A three member National Arbitration Forum UDRP panel has finally done like Spike Lee long suggested, do the right thing and called out an attempted theft of a domain name for just what it is, in the case of SpeedTest.org

Scene LLC, d/b/a Ookla represented by Jeff Nelson of Miller Nash Graham & Dunn LLP, of  Washington, USA have just been found to be guilty of Reverse Domain Name Hijacking (RDNH) in the case of Speedtest.org

The domain holder, Innovation HQ, Inc. was represented by Zak Muscovitch of The Muscovitch Law Firm, Canada who finally got a decision we have long been complaining about UDRP panels not arriving at.

A Generic domain.

False representation by the Complainant to rights to the domain which they clearly did not have.

Complainant going into business years after the domain holder registered the domain and then trying to take the domain (in this case, the domain holder registered the domain name “six years before Complainant first used the SPEEDTEST mark, and four years before Complainant even existed as a going concern)”.

These cases should automatically, but rarely result, in Reverse Domain Name Hijacking rulings,  but here Mr. Muscovitch successfully got the panel to issue a scaling ruling against the Complainant.

The panel of  Scott R. Austin, Esq., Fernando Triana, Esq and Paul M. DeCicco, Esq should be applauded for not simply and quickly  dismissing a horrible complaint but do the harder work and find RDNH.

Here are the relevant facts and findings from the decision:

“The Panel finds that Complainant has failed to meet the threshold requirement of establishing trademark rights in the term “SPEEDTEST

In the absence of any such trademark rights, Complainant cannot possibly prevail in this proceeding. The Panel, however, has also considered whether Respondent lacks rights or a legitimate interest in the disputed domain name, and whether Respondent registered and used the disputed domain name in bad faith and finds Complainant has failed to meet its burden on both requirements as well for the reasons set forth below.

The Panel also finds that Complainant brought this Complaint in bad faith.

Given Complainant’s lack of any trademark rights, as evidenced by the difficulty it has faced in registering its purported mark in the U.S. Patent and Trademark Office, and Complainant’s own continued use of the term “speed test” as generic to describe its services, the filing of this Complaint appears to have been a bad faith attempt to hijack the disputed domain name from Respondent.

Respondent argues that Complainant has not sufficiently demonstrated its rights in the SPEEDTEST mark. Respondent argues that both the disputed domain name and mark are made up of two common generic terms, “speed” and “test” and thus, Complainant cannot claim that it owns the SPEEDTEST mark through common law rights.

Respondent claims and provides evidence in Response Annex U, that Complainant’s initial registration attempt with the USPTO on the Principal Register was denied based on genericness, and instead, Complainant registered its mark on the Supplemental Register.

Respondent also notes that Complainant merely referenced the number of its registration in the text of the Complaint and omitted the fact that Complainant was relying on a supplemental registration with the USPTO, rather than a registration on the Principal Register. The Certificate of Registration attached to the Complaint in Complaint Annex, Exhibit confirms Complainant’s registration is on the Supplemental Register.

It is well-settled that a Supplemental Registration in the U.S. is not sufficient in itself to establish that a Complainant has rights to a mark for the purposes of the Policy.

To the contrary, registration on the Supplemental register shows that at the time of registration the mark was descriptive and had not acquired secondary meaning.

Under United States law, marks that are merely descriptive, and that have not been shown to have acquired distinctiveness, may be registered on the Supplemental Register, but that registration does not confer any of the usual presumptions that accompany a mark registered on the Principal register (such as prima facie evidence of validity, ownership, and distinctiveness).

Thus, the fact of a Supplemental Registration is no evidence whatsoever the Complainant owns trademark rights in the word SPEEDTEST.

Review of Respondent’s evidence submitted in Response Annex P of the USPTO’s final Office Action shows the Examiner denied registration “because the applied-for mark [SPEEDTEST] is generic and thus, incapable of distinguishing applicant’s goods and services.

Based on the foregoing evidence, the Panel finds that Complainant’s use of SPEEDTEST in connection with its speed test software and its website incorporating that software tool for testing the speed of an Internet connection appears to fall within the class of goods and services for which SPEEDTEST is generic.

