A recent decision that came from WIPO highlights some circumstances where reverse domain name hijacking (RDNH) will most likely be found. The domain name at issue was maisondumonde.com. The important facts for RDNH were primarily pointed out by the Respondent:
According to the Respondent, at the time of registration of the disputed domain name, the Complainant was unknown outside France. Only now is it known in France, Belgium, Italy and Spain where it has opened stores in the last few years. In 1996, the Complainant’s product offer was primarily gifts and accessories, but not furniture. Even today, this continues to be the majority of their product offer in their brick-and-mortar stores, and much of the Complainant’s product range still concentrates on non-furniture products.
The Respondent alleges (but does not provide evidence to show) that the Complainant only offered furniture for sale gradually after 1996 and only started developing its website in 2004. The Complainant’s furniture sales business on the web only started to take off in 2006.
The Respondent states that his product offering has not changed significantly since 2000, when he first started selling furniture in brick-and-mortar stores, and via the Internet, through the disputed domain name which was registered at the same time, together with <maisondumonde.co.uk>.
Further, says the Respondent, when the disputed domain was registered in 2000, the Complainant was a small company in France and had no more claim to use the disputed domain name than anybody else in any country other than France where it had successfully received trade name protection in its home territory.
The Respondent goes on to provide his version of the discussions between the parties that started in 2006. As stated above, the Panel will not summarize those discussions in any further detail because it considers that they are not relevant for the present case.
The Respondent states (and provides evidence to prove) that the authority that rejected his opposition to the Complainant’s CTM application found that “one of the few undisputed points in the proceedings is the fact that the presented evidence is sufficient to prove that the opponent has actually used the name Maison Du Monde in the course of trade”, in particular in the UK, primarily in the London area. (emphasis added)
The Panel found that the Respondent did have some rights or legitimate interests in the domain name, from which it had been operating its business selling furniture since 2000, and also found that there was no evidence of bad faith on the part of the Respondent in registering the domain name.
In the present case, the Complainant knew that the Respondent was offering furniture for sale in 2000 when the Respondent first registered the disputed domain name, and the Complainant did not present any evidence showing that that business was not bona fide back in 2000. Further, the Complainant did not rebut, in its unsolicited rebuttal, the Respondent’s allegation to the effect that his activities were perfectly legitimate back in 2000. After having received the Response, the Complainant should have known that its case was insupportable under the Policy.
While the Panel does take good note of the Complainant’s allegations concerning the situation since 2006, it has no choice but to apply the Rules and to find Reverse Domain Name Hijacking, for the reasons explained above. (emphasis added)
The part that’s a little funky is “After having received the Response…” So, the Panel is creating a duty to withdraw a complaint? Hmm. In any event, they should have been prepared to argue that the Respondent knew about their business prior to starting his business in 2000. Still, I don’t see how they could have overcome the Respondent’s argument that their respective goods/services were not similar at that time (and thus it would not have been a trademark issue back then).
The Panel does wish to note, in addition, that the Response and the Respondent’s unsolicited submission were unnecessarily lengthy because they included certain allegations (not summarized above) and hundreds of pages of exhibits that were not relevant for the present case.
Looks like the Panel wasn’t very pleased with the amount of reading material it was subjected to. There are page limits, but they seem to be routinely ignored. Something to keep in mind: don’t annoy your panel! Although in this case it doesn’t seem to have affected the outcome.
The UDRP was enacted to protect trademark/brand owners from cybersquatters, people who were unfairly using domain names that belonged to their products/services/companies. The UDRP has been invoked successfully to protect personal names, typically where the complainant is a famous celebrity, but several recent complaints have failed because they did not specifically allege, or were unable to show, trademark rights in the names at issue.
A little brief elaboration: a name can be used as a mark, of course. But you have to show that it has been used as a mark. This could be as simple as putting your name on a line of t-shirts, or paper products, or business cards for your maid service. The point is that you must show a connection between the name and the goods or services offered. And, as with unregistered marks, the old problems of sufficiency of the evidence must be overcome.
In one of the cases published this morning, Wernher Pramschufer’s complaint about wernherpramschufer.net failed because he did not show how his name was being used as a mark. The panelist denied the complaint “without prejudice” though, probably believing that Mr. Pramschufer could ultimately show the required evidence but for some reason was unable to do so within the time frame for the UDRP action.
And the trio of Proskauer cases from WIPO earlier this month, the greggmashberg.com, josephleccese.com, and allenfagin.com denials, several partners at the prominent law firm were unable to obtain transfer of domain names being used as gripe sites about them personally, in part because they were unable to show that they had any trademark rights in their names as such, apart from their employment by the prominent Proskauer firm (which was able to show rights in the PROSKAUER mark, but still failed to obtain transfer of proskauerlawfirm.com because of its use as a gripe site).
