Ari Goldberger, Esq of ESQwire.com just beat back a UDRP on the domain name LiveOne.com brought by LiveOne Group, Ltd

The three member panel ruled in favor of the domain holders who registered the domain in September 2007, against the trademark holder who just registered it trademark on May 15, 2010 which was  granted on Sept. 6, 2011.

However the panel did not make a finding of Reverse Domain Name Hijacking (RDNH) on the basis that the domain was going to a parked page and the domain holder turned down an offer of $50,000 to sell the domain.

Respondent’s resolving website is a parked website containing pay-per-click advertisements.

Respondent has offered to sell the  domain name for $50,000.

Here what the trademark holder argued:

Respondent is not merely a professional business name registrant, it is a Cybersquatter, engaged in the business of commercially benefiting from the goodwill of others trademarks.

Respondent’s defenses hinge on the fact that it registered the disputed domain name prior to Complainant establishing U.S. trademark rights in the LIVEONE mark.  However, past panelists have held that if such a rule were adopted it would allow a Respondent that originally registered a domain name in good faith to continuously and flagrantly exploit a Complainant’s mark.

Respondent renewed the disputed domain name after Complainant had established a large Internet presence and received a registration for the LIVEONE mark in 2010.

After Complainant registered its mark with the USPTO Respondent changed the type of click-through advertisements that appeared on the disputed domain name.

Complainant’s trademark registration need not predate the registration of the domain name.

Bad faith is not limited solely to the date of registration of the disputed domain name.

Panels have held that a registrant has an ongoing duty to make sure that it is not violating others’ rights in trademark or copyright where the domain name was registered prior to a complainant owning a trademark.

Still other panels have held that the date of Respondent’s last renewal is the date on which to measure whether the disputed domain name was registered and used in bad fait

Respondent’s use of the disputed domain name shifted in 2011 to offer directly competing advertising links through the website.  Even if the links were auto-generated, Respondent bears the ultimate responsibility for the content of its websites.

Respondent has willfully ignored the trademark rights of Complainant in bad faith.

Respondent’s allegations of reverse domain name hijacking are baseless and without merit.

Here is what the panel found:

Complainant has met its burden to prove by a preponderance of the relevant, credible, admissible evidence that Respondent’s Domain Name is identical or confusingly similar to a Trademark in which Complainant has rights.

Complainant has not met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent’s domain name has been registered and is being used in bad faith.

Since Complainant has not met its burden on one required element of its claim, the Panel need not decide where it has met its burden to prove by a preponderance of the relevant, credible, admissible evidence that Respondent has no rights or legitimate interest in respect of the Domain Name.

The Panel finds that Complainant has failed to meet its burden of proof of bad faith registration and use under the Policy ¶ 4(a)(iii).

The Panel concludes that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).

Respondent claims that responding to an inquiry to purchase a domain name is not necessarily evidence of bad faith.

Respondent further claims that Complainant submitted an unsolicited offer to purchase the <liveone.com> domain name.

Respondent argues that Complainant’s offer is an acknowledgement of Respondent’s legitimate interest in the <liveone.com> domain name.

When a complainant indicates a willingness to engage in a market transaction for a disputed domain name, it does not violate the policy for the respondent to offer to sell for a market price, rather than for only out of pocket expenses.

Respondent argues that there can be no finding against Respondent when Complainant’s business did not exist at the time Respondent registered the <liveone.com> disputed domain name. Complainant acknowledges that its business was not in existence at the time that Respondent acquired the disputed domain name in 2007.  Complainant’s First Use in commerce of the mark was on April 7, 2011, with a general First Use date of May 15, 2010.

“There generally can be no bad faith when a respondent registers the disputed domain name before a complainant began using the mark. “

Respondent also contends that there is no evidence of bad faith registration or use because Respondent registered the <liveone.com> domain name which incorporates a descriptive term that became available when its prior registrant failed to renew it.

A respondent is free to register a domain name consisting of common terms and that the domain name currently in dispute contains such common terms.  The Panel finds that Respondent did not register or use the <liveone.com> domain name in bad faith under Policy ¶ 4(a)(iii).

Reverse Domain Name Hijacking

Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute.

Respondent contends that Complainant is attempting to deprive Respondent, the rightful, registered holder of the <liveone.com>  domain name, of its rights to use the disputed domain name. Respondent claims that because Complainant had knowledge of Respondent’s prior registration for the <liveone.com>  domain name, Complainant should have known that it could not prove bad faith registration.

 

Respondent must prove that Complainant knew or should have known that it was unable to prove that Respondent lacks rights or legitimate interests in the <liveone.com> domain name and that Respondent registered and is using the disputed domain name in bad faith.

The Panel finds that on this record it is a close question.

On the one hand, Complainant must have realized that the fact that its trademark was registered after the registration of the domain name would pose real difficulties for its success in this proceeding.

On the other hand, Complainant was faced with a situation where the domain name was being used in a manner that Complainant regarded as inappropriate. On balance and having regard to all the circumstances, the Panel is of the view that it cannot find that Respondent has proven reverse domain name hijacking.