John Berryhill has won his second UDRP of the day this time beating back the Complaint was brought Intelligentsia Coffee & Tea, Inc. of Chicago, Illinois, against the domain holder, Ashantiplc Ltd of New York, New York,  who was represented by John Berryhill, PhD Esq and NamingRights.Com, LLC of Hong Kong, China.

The three member panel found that the complainant did not prove its case and one of the three panelists filed a Concurring Opinion saying he would have made a finding of Reverse Domain Name Hijacking (RDNH)

Here are the relevant facts and findings by the panel:

“Complainant is owner of the INTELLIGENTSIA trademark registration, United States Reg. No. 2,599,643, filed April 26, 2001 and registered on July 23, 2002.”

The Panel finds that the Domain Name is identical to Complainant’s mark, because the gTLD “.com” is typically irrelevant for the purposes of a Policy paragraph 4(a)(i) analysis and insufficient to distinguish the domain name from a trademark.

“Here, Complainant alleges that (a) Respondent is not authorized to use Complainant’s INTELLIGENTSIA trademark; (b) there is no evidence that Respondent used or made preparations to use the Domain Name in connection with bona fide offering of goods and services; (c) Respondent registered the Domain Name to mislead and divert consumers by attracting them through the confusingly similar domain name; (d) the Domain Name is not the name, business name, or common name of Respondent, and thus Respondent had no legitimate basis to register the Domain Name; and (e) that “upon information and belief”, Respondent obtained the Domain Name with the full knowledge of Complainant’s prior use and ownership of its INTELLIGENTSIA mark.

“While the evidentiary burden on Complainant has been recognized as generally light to establish its prima facie case,¹ we note that here Complainant provides little or no cognizable evidence beyond these bare assertions”.

“We also note that a prior UDRP panel, considering a similar set of operative facts (and similar arguments from this same Respondent), acknowledged that “a respondent may have a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive term, even when the domain name is confusingly similar to a complainant’s registered mark”.

“While we are doubtful that Complainant meets its burden, as did the panel in Masai Clothing Company, we refrain from ruling on whether the Complaint has established a prima facie case or whether Respondent has proven the existence of rights or legitimate interests in the Domain Name. Such a ruling is not necessary because, as discussed below, the Panel finds that Complainant is unable to establish that Respondent registered and used the Domain Name in bad faith as required under Policy paragraph 4(a)(iii)”.

“Whether a domain name is registered and used in bad faith may be determined by evaluating four (non-exhaustive) factors set forth in paragraph 4(b) of the Policy: (i) circumstances indicating that the registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location”.

“Complainant has not alleged the first factor”.

“To the extent that Complainant has alleged the second and third factors, the Panel finds that Complainant has not provided sufficient evidence to prove that Respondent had knowledge of Complainant’s purported rights at time of registration”.

“Complainant’s various assertions—that Respondent intended to create a parked page that takes advantage of Internet users seeking Complainant’s trademark, that Respondent’s reason for registering the Domain Name was to disrupt Complainant’s business, and that Respondent is deceptively leading consumers to believe an affiliation that did not exist—are entirely unsupported:.

“The closest Complainant comes to providing evidence suggesting that Respondent may have known about Complainant’s rights at the time of registration appears to be its INTELLIGENTSIA mark (United States Reg. No. 2,599,643)^“

” The mark was filed April 26, 2001 and registered on July 23, 2002.

“Respondent admits that at earliest it acquired the Domain Name on May 19, 2002. ”

“The Panel notes that the effective date of Complainant’s registration is after Respondent’s acquisition of the Domain Name.

“Based on the above and referenced evidence produced by the parties, the Panel finds Respondent registered the Domain Name without actual knowledge of the INTELLIGENTSIA mark and did not register the Domain Name in bad faith under Policy paragraph 4(a)(iii)”.

“This leaves the fourth factor, which concerns use of the Domain Name in bad faith without express reference to Respondent’s knowledge at time of registration. As noted before, Complainant has presented little beyond unsupported allegations”.

