SK Lubricants Americas of Houston, Texas was just found guilty of Reverse Domain Name Hijacking (RDNH) on the three letter .com domain name ZIC.com
The domain owner was represented by ESQwire.com
The Domain Name was originally created on September 6, 2003 but the current owner obtained the Domain Name on February 28, 2015 and is offering it for sale, and is in the business of selling domain names.
The domain name is parked.
The Complainant offered $3,000 to buy the domain and then filed this UDRP when the offer was rejected.
The decision has a good discussion about protecting rights of owners of LLL names that are parked or held for investment
“The question in this case is whether holding a domain name for resale, and in the meantime using it in respect of a parking page generating “pay per click” revenue, is itself sufficient to generate an independent right or interest.
Is it a “bona fide offering of goods or services” that being the only one of the above criteria which might apply?
“The Panel accepts that the right to register such acronyms cannot be unlimited. Knowing of a complainant’s trademark, registering a domain name to copy the trademark or using it to trade off it or to target the trademark owner or act inappropriately towards it must put the registrant in a different position and put at risk its claim to have a right or legitimate interest in the domain name.
But in the absence of such factors, and none are present in this case the Respondent has as much right as anyone else to use expressions such as acronyms, generic, dictionary words or other domain names made up from a small number of letters.”
“Holding Names for sale is not improper. And responding to demand/request for purchase is ok…”
In the present case the Domain Name is not a generic term per se but it is simply a series of three letters and as such has no specific meaning. The evidence the Complainant has filed does not establish that the parking page operated by the Respondent (which is no doubt automatically generated) operates in a way which results in a connection to goods or services connected with the Complainant.
The Respondent’s argument is that he had a right or legitimate interest in the Domain Name because the Domain Name is an acronym and/or a three letter combination and, as such, the Complainant could not have exclusive rights to it as against the Respondent or anyone else. That would seem to be so as a matter of common sense and it is supported by previous UDRP decisions dating from the very beginning of the UDRP.
My favorite is the RDNH language some of which is here…
In the view of the Panel this is a complaint which should never have been launched. The Complainant should have appreciated that establishing registration and use in bad faith in respect of a domain name which had first been registered many years previously and which was a three letter acronym was likely to involve difficult considerations which was a three letter acronym was likely to involve difficult considerations.
The Complainant appears to have ignored any such considerations.
Given the nature of the Policy and the multiplicity of previously decided cases dealing with similar issues in relation to short acronym type domain names, this was a case that had no reasonable prospects of success.
If the Complainant took competent legal advice it should have appreciated that this was the position. If it did not take competent legal advice it has only itself to blame. In all the circumstances the Panel agrees with the Respondent that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding
It is not clear to the Panel whether the above email was formulated with the benefit of legal advice but it does not matter – the statement that an offer to sell a domain name which corresponds to a trademark is itself evidence of bad faith is simply wrong.
Carrying on business in registering descriptive or generic domain names is not of itself objectionable ”
“There may be circumstances where a registrant (or a purchaser) of a domain name which is a generic word or an acronym has knowledge of the rights of the trademark owner in a way which could raise issues as to the good faith or otherwise of the registrant. In order to establish the applicability of such circumstances it is incumbent upon a complainant to explain to a UDRP panel, with appropriate supporting evidence, why it is that a registrant should be considered to have actual knowledge of the complainant and/or the complainant’s rights (or deemed knowledge if that is the complainant’s case).
In the present case no attempt whatsoever has been made in this regard. Beyond a bare assertion that the ZIC branded product exists and is sold in a number of countries the Panel has no knowledge at all of how well known the Complainant’s trademark is, what sales its trademarked products enjoy, what advertising or marketing is carried out in relation to such products, or as to any other of the multitude of possible factors that may go to show that a Respondent was (or possibly should have been) aware of the Complainant’s rights.”
“The Respondent says that he obtained the Domain Name simply because it was an available three letter sequence and all such three letter sequences are likely to have some value. He says there will typically be many organisations which have a name or a product which if portrayed as an acronym will correspond to a given three letter sequence and hence he seeks to acquire such sequences. The Response identifies the original registrant, Zenith Insurance Company, and several other organisations as examples of organisations where the acronym “zic” is applicable.”
“The Respondent says he had never heard of the Complainant or its ZIC product when he obtained the Domain Name. That account seems to the Panel to be entirely credible and believable and the Panel sees no reason to doubt the Respondent’s statement.”
The Panel accepts that a registrant cannot be “willfully blind” to whether a domain name may violate trademark rights. The question however is what amounts to “willful blindness”. The primary obligation on a registrant is set out in paragraph 2 of the Policy and that obligation is to determine if its registration violates another party’s trademark rights. This is not however an absolute obligation which bars any registration of any domain name if someone else, somewhere in the world, has a trademark (however obscure) corresponding to the domain name.
The question of when the registration will amount to a violation of rights is one of fact and degree, depending upon many factors, such as the geographical locations concerned, the nature and scale of the trademark owner’s business, how well known and/or famous the trademark in question is and so on. In the present case the Panel is satisfied that the nature of the rights that the Complainant had at the relevant date were not such as to render the Respondent guilty of willful blindness when it registered the Domain Name.
Respondent cannot be in bad faith