In its Complaint, as well as its responses to the Trademark Office’s office action, Complainant submitted exhibits showing that its software and website has received visits by millions of users, installations in 200 countries, high Internet popularity rankings, and apparently has invested in advertising and marketing for its SPEEDTEST software and website.

Considering the USPTO’s decision, which it would be inappropriate for this Panel to question or overrule, we agree with the findings of prior panels when confronted by such evidence under similar circumstances: “Although impressive, these efforts to establish secondary meaning fail as a matter of law because generic terms can never function as trademarks, and no amount of secondary meaning can convert a generic term into a trademark.”

Finally, Respondent has submitted evidence in Respondent’s Additional Submission Annex CC showing that Complainant itself, years after a certificate of registration has issued, uses the term SPEEDTEST on its own website predominantly in a generic manner as “speed test”, without attaching any trademark symbol such as TM or circle R “ ®”, which even a mark registered on the Supplemental Register is entitled to employ.

As Professor McCarthy states, “If the proponent of trademark status itself uses the term as a generic name, this is strong evidence of genericness.

A kind of estoppel arises when the proponent of trademark use is proven to have itself used the term before the public as a generic name, yet now claims that the public perceives it as a trademark”

Since Complainant uses this combination of two dictionary words in their common meaning – to refer to testing the speed of Internet connections – the Panel finds the word SPEEDTEST is generic when used in connection with Complainant’s services and thus Complainant has not established any trademark rights in those words.

Because the Complainant has failed to prove the threshold question of holding trademark rights, and because Complainant cannot succeed unless it can prove all three UDRP elements, consideration of the other factors and the other allegations in the Complaint is unnecessary.

Complainant has failed to sustain its burden of proving that Respondent has no legitimate interest in the disputed domain name.

The Panel finds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).

Although the Complaint fails for reasons discussed above, the Panel has also considered Complainant’s evidence regarding the Respondent’s bad faith.

Respondent argues that it could not have registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii), because it registered the disputed domain name six years before Complainant registered its own domain name and in fact before it even existed as an entity.

Prior Panels have determined that there can be no finding of bad faith where the respondent’s registration of a disputed domain name predates the complainant’s registration of its own domain name or use of the mark.

Accordingly, the Panel finds here that Respondent’s registration of the disputed domain name cannot be in bad faith, considering the fact that Respondent registered the disputed domain name six years before Complainant first used the SPEEDTEST mark, and four years before Complainant even existed as a going concern.

Reverse Domain Name Hijacking

Deciding that Complainant has failed to meet its burden in this case does not however, end the Panel’s inquiry.

Under the Rules, the Panel must also consider whether Complainant is guilty of Reverse Domain Name Hijacking (“RDNH”).

Respondent here has requested such a finding, and even in the absence of such a request or of a response, the Rules specificallyput the burden on the Panel to determine whether a complainant has tried to use “the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.”

Complainant’s effort to obtain transfer of the disputed domain name on the basis of alleged cybersquatting of a generic word may in itself be indicative of RDNH.

Even worse, Complainant did not disclose in the text of its Complaint the material fact that Complainant’s registration was on the supplemental register and it was forced to amend its application to new services when its original application for browser speed testing software services was refused as generic in the supplemental trademark registration upon which the Complainant relies.

“[A] finding of [RDNH] is warranted if the Complainant knew or should have known at the time it filed the Complaint that it could not prove one of the essential elements required by the Policy. [. . .] [S]uch a finding is particularly appropriate where the Respondent’s registration of the domain name predates the very creation of the Complainant’s trademark.”

Respondent contends that Complainant knew of Respondent’s rights in the disputed domain name, because Respondent registered the disputed domain name six years before Complainant first used its alleged mark and four years before Complainant’s LLC was formed.

Additionally, Respondent argues that Complainant misled the Panel about Complainant’s trademark registrations, in that Complainant only had rights with the Supplemental Register and not the Principal Register.

Lastly, Respondent claims that Complainant lied about the terms and existence of a licensure agreement that was allegedly made between the parties.

Taken together, these facts are sufficient to show that the Complaint was filed in a bad faith attempt to deprive the Respondent of a domain name to which it is entitled.

The Panel finds Complainant to have been guilty of Reverse Domain Name Hijacking.”“