Frank Schilling’s NameAdministration represented by John Berryhill just won a UDRP for the 2nd day in the row, today on the domain name metatrader.com

Not only did they win this UDRP but they got a finding of Reverse Domain Name Hijacking (RDNH)

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

The Complainant MetaQuotes Software Corp. of Nassau, is a software solutions provider for the financial market. It is a business to business software development company, established in Russia in 2000. It is the owner of the following trademark registrations (the “METATRADER trademark”):

– The trademark METATRADER, applied for on December 30, 2003, and registered on February 8, 2005, for the territory of the Russian Federation, with registration number 281939, for goods and services in International Class 09; and

– The trademark METATRADER, applied for on May 18, 2005, and registered on December 12, 2006, for the territory of the United States of America, with registration number 3,182,784 for goods and services in International Class 9.

The Complainant is also the registrant of the domain names <metatrader4.com> and <metatrader5.com>.

The disputed domain name was registered on March 22, 2003.

 

“”The Complainant alleges that the Respondent is not affiliated with the Complainant in any way and has no product, service, or trademark associated with the “Metatrader” name. The Respondent has allegedly never been commonly known by the disputed domain name and has never acquired any trademark of service mark rights in it. The Complainant also contends that the Respondent has used the disputed domain name to divert Internet users to a website that includes pay-per-click advertising for third-party websites offering goods and services that relate to the Complainant’s MetaTrader technology, so it is not making a legitimate noncommercial or fair use of the disputed domain name. These allegations may be regarded as sufficient to sustain the required prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name.””

“In response to the allegations of the Complainant, the Respondent submits that it registered the disputed domain name upon its abandonment by a prior registrant. Due to the attractiveness of its elements, the word “trader” and the common prefix “meta”, which the Respondent believed would be useful in the advertising of matters related to investment and financial trading, the disputed domain name was immediately put to use in the Respondent’s keyword advertising system. This activity started nearly two years prior to the Complainant’s earliest trademark registration, and prior to the Complainant’s copyright registration of its computer software. The Respondent’s position is also that there may be a legitimate interest in a domain name where that domain name represents a descriptive and non-distinctive combination of two words and is used in connection with the subject matter that term describes, and where there is no obvious intention to trade on the rights or reputation of a trademark owner.”

“After the review of the evidence submitted by both parties, the Panel has reached the conclusion 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 has not sought to target the Complainant.”

“The evidence submitted by the Complainant does not establish that the Respondent knew or should have known of the Complainant before the registration of the METATRADER trademark. ”

“According to the Oxford English Dictionary, the prefix “meta“ has its origin in the Greek language and is used in English to denote, inter alia, something of a higher or second-order kind. Therefore, the Panel accepts the contention of the Respondent that the disputed domain name may be regarded as consisting of two descriptive elements – the common prefix “meta” and the word “trader”. Taking this into account, along with the lack of any trademark registration (or even any trade mark application) of the Complainant at the time of registration of the disputed domain name, the Panel is of the opinion that the registration and use of the disputed domain name cannot be regarded as illegitimate under the Policy vis-à-vis the Complainant.”

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

“The Panel notes that this finding is made solely for the purposes of the present proceeding and within the limits of the Policy. Any trademark infringement dispute between the Parties is beyond the scope of the present proceeding.

“The analysis of the evidence in the case file leads the Panel to the conclusion that the Complainant has not established that in the period 2002-2003 the recognition by the public of the Complainant and of its METATRADER trademark was such that would make it likely that the Respondent was, or should have been, aware of the existence of the Complainant at that time. The situation now may be different, but this is not what is relevant here. At the time when the Respondent registered the disputed domain name, the Complainant had neither applied for the METATRADER trademark nor made a copyright registration for its MetaTrader software platform in the Russian Federation. Therefore, and as summarized in paragraph 3.1 of the WIPO Overview 2.0, the Panel finds that the registration of the disputed domain name could not have been in bad faith because the Respondent could not have contemplated the Complainant’s then non-existent rights. On this basis the Panel also finds 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. In these circumstances, the engagement of the Respondent in negotiations initiated by the Complainant for the sale of the disputed domain name cannot be regarded as illegitimate either.”

“It appears from the Response that when the Complaint in this case was filed (nine years after the registration of the disputed domain name), the Complainant was clearly aware that the Respondent had registered the disputed domain name well before the Complainant had acquired any trademark rights. That fact was expressly drawn to the Complainant’s attention in correspondence between the parties three years ago. Moreover, the Complainant has failed to point to anything that would suggest that any reputation attaching to its mark at the date of registration of the disputed domain name was likely to have been known to the Respondent at that time. It appears to the Panel as if the Complainant persisted in filing these proceedings without regard to these factors, or to its likelihood of success in the case, and in spite of its past interactions with the Respondent. In these circumstances the current Policy proceedings as commenced by the Complainant appear to be little more than a blatant attempt to obtain the disputed domain name at any cost. In addition the Panel notes that the Complainant failed to disclose in the Complaint its pre-Complaint correspondence with the Respondent and did not deny its existence in its supplementary submission, which omission does nothing to reinforce its bona fides.

It appears to the Panel that the Complainant must have known when it filed the Complaint that in these circumstances there was no reasonable chance of success and that it was putting the Respondent to unjustifiable trouble and expense in defending these proceedings.”

“Taking all this into account, and notwithstanding the fact that the Respondent has not sought such a finding, the Panel declares that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”