Emazing B.V. of Baarn, Netherlands which owns and operate the website emazing.nl, represented by Van der Goen advocaten B.V., Netherlands has just been found guilty of Reverse Domain Name Hijacking (RDNH) on the domain name emazing.com
The company that owns emazing.nl was first incorporated in 2000 the domain name emazing.com was transferred several times since its original registration in 2007
Here are the highlights of the one member panel of Matthew S. Harris:
The Complainant is a company founded in 2000 and based in the Netherlands. .
The Complainant is the owner of the following trade marks:
(i) Benelux registered trade mark 687727 filed on May 29, 2000 for the term “Emazing” in stylised text in classes 35, 41 and 42; and
(ii) Community Trade Mark 003493111 filed on November 20, 2003 for the word mark EMAZING in classes 35, 41 and 42;
The Complainant promotes its activities from a website operating from the domain name
4.4 The Respondent is an individual located in the United States.
The Domain Name was registered on June 7, 1997. Since 1998 the Domain Name has been used for a website that promoted a newsletter business that used the name “Emazing”. The operator of this site was Emailing LLC, a Kentucky Limited Liability Company of which the Respondent was a managing member, although rights in the Domain Name may not have passed to this company until April 1999.
On April 26, 1999 Emazing LLC filed a trade mark application at the United States Patent and Trademark Office for the term “Emazing”. The application proceeded to grant on February 8, 2000 with registered trade mark no. 2316782 (the “US Emazing Mark”).
On May 27, 1999 Emazing LLC sold its rights to the Domain Name and the US Emazing Mark to Emazing Inc, a subsidiary of Sony Music Entertainment and the Respondent was appointed Senior Vice President and General Manager of Emazing Inc.
On April 17, 2003 the Domain Name and associated business of Emazing Inc was acquired by Information Outfitters Inc, another company with which the Respondent was associated. Press coverage at this time characterised this transaction as:
“Emazing.com’s founders [having] bought the assets of the company back from Sony Music Entertainment Inc.”
At first sight the question of whether there has been bad faith registration in this case appears to be very simple. The Respondent (or perhaps a company with which the Respondent was connected), registered the Domain Name not only before the Complainant possessed any registered trade mark rights but before the Complainant had even been created. Except in limited circumstances (see e.g. WIPO Overview 2.0, paragraph 3.1).
There cannot be bad faith registration where the domain name registrant could not know of the existence of the complainant or its likely rights because neither the complainant nor its rights yet existed and had no knowledge that the complainant or those rights were likely to come into existence.
The position is, however, a little more complicated than this. The reason is that according to the Respondent’s own case, ownership in the Domain Name has been transferred on a number of occasions. As is recorded in paragraph 3.7 of the WIPO Overview 2.0, “transfer of a domain name to a third party does amount to a new registration”. Who or what constitutes a “third party” has been the subject of some debate among UDRP panels, but this Panel has tended to adopt a strict view on this issue. In the opinion of the Panel a transfer to a separate legal entity will constitute a fresh registration for the purposes of the Policy, even if that separate legal entity has close connections with the person in whose name the domain name was previously registered. The reasons for this were explained at some length by the Panel in ehotel AG v. Network Technologies Polska Jasinski Lutoborski Sp.J., WIPO Case No. D2009-0785, where it held that a transfer to a corporate entity was a fresh registration even though that corporate entity appeared to be the corporate alter ego of the previous registrant.
Although the Respondent has provided a detailed and very helpful explanation of how the Domain Name has been used since initial registration, there is no explanation or disclosure of when exactly the Domain Name formally transferred on the WhoIs register into the name of the Respondent.
Nevertheless, even if one assumes in the Complainant’s favour this was relatively recent, and perhaps even after the email correspondence between the Complainant and the Respondent in October 2003, referred to in the parties’ supplementary submissions, the Panel is not persuaded that such registration was in bad faith.
6The reason is that it is clear not only that the Respondent (or perhaps a company with which the Respondent was connected) registered the Domain Name before the Complainant existed but it was then used for a genuine business in the United States that lasted (albeit it would appear under different corporate ownership) for a significant number of years.
That business appears to have come to an end as long ago as September 2003, but it is a business with which the Respondent was closely associated and it is not surprising that the Respondent might want to acquire the Domain Name that had been used for and incorporated the name of that business.
