Frank Schilling’s Name Administration represented by John Berryhill just won another UDRP this time on the domain name dataserv.com.

The Complaint was brought by  DataServ, L.L.C. of St. Louis which had a trademark on the term since 1994

The disputed domain name was registered on October 24, 2003.

You may ask how could the panel rejected the Trademark Holders claim?

It wasn’t a federally registered trademark but was only registered in state of Missouri.

Here are the relevant facts and findings by the three member panel:

“The Complainant submits that it provides services to clients on five continents, with users in more than forty countries. It has performed hundreds of implementations and serves over 15,000 users worldwide daily. Its services have generated more than USD 4 million in revenue in 2011 alone, and more than USD 41 million since its inception in 1994. ”

“The Complainant’s clients include major global businesses such as Sony Pictures, Thomson Reuters, 20th Century Fox, and Kendall-Jackson. The Complainant contends that it has continuously used its DATASERV service mark and trade name in connection with accounts payable automation and related services since 1994. Its website at “www.DataServOnDemand.com” has received nearly 400,000 visits, and nearly 1,000,000 page views.”

“The Respondent has offered to sell the disputed domain name to the Complainant for a price of USD 56,000, which is well in excess of the Respondent’s out-of-pocket costs, after having rejected the Complainant’s offers of USD 10,000, USD 15,000 and finally of USD 20,000.”

“After the review of the evidence submitted by both parties, the Panel reached the conclusion (as set out in more detail in the section on bad faith below) that it is more likely than not that the Respondent was unaware of the existence of the Complainant at the time it registered the disputed domain name, and that the Respondent does not appear to have targeted the Complainant with its actions. ”

“In these circumstances, the Panel is not satisfied that the use of the disputed domain name for a website containing links to third parties providing data services should be regarded as unlawful vis-à-vis the Complainant. In so finding the Panel accepts the evidence of the Respondent that “serv” is a commonly used abbreviation for “serve” or “service”.”

“Therefore, the Panel decides that the Complainant has not established that the Respondent does not have rights and legitimate interests in the disputed domain name.”

“The Complainant argues that the Respondent has registered and used the disputed domain name in bad faith with the Complainant in mind: with the intent to extract an undue profit by using the disputed domain name to mislead and divert Internet users to third parties and thus generate sales commissions; and by the offer to sell the disputed domain name to the Complainant for an amount well in excess of its documented out-of-pocket costs directly related to it.”

“The Respondent denies that it knew or had a duty to know the Complainant when the disputed domain name was registered, and contends that the registration was made for advertising purposes in view of the descriptive character for “data services” of the disputed domain name. ”

“The Respondent points out that there are other business entities using the name “dataserv” for their business as part of their company names, trademarks and domain names in the United States of America, including in the State of Missouri, and in other countries, and that the offering to sell a domain name at a high price is not illegitimate as such.”

“Having carefully reviewed the evidence submitted before it, the Panel reached the conclusion that it does not establish that back in 2003 the recognition by the public of the Complainant and of its DATASERV service mark was of such a magnitude that would make it likely that the Respondent was or should have been aware of the existence of the Complainant at that time. Such likelihood is further reduced by the parallel existence of other entities using the term “dataserv” in their business at that time.”

“The DATASERV service mark was registered at the time when the Respondent registered the disputed domain name. ”

“However, the Panel accepts the Respondent’s assertion that it was unaware of the existence of the Complainant at that time. The Panel is also of the view that there is nothing about the circumstances of this case to suggest that the Respondent was willfully blind to the Complainant’s rights when acquiring the disputed domain name and/or should have been under an obligation to conduct a trademark search in the State of Missouri.”

“Nor is the Panel convinced that the Respondent has specifically targeted the Complainant. The website associated to the disputed domain name has been used to post pay-per-click links to third parties offering various types of what can generally be described as data services. This use appears to be in line with the alleged descriptive character of the disputed domain name, and does not specifically refer to the Complainant, so the Panel does not regard it as illegitimate towards the Complainant.”

“As it has not been established that the Respondent has specifically targeted the Complainant with its actions, the engagement of the Respondent in negotiations initiated by the Complainant for the sale of the disputed domain name should not be regarded as illegitimate either.”

“For these reasons, the Panel finds that the Complainant has failed to establish that the Respondent has registered and used the disputed domain name in bad faith.”