A three member panel just affirmed what we pretty much knew already that the UDRP is not a proper forum for the recovery of allegedly stolen domain names.
In this case, Austin Rare Coins, Inc. brought the UDRP to recover 8 domain names they alleged were stolen by a Hoa Nguyen.
The domains at issues were:
acoins.com
austinreport.com
goldcoins.org
goldinfo.ne
goldprices.com
rarecoins.com
rarecoins.org
silverinfo.net
The panel rejected the Austin’s claim that they had common law trademark rights in the domains due to previous usage of the domain names for several years even through the domain holder did not even respond to the complaint.
The panel did find that the complainant had a registered trademark on the one domain AustinReport.com and ordered that domain name transferred back to the complainant
Here are the relevant facts and findings by the panel
Complainant makes the following allegations:
1) Complainant owns common law rights in marks based on the disputed domain names through Complainant’s extensive and continuous ownership of the <acoins.com>, <austinreport.com>, <goldcoins.org>, <goldinfo.net>, <goldprices.com>, <rarecoins.com>, <rarecoins.org>, and <silverinfo.net> domain names.
2) Respondent registered the disputed domain names between March 30, 2012 and April 23, 2012 after unlawfully seizing the domain names from Complainant in order to harass Complainant’s customers.
3) Respondent intends to make a profit from the disputed domain names.
4) Respondent’s seizure of the disputed domain names is being investigated by a federal agency.
5) Respondent is not making an active use of the disputed domain names.
Respondent had actual knowledge of Complainant’s rights in the marks based off of the disputed domain names and the domain names themselves.
B. Respondent
Respondent failed to submit a Response in this proceeding.
“Complainant is the previous holder of the disputed domain names <acoins.com>, <austinreport.com>, <goldcoins.org>, <goldinfo.net>, <goldprices.com>, <rarecoins.com>, <rarecoins.org>, and <silverinfo.net> . Complainant used the disputed domain names in relation to the provision of information. Respondent has taken control over the disputed domain names and uses the disputed domain names to provide the same content as Complainant used to provide through these domain names.”
“Previous panels have held that a complainant need not own a national trademark registration in order to establish rights in a mark under Policy ¶ 4(a)(i) if the complainant can demonstrate common law rights. “
“Complainant claims to own rights in the ACOINS.COM mark, based on the <acoins.com> domain name, through its extensive and continuous use of the mark and disputed domain name since September 2002.”
“Complainant alleges it maintained ownership of the disputed domain name until the time of Respondent’s seizure of the disputed domain names. Complainant provides the Panel with historical WHOIS information regarding the <acoins.com> domain name and argues that third parties recognize the ACOINS.COM mark as belonging to Complainant and that the amount of traffic at the former resolving website establishes common law rights. ”
“According to the Panel, the mere fact that a domain name such as the <acoins.com> domain name generates a decent amount of traffic is insufficient to demonstrate common law rights in its ACOINS.COM mark pursuant to Policy ¶ 4(a)(i), as Complainant fails to show that the ACOINS.COM sign acquired secondary meaning. ”
“Complainant claims rights in the AUSTINREPORT.COM mark, based on the <austinreport.com> domain name, through its consistent ownership of the disputed domain name since 2009. Complainant asserts that its registration for its assumed name, “The Austin Report,” with the Texas Secretary of State in 2000 supports its rights in the mark. “
“The fact that Complainant registered the assumed name “The Austin Report” with the Texas Secretary of State in combination with the continued use Complainant has made of the disputed domain name demonstrates that Complainant has rights in the AUSTIN REPORT”
“Complainant contends that it owns rights in the GOLDCOINS.ORG mark, based on the <goldcoins.org> domain name, through its consistent ownership of the mark and the disputed domain name since 2001. Complainant contends that it formerly used the disputed domain name regularly to advertise its services and that the former resolving website contained the statement “Copyright 2003 Austin Rare Coins. Inc.”
