In what be a record day, a two separate UDRP panels have found complainant?s guilt of reverse domain name hijacking (RDNH).
The? first case involved the domain name Mindo.com
The second case involved the three letter domain name SHA.com
The more interesting of the two cases is the Mindo.com case.
The panel found RDNH even though the complainant had a trademark in the US and other countries which pre-dated the domain holders registration and despite the fact that the domain was parked.
The complainants also were the previous registrant of the domain which apparently let it lapse and the domain wound up being sold on SnapNames.com
Although the complaint had a trademark on the term ?Mindo?, Mindo is also a geographic location in Ecuado, which is a popular tourist destination.
Here are the relevant facts and findings by the panel:
?Complainant Mindo AB holds registered trademarks for MINDO in several countries, including the United States of America, the European Union, and Japan, but not (so far as the record indicates) any jurisdiction in South America.?
The earliest such trademark is dated 1995.
MINDO, an acronym for ?My INdividual DevelOpment,? is a process developed by Complainants and used in their business. According to Complainants, from 1998 one or both of Complainants owned the disputed domain name and used it in their business.
Respondent, based in Ecuador, is a reseller for the registrar; its business is ?offer[ing] new domain name registration and web hosting solutions to the public.
[Respondent] also buys already registered or expired domain names in order to sell or park for profit, dealing with the owner or participating in domain auctions.? Respondent acquired the disputed domain name in a SnapNames auction in February 2012.
?The disputed domain name resolves to a standard parking page of hyperlinks, most of which are related to tourism based in or near Respondent?s home country, Ecuador, in particular the Mindo area, which according to Wikipedia is known for ?its growing ecotourism industry based in the Mindo-Nambillo Protected Forest.? None of the hyperlinks mentions Complainants, Complainants? business, or Complainants? competitors.?
?Complainants must prove by competent evidence that:
i) The disputed domain name is identical or confusingly similar to a trademark in which Complainants hold rights, and
ii) Respondent lacks rights or a legitimate interests in the disputed domain name, and
iii) Respondent registered and used the disputed domain name in bad faith.
Policy, paragraph 4(a).
The Panel has italicized the word ?and? above to note that these requirements are conjunctive. ?
?Failure to prove any one of them results in a denial of the Complaint. In this proceeding the Panel needs look no further than the Complaint to determine that Complainants have not made the requisite showing under the latter two Policy heads.?
?Complainants furnish no evidence at all to show that Respondent lacks rights in the disputed domain name or registered or used it in bad faith. ?
?The only evidence or proof referred to in or annexed to the Complaint are several of Complainants? trademark registrations and a screen shot of the hyperlinks page at the disputed domain name.?
?There is no proof (indeed no specific allegation) that Respondent used or tried to use the disputed domain name to take advantage of Complainants? MINDO mark. The record in this case reveals no proof (and again there is no allegation) why a Respondent based in Ecuador might be aware of Complainants in Sweden or their trademark.?
?All Complainants offer are a claim of trademark ownership and their ?opinion? that Respondent might try to profit from the disputed domain name?s inherent value as a five-letter domain name, not even that the sale price reflected any goodwill attached to Complainants? mark. Unsupported conjecture or speculation, like unsupported allegations of desired legal conclusions, is of no force or effect under the Policy?
Reverse Domain Name Hijacking
?The Rules define (paragraph 1) Reverse Domain Name Hijacking (RDNH) as ?using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name? and instruct (paragraph 15(e)) a panel that ?after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.? Respondent has intimated that such a finding is appropriate on the facts of this proceeding. ?
?The Panel agrees.?
?In the Panel?s view, the record in this case clearly supports a finding of RDNH, as Complainants should have known that their allegations must be supported by evidence, not merely ?opinion;? i.e., that the Policy and the Rules require more than ownership of a valid trademark and surmise.?
?Complainants should have known that the Complaint was groundless.?
?Complainants were concededly aware of the popular geographic location Mindo, as a screenshot of the page at the disputed domain name is an annex to the Complaint and the links on that page mostly revert to Mindo-area businesses. ?
?Moreover that fact is common knowledge, or would be to anyone who bothered to look.?
?Aware that a resident of Ecuador such as Respondent might choose a domain name featuring a well-known local area, Complainants were required by the Policy and the Rules to explain why this might not furnish a right or legitimate interest in the disputed domain name and why the registration and use of the disputed domain name should be considered in bad faith. ?
?That Complainants may once owned the disputed domain name likewise does not excuse the deficiencies in the Complaint. There is not even an allegation, much less evidence, that Respondent engaged in any improper conduct in connection with Complainants? loss of the disputed domain name or Respondent?s acquisition of it.?
?The entirety of the Complaint is that Complainants have a mark, Respondent does not, and the five-letter disputed domain name is valuable. In these circumstances, the Panel finds such a pleading to be an abuse of the UDRP process and enters a finding that Complainants have engaged in Reverse Domain Name Hijacking.?
In the SHA.com case, Nat Cohen of Telepathy, Inc. of Washington, won the dispute against a community trademark holder
Here are the relevant facts and findings of that case:
The Complainant is also the owner of the domain name shawellnessclinic.es, registered on May 25, 2010 which points to the Complainant?s web site ??www.shawellnessclinic.es??.
