Weigel Broadcasting Co. of Chicago, Illinois just lost its bid to grab the domain name Me.Tv from Hot Media, Inc. of Kirkland, Washington
The three member panel of Michael A. Albert, Michelle Brownlee and William R. Towns refused to find Reverse Domain Name Hijacking (RDNH) even though the domain name was registered in 2005 and the trademark was not registered until 2011.
Here are the highlights:
Complainant owns the federally-registered trademark METV in the United States, which it uses in connection with the distribution of audio and video content through television broadcasting both over-the-air and over cable and satellite networks.
The Domain Name was registered on March 5, 2005. Respondent acquired the Domain Name on December 14, 2006, allegedly with the intent to use it for a website offering proprietary social media tools by which individuals could own, program, and share a personal video-centric website (the “ME.TV Network”).
It is true that Respondent’s initial plan for the Domain Name does not appear to have been particularly successful, and the Domain Name is no longer in active use.
Nevertheless, it has established rights and legitimate interests. Respondent’s suggestion that it had no knowledge of, let alone intent to trade on the goodwill associated with, Complainant’s mark is plausible, particularly considering that Complainant’s considerable commercial success appears to have occurred long after the Domain Name was initially registered in 2005, and indeed after Respondent acquired it in 2006.
Complainant did not even obtain United States registrations for the mark until January 2011, some five years after the Domain Name was registered.
Moreover, the registration itself indicates a first use only a couple of months prior to the Domain Name registration (January 2005), and limited to the Chicago area, which is remote from where Respondent is located.
These facts lend further credence to Respondent’s observation that the record lacks any evidence that Respondent was aware of Complainant or its mark at the time Respondent acquired the Domain Name.
Accordingly, Complainant has failed to establish the second required element under the Policy.
While the Panel need not reach the bad faith issue, it notes that, for the reasons discussed in Part B above, Complainant has likewise failed to show that the Domain Name was registered or used in bad faith.
Its suggestion that the initial 2005 registration, shortly after Complainant’s own trademark usage began, evidences bad faith is purely speculative. Considering the desirability of domain names employing common English terms, as well as domain names that are short (and ones associated with television), there is little reason to doubt Respondent’s suggestion that its selection of
Nor does Complainant prevail on the bad faith element merely by showing that Respondent offered to sell the Domain Name for $50,000.
Domain Name sales are neither illegal nor are offers to do so, ipso facto, evidence of bad faith, at least in the absence of other indicia suggesting that the registration was made with the intent to sell it at a marked-up price to a trademark owner.
Given that the offer in question did not occur until 2015, some ten years after the initial registration, and well after the initial commercial usage of the Domain Name, there is insufficient evidence from which to speculate that commercial gain from a trademark owner motivated the decade-old registration. Additionally, it appears that the offer was not even made until after Complainant first contacted Respondent.
While Complainant has failed to establish two of the three elements to prove its case under the Policy, that alone does not establish RDNH. In support of its RDHN contention, Respondent offers little more than the suggestion that Complainant’s allegations are “demonstrably false.” But Complainant undisputedly owns a mark which has achieved considerable commercial success, and the Domain Name is identical or at least confusingly similar to it. The evidence of Respondent’s legitimate use of the Domain Name was not self-evident as of the time of the Complaint. Moreover, Respondent certainly did not facilitate the discovery of such evidence when it chose to shield its identity behind a proxy registration service. For all these reasons, the Panel finds that Respondent has failed to establish that Complainant committed RDNH.