Amicus Trade AB of Båstad, Sweden just won control of the domain name HoldOn.com
This is the third recent case where a UDRP panel found the transfer of a domain name to a third party amounts to a new registration for purposes of the Policy
The original registration date, which is this case was March 18, 1997.
However, the current domain holder acquired the domain name this year (actually it appears the domain holder may have acquired the domain back in 2009 and financed it but it was in the name of the finance company)
Here are the relevant facts and finding by the one member panel of Christopher J. Pibus:
The Complainant markets and distributes fastening clips under the trademark HOLDON.
The Complainant’s website indicates that the trademark was derived from the combination of the word “Hol”, which is a village in Sweden, and the Swedish word “don” which means device or gear.
The first application for a Swedish trademark for the mark HOLDON was filed on February 19, 1999.
Since then the Complainant has registered the HOLDON trademark in the OHIM (Europe) and Chinese Trademarks Offices. The following are the details of the Complainant’s trademark registrations:
Swedish Trademark Registration No. 344415;
OHIM Trademark Registration No. 004471199; and
Chinese Trademark Registration No. 9782802.
The Complainant also owns domain names which revert to the Complainant’s website, namely and .
The Complainant has marketed its HOLDON products throughout Europe, Asia and Sweden for 15 years and has developed a substantial reputation in the HOLDON trademark.
The disputed domain name Holdon.com was initially registered on March 18, 1997.
The Complainant wrote to the original owner of the disputed domain name in 1999 seeking to purchase the disputed domain name, but the owner did not respond to that communication.
From 2002 to 2006 the disputed domain name reverted to a website that provided news content.
In 2009, the disputed domain name appeared to be registered in the name of Domain Finance Inc.
In 2013, the ownership of the disputed domain name changed to the current registrant, Dharshinee Naidu. When the ownership of the disputed domain name changed hands in 2013, the Complainant again wrote to the owner of the disputed domain name, the Respondent), but no response to that communication has been received.
At the time the Complaint was filed, the disputed domain name reverted to a click-through website that provided links to third party sites.
The Panel is satisfied that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Thus, the burden of proof shifts to the Respondent to demonstrate any rights or legitimate interests it may have in the disputed domain name.
In the absence of any Response, the Panel accepts the Complainant’s contentions that the Respondent was never authorized or licensed to use the Complainant’s trademark, and that the Respondent is not commonly known either in business or as an individual by the Complainant’s HOLDON trademark. The Panel further concludes that the Respondent’s use of a confusingly similar domain name in association with a click-through site is not in the present circumstances evidence of use in association with a bona fide offering of goods and services.
In the absence of any Response, the Panel accepts that the domain name was acquired by the Respondent in 2013.
At the time the disputed domain name was acquired in 2013, the Complainant’s HOLDON trademark had been registered for over 12 years, and had been extensively used on products and had been marketed in Europe and Asia for 15 years.
At that time, the Complainant had also been active on the Internet for quite some time via its domain names holdonsystems.com and holdon.info. The Panel is further prepared to accept the Complainant’s uncontested assertions that the use of the disputed domain name in association with a click-through site has interfered and/or is interfering with the Complainant’s business, and that the disputed domain name is leading Internet customers seeking the Complainant’s website to the Respondent’s unauthorized website for purposes of monetary gain. In the absence of any evidence to the contrary, the Panel finds that the disputed domain name was registered and used in bad faith by the Respondent.
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WTF!? this is ludicrous. go get insane combinations and trademark them and then go after a domain.
Hold On isn’t an insane combination, its a natural one that’s short and very good.
Its a domain I would have registered in a heartbeat and asked six figures to sell.
Okay … we have a call to action, correct? Why not set one of the goals of the call to action as defining which language shall be considered, first, when determining the generic nature of a domain name? Given the volume of trademarks, and given the arcane nature of the Swedish language to most people, which ruling is just so much horse-doodie. Of course, NOT responding was stupid. I think, longer term, the bigger goal could be strengthening ownership of a domain as a right, of itself, unless there’s a blatant trademark infringement, like cocacola.com or arrowshirts.com or anything of that nature, but continually shifting the burden by simply claiming an obscure trademark, in a language 99% of the world DOES NOT SPEAK, then using that to abuse the UDRP system, further undermines the stability of the domain aftermarket. It certainly scares the crap out of me. And why didn’t these Swedes use their meatballs to just buy the god-damned name? Oh, and Hol + Don are a name and word, that coincidentally also represents the name of a company that manufactures fasteners, and that fastener maker markets in English across Europe and Asia? Did they prove that or did the panelist just take their word for it? These issues will be discussed at TRAFFIC coming up, intensely, so I’d like to know the thoughts of some of the larger industry players about this one.
“which ruling” should be “this ruling”.
Danny I understand and agree with what your saying, however UDRP change is coming and as much as you and I feel the rules are unfairly slanted towards the trademark holders they feel the current rules are slanted towards the domain holders so there will be a LOT at stake next year when UDRP reform hits ICANN and we only have 1 representative at ICANN and that is PHIL.
Sorry but ICANN isn’t going to read this “bill of rights” on ricksblog
Domain holders need to be at ICANN when this “reform” discussions start in person or through representatives.
Domain holders will need to engage with ICANN through ICANN process, submit comments during ICANN comment periods, play the game.
The trademark holder will.
they might as well just roll the dice to make a decision as there is no consistency at all.
You would think that large companies with valuable domains, which they are either not using or may wish to sell at some point, would be on our side here. I hope ICA is reaching out to them, as well as domainers, for support.
“The Respondent did not submit any response”
Had the domain owner used an IP lawyer and required a 3 person panel, would the outcome be different?
Maybe but this is three cases in the last couple of weeks that went in the same direction that a transfer amounts to a new registration and starts the clock over again
Well the decisions are becoming pretty consistent on this issue of a transfer of a domain
no response usually means big problem.
got to figure this one goes to some kind of civil court
Brian
The guy just got the domain this year sent it to a parked page and didn’t spend the $5K it would have to defend it, what makes you he is now going to spend $25K or more and bring it to a federal court?
The concept of a transfer to a third party amounting to a new registration and starting the clock over again is not a new one. In the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, which is utilized by many panelists, section 3.7 states that the transfer of a domain name to a third party does amount to a new registration. It may not be considered a new registration if you can show an unbroken chain of underlying ownership by a single entity. However, 3.7 also indicates that the purchase of a portfolio of domain names would be consistent with a change in control over the names, and is normally regarded as new registrations for purposes of the UDRP. 3.7 was also referenced in a footnote by the Panelist in the HOLDON.COM decision.
“starting the clock over again is not a new one”
it is just another excuse
this is all about no response
Brian its not about no response
There have been other cases that have went the same way with responses
I know everyone wants a quick answer and something they can point to that makes them feel it can’t happen to you
But not the case at the moment
Brian, Not filing a response certainly doesn’t help matters, especially if you have a valid defense. A reading of the WIPO Overview would be helpful to see how Panelists typically view UDRP cases (including minority opinions), and also provide some guidance on what to do to avoid losing a domain in a UDRP.
I wonder if this applies to companies. If I own a company that owns the domain name, someone purchases the assets of my company, includes the domain name, does that still considered a new registration? If Apple buys HoldOn.com, I’m not sure how it will play out.