Complainant also includes with its Complaint the historical WHOIS information regarding the <goldcoins.org> domain name, which shows that Complainant formerly owned the disputed domain name. ”
“The Panel also notes that Complainant provides the Internet traffic report for its former website resolving from the disputed domain name, showing that the <goldcoins.org> domain name generated a decent amount of traffic. ”
“However, the Panel considers this to be insufficient to demonstrate common law rights in a GOLDCOINS.ORG”
“Complainant fails to show that the GOLDCOINS.ORG sign acquired secondary meaning, especially given the generic nature of this sign.”
“Complainant asserts rights in its GOLDINFO.NET mark through its consistent use of the mark and the <goldinfo.net> domain name, which Complainant claims the mark is based on, in the marketplace.”
Complainant asserts that it registered the name “Gold Information Network” as one of its assumed names with the Texas Secretary of State in 2000.”
“Complainant further alleges that it used the GOLDINFO.NET mark and the <goldinfo.net> domain name in newsletters and invested in a custom search engine to promote the mark and disputed domain name.”
“Complainant also provides the Panel with the historical WHOIS information and the archived copy of its former website.”
“However, the Panel considers this to be insufficient to demonstrate common law rights in a GOLDINFO.NET mark pursuant to Policy ¶ 4(a)(i), as Complainant fails to show that the GOLDINFO.NET sign acquired secondary meaning, especially given the generic nature of this sign. ”
“Complainant alleges that it owns rights in its GOLDPRICES.COM mark, based on its <goldprices.com> domain name, through its continued maintenance of ownership of the disputed domain name. ”
“Complainant argues that the volume of traffic its former resolving website generated is sufficient to establish common law rights.”
“Complainant also provides the historical WHOIS information to demonstrate its rights in the mark. ”
“According to the Panel, this is insufficient to establish common law rights in its GOLDPRICES.COM mark pursuant to Policy ¶ 4(a)(i),as Complainant fails to show that the GOLDPRICES.COM sign acquired secondary meaning, especially given the generic nature of this sign.”
“Complainant argues that it owns rights in the RARECOINS.COM mark, based on the <rarecoins.com> domain name, through Complainant’s continued use of the mark and disputed domain name and by advertising its services at the former resolving website. ”
“Complainant alleges that it clearly represents the source of its goods and services on the resolving website and that the traffic to the resolving website is sufficient to demonstrate rights in the domain name. ”
“Complainant also includes the historical WHOIS information that shows Complainant’s prior ownership of the disputed domain name. ”
“According to the Panel, this does not demonstrate common law rights in the RARECOINS.COM sign under Policy ¶ 4(a)(i), as Complainant fails to show that the RARECOINS.COM sign acquired secondary meaning, especially given the generic nature of this sign.”
“Complainant claims rights in its RARECOINS.ORG mark, based on the <rarecoins.org> domain name, by consistently using the mark and disputed domain name. Complainant alleges that it has used the mark, disputed domain name, and resolving website to advertise its services since 2000.”
“Complainant argues that it received enough traffic at the former website resolving from the disputed domain name to establish common law rights in the mark. ”
“According to the Panel, this does not demonstrate common law rights in the RARECOINS.ORG sign under Policy ¶ 4(a)(i), as Complainant fails to show that the RARECOINS.ORG sign acquired secondary meaning, especially given the generic nature of this sign.”
“Complainant avers that it owns rights in the SILVERINFO.NET mark, based on the <silverinfo.net> domain name, through Complainant’s continuous use of the mark and disputed domain name since 2008. ”
“Complainant claims that it consistently used the mark and the disputed domain name as identification of itself, which Complainant claims is supported by the historical WHOIS information and the archive of the former resolving website.”
“Complainant also argues that it received traffic to the former resolving website, which Complainant contends sufficiently demonstrates its common law rights in the mark. “
“According to the Panel, this does not demonstrate common law rights in the SILVERINFO.NET sign under Policy ¶ 4(a)(i), as Complainant fails to show that the SILVERINFO.NET sign acquired secondary meaning, especially given the generic nature of this sign.”
