Alan M. Peters / Can Do Canines represented by Paul Schwarzkopf, Minnesota, has been found Guilty of Reverse Domain Name Hijacking on the domain name CanDoCanines.org
The domain holder, Marilyn Mathis was represented by Steven L. Rinehart, of Utah
The Complainant admitted that the domain name was not registered in bad faith but argued was held in bad faith which of course would have doomed his complaint.
However the one member panel of Nathalie Dreyfus found the Complainant who just registered their trademark in 2011 engaged in Reverse Domain Name Hijacking trying to grab the domain that was registered back in 2007.
The Complainant’s registered its domain name, can-do-canines.org in 2009 two years after the domain name subject to the UDRP
The panel also found the term was generic, and that the Complainant waited To Long to file the Complainant:
“Complainant who has forfeited any rights to the disputed domain name for having waited seven years to file this action under the doctrine of laches.”
The Complainant lost on every issue.
Here are the highlights:
The Complainant is the owner of the trademark CAN DO CANINES registered at the USPTO on May 24, 2011, which he is using for his charitable, non-profit corporation called Hearing and Service Dogs Minnesota, in Minnesota.
The Respondent is the owner of the domain name candocanines.org since January 27, 2007, for the purpose of publishing a book entitled as so and addressing the fact that canines can recover from injuries with love and affection of their owners.
Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).
Respondent argues that the terms of the domain name are common and generic, and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet.
The Panel agrees with Respondent
Therefore, the Panel finds that Respondent can establish rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).
Respondent argues that it does have rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) as it originally registered the disputed domain name for the purpose of publishing a book on the extent to which canines can recover from injuries with love and affection from their owners.
It is presumed that Respondent plans to use this website for this purpose, even though Respondent has submitted no evidence of its plans for such a use of the website.
The Panel thus finds that Respondent has satisfied Policy ¶ 4(a)(ii).
For this reason, the Panel finds that Complainant failed to meet its burden of showing that Respondent lacked rights or legitimate interests in the disputed domain name, and thus that Policy ¶ 4(a)(ii) is not fulfilled.
Registration and Use in Bad Faith
Complainant asserts that Respondent has used the candocanines.org domain name in bad faith, but concedes that Respondent did not register in bad faith.
Complainant argues that the domain name has been inactively held for seven years. Complainant has not provided any additional evidence that would establish its bad faith claim.
The Panel further finds that Respondent has not registered or used the domain name in bad faith as it finds that Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use.
Respondent contends that the domain name is comprised entirely of common terms that have many meanings apart from use in Complainant’s CAN DO CANINES mark. Moreover, Respondent contends that the registration and use of domain name comprising such common terms is not necessarily done in bad faith. S
As the Panel finds that a respondent is free to register a domain name consisting of common terms and that the domain name currently in dispute contains such common terms, the Panel then also finds that Respondent did not register or use the domain name in bad faith under Policy ¶ 4(a)(iii).
Respondent also argues that it could not have registered the disputed domain name in bad faith because its registration of the domain name predates
Complainant’s rights in the CAN DO CANINES mark.
The Panel again notes that Respondent registered the disputed domain name in 2007.
As such, the Panel finds that Respondent’s registration of the disputed domain name predates any rights Complainant has in the CAN DO CANINES mark and finds that Complainant could not have satisfied Policy ¶ 4(a)(iii).
Respondent argues that it did not register the domain name for the purpose of offering it to Complainant; and, contrary to Complainant’s assertion that Respondent has forfeited any rights to the domain name by using it passively for seven years, it is Complainant who has forfeited any rights to the disputed domain name for having waited seven years to file this action under the doctrine of laches.
Therefore, the Panel considers the doctrine of laches as evidence for Respondent in its considerations of the elements of the Policy.
Considering all the above, the Panel finds that Policy ¶ 4(a)(iii) is not fulfilled as Complainant did not meet the burden of proving that Respondent registered or used the domain name in bad faith.
Reverse Domain Name Highjacking
Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Respondent contends that Complainant is attempting to deprive Respondent, the rightful, registered holder of the domain name, of its rights to use the disputed domain name.
Respondent argues that Complainant had no bona fide basis for commencing this proceeding, and that Complainant brought this action to seize its competitors’ domain name, forcing the incurrence of attorney fees.
Thus, the Panel finds that Complainant knew or should have known that it was unable to prove that Respondent lacks rights or legitimate interests in the domain name and that Respondent registered and is using the disputed domain name in bad faith.
As the Panel finds there is sufficient evidence to this effect, it finds that reverse domain name hijacking has occurred.””