National Automotive Experts, L.L.C. just lost its bid to grab the three letter domain name NAE.com in a UDRP, from Vertical Axis Inc. who was represented as usually by Ari Goldberger of Esqwire.com
The three member panel of Ho-Hyun Nahm, Diane Thilly Cabell and Sandra J. Franklin easily found in favor of the Domain Holder concluding that the Complainant didn’t establish that they had an exclusive rights to the term NAE and that the domain was registered 6 years prior to the date the that Complainant said they first obtained the legal rights to the term
The Panel notes that, whether or not the USPTO eventually accepts Complainant’s evidence of secondary meaning and registers the NAE mark, Complainant does not even claim to have rights in NAE prior to 2006, approximately 6 years after Respondent registered the <nae.com> domain name.
Duh.
The only real question left was whether the Complainant should have been found guilty of Reverse Domain Name Hijacking.
The panel found they were not.
The reason:
Complainant is trying to establish its right to monopolize NAE as a trademark with the USPTO, and has made bona fide arguments here under all three elements of the Policy.
So the Complainant was trying to monopolize and prove exclusive worldwide ownership of a three letter term and then enforce it against a domain holder that acquire the domain 6 years before and the panel doesn’t find RDNH, because they “tried” to do something they could not.
Makes no sense.
A trademark holder who brings an action on a generic mark and then tries to enforce it against a domain holder that registered a domain years before the company even claims to have rights to a term should result in Reverse Domain Name Hijacking per se.
In this case I guess they were only guilty of attempted Reverse Domain Name Hijacking.
Few interesting points from this case:
“Complainant has used the NAE mark for more than 8 years and has spent more than $2,000,000 advertising under the mark” — They should have spend some amount on buying the domain name. They have to spend another so many millions in coming years.
“While the Panel acknowledges that Complainant and others may refer to Complainant as NAE, it notes that the USPTO has not yet declared that Complainant has the right to monopolize the three letters NAE. Thus, the Panel declines to find that Complainant has trademark rights in the acronym NAE. ” — This to me is very important for any similar cases.
Last but not the least, NAE.COM is for sale through Mark.com and the best chance for complainant is to pay another $2million and get it from there.