Complainant saved from finding of reverse domain name hijacking by citation

International

In a decision issued by a three-member panel from the National Arbitration Forum under the Uniform Domain Name Dispute Resolution Policy (UDRP), Vendita Technology Group LLC, a software solutions company based in Ohio, has been denied the transfer of the domain name ‘vendita.com’. The panel unanimously issued this decision.

The domain name was registered in 1996 by an individual based in Hawaii, M Stenzel (the respondent). The complainant was the owner of the US registered trademark VENDITA, registered on July 23 2013.

In order to be successful under the UDRP, a complainant is required to establish the three following cumulative criteria:  

  • The domain name is identical, or confusingly similar, to a trademark or service mark in which the complainant has rights;
  • The respondent has no rights or legitimate interests in respect of the domain name; and
  • The domain name has been registered and is being used in bad faith.

However, the first paragraph of the UDRP Rules also provides that complainants may be found guilty of attempting reverse domain name hijacking if it is found that they are using the UDRP "in bad faith to attempt to deprive a registered domain name holder of a domain name".

The complainant alleged that the domain name was identical, or confusingly similar, to its VENDITA mark and that the respondent had no rights or legitimate interests in the domain name. The complainant noted that the domain name had been inactive since it was registered at least until after July 2 2012 and that, at the time of the filing of the complaint, it resolved to a website for a company called Yarie LLC, doing business in the field of internet traffic monetisation. However, the complainant argued that no company was registered to do business in the name Yarie LLC and thus that the website at the domain name could not be a good-faith offering of goods or services. In addition, according to the complainant, the respondent was in no way connected with the complainant, had no authorisation to register or use the domain name, was not and had not commonly been known by the domain name and appeared to have no registered trademark rights, including in the term ‘vendita’.

Finally, as an argument for bad faith, the complainant stated that the domain name was clearly being used by the respondent intentionally to attract, for commercial gain and without authorisation or licence, internet users to a website not belonging to, operated by or otherwise associated with, the complainant by creating confusion with respect to the complainant’s mark as to the source, sponsorship, affiliation or endorsement of that website and/or the products/services offered thereon. The complainant also asserted that the respondent’s registration of the domain name prevented the complainant from reflecting its trademark in a corresponding domain name without significant modification and, relying on three UDRP decisions against the respondent (two of which were in favour of the respondent), argued that the respondent had engaged in a pattern of such conduct and/or had been previously accused of such conduct.

The respondent replied to the complaint by putting forward the anteriority of the domain name registration when compared with the existence of the complainant, and thus argued that he could not have had the complainant in mind when registering the domain name. He also stated that he had registered the domain name, along with many other common words as domain names, because of its inherent value as a dictionary word, meaning ‘sale’ in Italian. According to the respondent, using the domain name to display general and descriptive advertising links was not illegitimate. The respondent asserted that the "complainant made an informed decision to create its business under the name Vendita when it knew that the domain name was already registered and unavailable". The respondent further stated that "[h]ad the complainant believed it had rights to the domain name, it should have taken action in 2006. This extremely long delay in taking action bars the complaint under the doctrine of laches which has been recognised under the policy". Furthermore, the respondent argued that the attempt to recuperate the domain name amounted to attempted reverse domain name hijacking.

Further to this response, the complainant filed an unsolicited additional submission where it submitted that the doctrine of laches had no application under the UDRP and that the complainant became aware of the domain name in 2010 and attempted to buy it from the respondent in 2011.

Having found that the domain name was clearly identical to the complainant’s registered VENDITA trademark, the panel summarily dismissed the second UDRP criteria out of hand, given that an analysis in this respect was not necessary in view of the panel's findings under the third criterion relating to registration and use in bad faith. As far as bad faith was concerned, the panel noted that the domain name had been registered over nine years before the complainant claimed to have first used its VENDITA mark (on January 7 2006), over 16 years before the complainant’s application for a US trademark (on December 17 2012) and over 17 years before that trademark registration (on July 23 2013) and the filing of the complaint (on August 12 2013). However, the panel did not accept that the defence of laches had any place in proceedings under the UDRP.  

Regarding the issue of the anteriority of the domain name over the complainant's trademark rights, it should be noted that consensus panel opinion states in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (WIPO Overview 2.0) at 3.1 that:

"Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date…, when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have first been established, the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right".

There are certain exceptions to this rule, but no such exceptions would have been applicable in this particular case.

According to the panel, there was no evidence to suggest that the respondent had the complainant or its non-existent trademark in mind when he registered the domain name, which was one of the numerous common dictionary words which the respondent had registered as part of his business. The panel thus found that, insofar as the domain name redirected to, or was otherwise associated with, a visibly commercial webpage unrelated to the complainant, for services unrelated to those provided by the complainant, the respondent’s use of the domain name did not give rise to any inference of bad-faith use.

Regarding the complainant's assertion that the respondent was engaged in a pattern of bad-faith registration, the panel pointed out that, in two of the three UDRP cases involving the respondent upon which the complainant had relied, the panels' decisions were in favour of the respondent, and furthermore the panel did not accept the third case as establishing a pattern of conduct on the part of the respondent. However, the complainant's citation of the third case was key as it allowed the panel to dismiss the respondent's request regarding reverse domain name hijacking. Indeed, the panel considered that it was conceivable that the complainant, in reliance on that case, could have held a genuine belief that it might have succeeded in this case, despite the lapse of so many years after the domain name was registered until the complainant acquired trademark rights in the term ‘vendita’.

The panel therefore found in favour of the respondent but did not conclude that the complaint had been filed in bad faith, and so declined to make a finding of reverse domain name hijacking.

David Taylor and Sarah Taieb, Hogan Lovells LLP, Paris

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