The disputed domain name <sha.com> was registered on August 7, 1998.
?The Complainant states that its trademark SHA is well-known in the health sector and contends that the disputed domain name is confusingly similar to the Complainant?s trademarks, in view of the identity of the distinctive core between the disputed domain name and the Complainant?s trademarks and the Complainant?s domain name and in light of the fact that the disputed domain name is pointed to a web site providing a collection of links to third party sites, including links for hotel accommodation. The Complainant also highlights its need of the disputed domain name <sha.com> for the correct and natural expansion of its business.?
?The Complainant has become aware that the disputed domain name was already registered by the Respondent only after the beginning of its activity and, since it could not conclude a negotiation with the Respondent to obtain the transfer of the disputed domain name, decided to file a Complaint under the UDRP.?
?The Complainant has also stated that ?the fact that the [Respondent?s] use is not real produces an obstruction act for my client, because the obvious and logical owner of the domain name is the owner of SHA. That, and furthermore the fact that there are no trademarks ?SHA? owned by the respondent, implies a decrease of the reputation of my client?s trademarks?.
?The Panel notes that, as highlighted by the Respondent, <sha.com> is a three-letter domain name that was registered in 1998, many years before the Complainant?s existence.?
?Therefore, the Respondent clearly could not have been aware of any trademark rights of the Complainant when it registered the disputed domain name under the Policy. Furthermore, there is no evidence, also in the use of the disputed domain name, that it has ever been the intention of the Respondent to target the Complainant and its mark.?
?Therefore, the Panel finds that the Respondent has shown that it has rights or legitimate interests in respect of the disputed domain name.?
?In light of the above, the Panel finds that the Complainant has failed to prove the second requirement of the Policy.?
?The Panel finds that there is no evidence that the disputed domain name was registered in bad faith.?
?With reference to the use of the disputed domain name, the Panel notes that it is currently pointed to the web site ?www.searchfusion.com??, which provides a search field allowing users to be redirected to third party commercial sites related to the item searched for. No direct reference is made to the Complainant or its products and services on the home page of the web site and there is no evidence that the Respondent tried to generate confusion among Internet users, sought to damage the Complainant or engaged in any other bad faith activities.?
?Therefore, the Panel finds that also the use of the disputed domain name made by the Respondent does not amount to bad faith?
Reverse Domain Name Hijacking
?In the case at hand, the registration date of the disputed domain name precedes the dates of the Complainants? relevant trademark registrations and the evidence shows that the disputed domain name has been used as part of a bona fide business of the Respondent, which owns over 1000 three-letter-domains in its domain name portfolio.?
?The Panel considers that the Complainant is represented by an attorney who should have appreciated that the Complaint could not succeed in the present proceeding since the disputed domain name was registered by the Respondent eight years prior to filing the trademark applications for SHA.?
?Moreover, the Complainant?s representative has misconceived the nature and the purpose of the Policy according to which the Complaint was brought. The Complainant has, in fact, emphasized its need of the disputed domain name to promote its business online and has explicitly stated that it filed the Complaint due to the failure of its negotiations with the Respondent, which requested ?an exaggerated offer? for transferring the disputed domain name. The Panel finds that the Complainant?s representative ought to be aware that the UDRP is aimed at providing trademark owners with a remedy for abusive domain name registrations and is not an alternative strategy to obtain the compulsory transfer of domain names legitimately registered by third parties after the failure of acquisition through negotiations.?
?The Complainant?s submission of screenshots of the Respondent?s web site showing links for hotel accommodations was, as the Complainant pointed out, based on searches for ?hotel? in the search field that were made by the Complainant itself. The result of those searches was clearly put forward in evidence by the Complainant to persuade the Panel that the Respondent?s web site directly promoted services competing with the Complainant. That conclusion was not justified.?
?Nor were the other submissions made by the Complainant that were based on the presence of the search facility on the Respondent?s website. In its submissions the Complainant argued as follows:?
?Moreover, if you access to sha.com, the web page is a general search service, in which you can enter the word you need to find and they inform you about possibilities. For example, if we move from the first screen of the web, pretending to ask for a ?hotel?, that website leads you to another, which have various possibilities and offers for hotels and accommodations. That scenario could generate problems to my client because when possible costumers try to access to its webpage, the first domain will come to their minds will be Sha.com, and when they find this other website, they can think that the famous SHA does not have any webpage. The direct consequence will be the loss of potential customers for SHA. And that is an obstruction act, because, actually, is a non-real use of the trademark in market. Fact this that prove, in an undisputed way, the abusive and malicious use of the domain name www.sha.com??.
Contrary to the submission of the Complainant, is clear that the mere presence of a search function could not conceivably have lead to ?the loss of potential customers for SHA?, it was not ?an obstruction act?, it did not prove ?the abusive and malicious use? of the Disputed Domain Name by the Respondent and, most importantly for present purposes, was not a justification for making such serious and baseless allegations against the Respondent.
In light of the above, the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.?
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