Contrast this with cases where transfers were ordered, like juliaroberts.com, tommylee.com, and tomcruise.com. In those cases, the individuals were able to show actual rights in their names as marks, typically through the long and public use of their names in connection with their services (acting, music, whatever). But the point remains, under the UDRP a name without something more — some solid evidence of use of the name as a mark — will not satisfy the first prong of the UDRP.
For a Respondent to prevail in a UDRP, it is sufficient to show that they have some rights or legitimate interests in the domain name; this is the second prong of the UDRP. An interesting decision was recently published by WIPO involving the owner of the P90X trademark and the px90.com domain name.
The Complainant argued that the Respondent had no rights or legitimate interests in the domain name because the domain merely redirected to the complainant’s P90x.com domain name.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with the Complainant. There is no evidence that the Respondent has registered the disputed domain name to advance legitimate or bona fide offering of goods and services. The disputed domain name redirects users to the “www.p90x.com” website, that currently displays several links to divert Internet users to websites that offer potentially counterfeit versions of the Complainant’s products and deceive consumers into falsely believing that there is an association, affiliation or sponsorship relationship between the Respondent and the Complainant. The Respondent’s use of the disputed domain name evidences the Respondent’s illegitimate purpose.
I checked, and px90.com returns a DNS error, so it’s not pointing anywhere at the moment. I also checked p90x.com, which seems to be the Complainant’s web site, so I’m really unsure why they would say that web site contains “several links to divert Internet users…” Maybe the Panel made a typographical error in copying the Complainant’s argument here?
In any event, a Respondent need only produce some credible evidence to show some right or legitimate interest in the domain name at issue to cause the complaint to fail, and in this case, the Respondent was able to do just that.
Paragraph 4(c) of the Policy provides some examples without limitation where a respondent can demonstrate a right or legitimate interest in a domain name by showing one of the following facts:
(i) Before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent has been commonly known by the domain name; or
(iii) The respondent is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
The Panel concludes that the Respondent has proven the legitimate interest referred on the item (ii) above.
Exhibit A to the Response shows that the Respondent has been commercially identified by the domain name (PX90) since 1993. Exhibits B to E to the Response also prove that the domain name is still being used to designate the store operated by the Respondent in Mumbai, India.
The simultaneous use of the additional word “Fashions” on the Respondent’s commercial name and store (“PX 90 Fashions”) does not change this conclusion, mainly considering that the term “PX 90” is the distinctive and core part of this expression.
Consequently, the Panel finds the Complainant has failed in these proceedings to prove the requisite second element of the Policy.
It might be helpful to see the Exhibits, just to have a better idea of what exactly the Respondent showed the Panel, because right now the domain name doesn’t resolve to or designate any such store (so far as I can tell). As it stands now, it might be the case that the Complainant could argue the Respondent was passively holding the domain and holding it for ransom, although that sort of argument usually requires that the Respondent has attempted to prohibit the Complainant from reflecting its mark in any domain name (probably not the case for the Complainant here).
Still, this is a good example of the limitation of the UDRP. It is designed to adjudicate clear and obvious cases of cybersquatting, and where there any sort of credible argument to be made on the Respondent’s side, a Complainant’s case becomes vastly more difficult, if not outright impossible.
Domain Name: grazia.us
Case: Arnoldo Mondadori Editore S.p.A. v. Grazia Solazzi, No. FA 1323771 (Nat’l. Arb. Forum June 23, 2010).
In this action under the usTLD Dispute Resolution Policy (which mirrors the Uniform Domain Name Dispute Resolution Policy), Complainant sought transfer of the Domain Name grazia.us. Complainant, an Italian company, has used the mark GRAZIA for many years in several markets around the world in connection with its fashion magazine.
Respondent registered the Domain Name in 2008, but as of the time of the dispute, had not established a website there. Importantly, though, Respondent’s first name is Grazia. And she was able to demonstrate that she had plans to start a food blog at the domain.
So the Panel denied the complaint. It found that Respondent had rights or legitimate interests in the Domain Name because through the use of her name in reference to her journalistic activities and projects, she had become commonly known by the Domain Name.
The Panel also found that Respondent had made demonstrable preparations to use the Domain Name prior to receiving notice of the dispute, and that such preparations were to use the Domain Name in connection with a bona fide offering of goods or services.
Because Respondent had rights and legitimate interests in the Domain Name, the Panel concluded that she did not register or use it in bad faith. On this point the Panel cited Lockheed Martin Corp. v. The Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name) and Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registrations is not in bad faith.”).
Photo courtesy Flickr user Michelle Chagnon under this Creative Commons license.