6.10 In the ehotel case mentioned supra, the Panel held that the transfer to a new corporate entity was in bad faith for the following reasons:
“Ultimately, the Panel is of the view that regardless of what may have been the original motivations for the registration of the Domain Name, by March 2004 [i.e., the date of transfer to a new corporate entity], [the previous registrant of the relevant domain name and the person who controlled the new corporate entity] had come to the conclusion that the real value to him of the Domain Name lay in taking advantage of its associations not with any business of his own but with the Complainant’s business.”
The Panel is unconvinced that it was with similar motives in mind that the Domain Name was transferred into the hands of the Respondent. The term “emazing” in the Domain Name can be read as portmanteau of the words “email” and “amazing”. Presumably it was for this reason that the term “emazing” was initially adopted for a newsletter business. Even if the Complainant’s business activities would result in many (European) Internet users associating that term with the Complainant (and the Panel notes that the Complainant has filed no evidence which would support that conclusion), there would still be potential uses of the term “emazing” in future that would or could take advantage of that portmanteau meaning and which would not in some way trade off of that reputation.
The fact that in October 2003 there was an exchange of correspondence between the Parties in which the Respondent expressed a willingness to consider offers to sell the Domain Name to the Complainant, does not improve the Complainant’s case.
As the Respondent points out, it was the Complainant that approached the Respondent. This occurred only a month after the business use of the term “emazing” had ceased. It is a document that is consistent with the Respondent’s case as to how the Domain Name had up to that time been used. Further, the fact that the Respondent was prepared to consider offers for that name (together with the then still extant US Emazing Mark) at that time is neither surprising nor suspicious.
Even if one were to accept that from this date the Domain Name was held with a view to its possible subsequent sale to others that would not justify a finding of bad faith.
The holding of a domain name for the purposes of sale is not per se in bad faith.
What is required is for the Complainant to show that the Respondent acquired and then held that Domain Name with a view to taking some unfair advantage of the reputation of the Complainant’s marks (whether through by sale to the Complainant or its competitors or otherwise).
The October 2003 correspondence gets nowhere near showing this. Further, there is no evidence before the Panel that at any time after that correspondence the Domain Name has been used in a manner that takes some unfair advantage of the reputation of the Complainant’s marks
Given this the Complainant has failed to show that the Domain Name was registered or used in bad faith and has failed to make out the requirements of paragraph 4(a)(iii) of the Policy.
Reverse Domain Name Hijacking
The Complainant or its advisors must have known from the start that the Domain Name was registered before the Complainant’s business even came into existence.
This would have been apparent from the WhoIs registration details that were included by the Complainant as an Annex to the Complaint.
For the reasons that have been explained in the context of bad faith above, this of itself would not inevitably have been fatal to the Complainant’s case. Even if the initial registration could not have been in bad faith, the Complainant might have argued that a subsequent transfer constitutes a fresh registration in bad faith. However, the Complainant should have known that if it was to succeed in these proceedings, this was an issue that needed to be directly addressed. The Complainant did not do so. Indeed, the issue of transfer only raised its head at all because of the detailed and helpful description of events that was provided by the Respondent in his Response.
Further, there is the email from the Respondent in October 2003. Even if in October 2003 the Complainant had been unaware that the Domain Name had previously been used in connection with a United States business that used the term “emazing”, this email would have made this clear. Indeed, the Respondent even provided details of the trade mark that had been registered in the United States in that term in respect of that use.
That email was not disclosed in the Complaint and no attempt was made in the Complaint to disclose or address the previous use of the term “emazing”. Although that email was sent over twelve years ago, there has been no material change in the use of the Domain Name since that date.
Therefore, the Panel considers the failure to disclose the email or address this issue to be a significant and material omission on the part of the Complainant. No excuse or explanation is offered for that failure in the Complainant’s supplementary submission.
These proceedings were commenced by the Complainant when it or its advisors should have known that the Complainant would have difficulty in showing bad faith registration and where it had in its possession, but initially decided not to disclose, correspondence that not only was relevant to the question of bad faith, but tended to undermine its case in this respect. Given this, the Panel concludes on the balance of probabilities that these proceedings were commenced speculatively with little belief that on any proper analysis they had a real prospect of success.
Accordingly, the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. This Respondent’s allegation of reverse domain name hijacking is made out.