“In response, Respondent asserts that it has established a pattern of good faith registration and legitimate use of domain names”.

“Respondent also argues that it has consistently configured and used the Domain Name in connection with a variety of commercial search services unrelated to those goods and services that Complainant markets (i.e. coffee and tea). Respondent provides descriptions and screenshots of the resolving websites associated with the Domain Name since 2002 to support this contention”.

“We find Complainant has not offered sufficient evidence regarding Respondent’s purported bad faith”.

“While Internet users may mistakenly arrive at the Domain Name in a search for Complainant, there is no indication that Respondent is attempting to take advantage of this mistake under Policy paragraph 4(b)(iv)”

”

Because the Panel finds that Respondent has not violated any of the factors listed in Policy paragraph 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy paragraph 4(a)(iii), the Panel finds that Respondent has not registered or used the Domain Name in bad faith”

For the foregoing reasons, the Complaint is denied.”

As to the issue of Reverse Domain Name Hijacking one panelist, Richard G. Lyon was willing to make such a finding

“I join the Panel’s decision to deny the Complaint and its opinion without reservation. I write separately because unlike my colleagues I would include a finding of Reverse Domain Name Hijacking (RDNH) in the Panel’s decision.

In my view RDNH is a matter the Panel should consider in an appropriate case whether or not a respondent requests it. As the panel in Goway Travel Limited v. Tourism Australia, WIPO Case No. D2006-0344, put it: “The Rules [paragraph 15(e)⁵ specifically put 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”. Each panel owes the integrity of the UDRP a duty to take due notice in its decision of a complaint that after reasonable inquiry complainant or its representative “knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP” and is based upon “a respondent’s use of a domain name [that] could not, under any fair interpretation of the reasonably available facts, have constituted bad faith”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), paragraph 4.17, third paragraph.

This case fits both of these examples from the WIPO Overview 2.0. As noted by the Panel, the Complaint provides no satisfactory evidence of Respondent’s use of the disputed domain name at any time in a manner deemed bad faith under Policy precedent, thus defying two longstanding and generally accepted Policy precedents: that the Policy and Rules require proof not just unsupported allegations;⁶ and that bad faith requires targeting complainant or its mark – not just incorporation of complainant’s mark into the disputed domain name.⁷

This Complaint has further fundamental deficiencies. Several other widely accepted principles and rules of decision are either not addressed or not countered with evidence or argument. Complainant makes no allegation that any of Respondent’s pay-per-click use of the disputed domain name ever capitalized on the value of Complainant’s mark. Paragraph 2.6 of the WIPO Overview 2.0 speaks to this: “Panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services” or from “legitimate noncommercial or fair use” of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder. As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value”.

I could go on, but I shall summarize by stating that the Complaint and scanty evidence that accompanies it boil down to no more than “I have a trademark, you don’t, ergo I’m entitled to your domain name”. I likely would have voted to deny this Complaint had Respondent defaulted.⁸

Paragraph 3(b)(xiv) of the Rules requires a complainant to certify in the complaint that “the assertions in this Complaint are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument”. Here that certification was made by Complainant’s representative, an attorney described on her law firm’s website as an expert in intellectual property issues. I believe a professional filing a pleading on behalf of a party in a UDRP proceeding should have at least a minimal knowledge (or, if initially without knowledge, make a proper investigation) of the Policy, the Rules, and precedent developed under them well enough to know that bad faith is not proven with conclusionary allegations and pay-per-click pages alone.

A finding of RDNH could be said to be an empty gesture. As with any statement by any panel, it has no collateral estoppel or res judicata effect in any subsequent litigation or administrative proceeding, indeed even in any subsequent Policy proceeding brought by the same party or representative. Limited though this censure may be, though, it is sometimes the only way for a panel to deter future abuse of the Policy and to remind parties and professionals who invoke the Policy of its limits, rules, and means of abuse. In my opinion the circumstances of this case warrant an RDNH finding for just that reason”.