“Complainant argues that the <austinreport.com> domain name is identical to Complainant’s AUSTINREPORT.COM mark. ”
The Panel finds that the disputed domain name <austinreport.com> is identical to Complainant’s AUSTINREPORT.COM”
As the the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i) in relation to the <acoins.com>, <goldcoins.org>, <goldinfo.net>, <goldprices.com>, <rarecoins.com>, <rarecoins.org>, and <silverinfo.net>, there is no need to analyze the other two elements of the Policy for these domain names.”
“Therefore, the rest of this decision only deals with the <austinreport.com> domain name.”
“The Panel’s decision about the absence of sufficient evidence showing common law trademarks in relation to certain of the disputed domain names does not affect a possible challenge by Complainant in relation to the alleged theft of these disputed domain names by Respondent. However, the Panel finds itself not competent to rule on the allegations of theft in the framework of these proceedings.”
“Complainant argues that Respondent gained access to the disputed domain names by means of using a registrar lock and that the resolving websites currently display a “robots.txt” file to block the content that was previously found on the resolving websites. ”
“Complainant contends that Respondent will “eventually” use the disputed domain names to make a profit through a third party sale or another manner. ”
“As noted above, the Panel is of the opinion that Respondent’s use of the disputed domain name to provide no new content on the resolving websites without any explanation for this is evidence of inactive use. Therefore, the Panel concludes that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(a)(iii). ”
“Having established all three elements required under the ICANN Policy in relation to one of the disputed domain names, the Panel concludes that relief shall be partially GRANTED.”
“Accordingly, it is Ordered that the <austinreport.com> domain name be TRANSFERRED from Respondent to Complainant.”
So once again we see that a UDRP is not going to be the forum to recover a stolen domain name in the absence of normal TM rights that would cause the domain name to be transferred in the absence of a claim of theft.
Too bad.
It looks like the UDRP process does nothing for domain owners and everything for thieves, lawyers, and RDNH crooks.
What a disgrace.
By now it must be obvious…..The UDRP process is mainly to be used to steal domains from rightful owners.
“the UDRP process does nothing for domain owners”
“the ICANN process does nothing for domain owners”
Strange how some people cling to “the ICANN process” and Applicant Guide like a .BIBLE
Too bad the UDRP is not limited to its intended purposes all the time.
This is exactly the type of ‘precedent’ that bureaucracies and bureaucrats absolutely adore. When the precedent alleviates them from responsibility and allows them to pass the buck, they’ll codify that law of the land before the end of days business.
Everything else, though?
Left up to their capricious whimsy.
In Decision A, domain parking is evidence of bad faith and a reason to convert a domain, but in Decision B it’s not. Precedence?
In Decision 4, the ownership history matters. In Decision 5, the ownership history is irrelevant.
But I’ll bet dollars to dimes they’ll cite the sanctity of ‘precedence’ when it comes to laying off responsibility to use the dispute system to address clear-cut theft cases.
I realize some people aren’t exactly keen on seeing the UDRP as a means to recover allegedly stolen domain names. If the registrars themselves virtually “refuse” to help the domain owner any longer in spite of arguably best efforts at trying, what other recourse (aside from court, of course) does the domain owner have that doesn’t necessarily cost time and money if it can be helped?
Take this one, for example:
http://www.wipo.int/amc/en/domains/decisions/html/2008/d2008-1010.html
Don’t know if that’s been recovered since then. If it isn’t, well…
OTOH, UDRP definitely shouldn’t be used to essentially take domain names from owners just because, other than what it’s intended for. Yet, we all know anything can be used and abused.
In any case, I’d say the complainant just failed to prove their claims on the other domain names except the one that subsequently got transferred. If any of you guys ever experience this kind of situation, well…you’ll surely know what and how it feels like by that time.
Here’s to hoping that none of you experience anything like this.
Some of those domaIns are pretty good domains. That sucks. Looks like they took the wrong approach with the udrp. They should just file again with a different approach.