain name in connection with email services, search services, dating services, music, and country themed items. Respondent’s use of the disputed domain name in connection with its descriptive meaning establishes Respondent’s rights and interests in the disputed domain name.
The disputed domain name has been listed as for sale by auction and that the starting bid for the disputed domain name is $100,000.00.
Complainant asserts that this bid amount is wildly in excess of Respondent’s out-of-pocket costs associated with registering the domain.
However, since the Panel finds that Respondent has rights in the domain name at issue which far predate and are superior in some respects to those of Complainant, it is clear that Respondent is legally free to offer the domain for sale at any price it wishes.
Complainant’s argument in this regard is completely frivolous and clearly offered in bad faith.
Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii).
Respondent has rights or legitimate interests in the
Respondent could not have registered the domain name to target Complainant’s mark as Complainant did not register the Country Girl mark for 7 years after Respondent registered the disputed domain name.
As such, the Panel finds no evidence of bad faith under Policy
Respondent’s registration of the disputed domain name in 1998 predates Complainant’s registration of the Country Girl mark by seven years.
This predation precludes any serious claim of registering the disputed domain name in bad faith as Complainant’s rights in the Country Girl mark did not even exist when Respondent registered the disputed domain name.
Therefore, there is no evidence of bad faith under Policy ¶ 4(a)(iii).
Respondent asserts that Complainant should be barred by the Doctrine of Laches as the disputed domain name was registered 16 years ago, and Complainant gave no explanation for why it waited so long to initiate this Complaint.
Respondent contends that the delay of 16 years to take action rises to the level of prejudicial and unreasonable delay.
Therefore, the Panel may consider the doctrine of laches as evidence for Respondent in its considerations of the elements of the Policy.
However, the Panel unanimously determined that it was not necessary to consider laches as a potential defense in this case despite the extreme length of time that has expired since the institution of these proceedings. Other profound defects in Complainant’s case, as noted above, have made that unnecessary.
Reverse Domain Name Hijacking
The Panel finds that Complainant and its counsel have acted inappropriately and in reverse domain name hijacking by initiating this dispute and continuing with it following the delivery of the Response by Respondent. Complainant is attempting to deprive Respondent, the rightful, registered holder of the disputed domain name, of its rights to use the disputed domain name.
Complainant and its counsel should have known that they would be unable to prove at least two of the elements needed to prevail.
Even a cursory review of the URDP and UDRP decisions would have alerted Complainant and its counsel to the fact that its case was devoid of merit.
Thus, the Panel holds that reverse domain name hijacking has occurred.