A three member panel UDRP panel has just rejected the Complaint by Kanal, Inc. on the domain name kanal.com.
Complainant is a New York corporation that is the registrant of the U.S. trademark KANAL, registration number 4,220,349, for advertising and business management consultancy services.
Complainant was incorporated in 2005, but claims common-law rights in the KANAL mark dating back to August 9, 2002, based upon prior use of the mark by Gaurrav Kanal, the incorporator of Kanal, Inc., who transferred his rights in the mark to Complainant.
Respondent is the registrant of kanal.com, a domain name that is identical and confusingly similar to Complainant’s mark.
Complainant contends that Respondent registered the domain name on February 20, 2004, and is using it to advertise and promote the municipality of Kanal ob Soči in Slovenia.
Complainant asserts that its rights in the KANAL mark are superior to any rights of Respondent because of Complainant’s pre-existing common-law rights. Complainant further alleges that for several years following Respondent’s registration of the domain name, it resolved only to a generic landing page, and that only after Complainant contacted Respondent in 2011 did Respondent begin using the domain name in connection with Kanal ob Soči, which Respondent incorrectly refers to as “Kanal.”
Complainant notes that Respondent is located in France rather than Slovenia, and contends that Respondent’s use of the domain name does not qualify as a fair or legitimate use. On these grounds Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant says that it contacted Respondent regarding the domain name in 2005, at which time Respondent offered to sell the domain name for $30,000.
Complainant states that it has identified more than 1,000 other domain names registered by Respondent, indicating that Respondent is engaged in a pattern of registering domain names in order to prevent trademark owners from reflecting their marks in corresponding domain names.
“Respondent denies having targeted Respondent or its mark when he registered the domain name in 2004”.
“Complainant did not even exist in corporate form at that time. ”
“Complainant’s name and mark correspond to the surname of its founder, who may well have been doing business under the mark prior to 2004. ”
“However, none of the evidence offered by Complainant is sufficient to show common-law rights in the mark. Respondent is located in France, and the domain name corresponds to a common word and a geographical term as well as to Complainant’s name and mark. ”
“Under the circumstances it appears extremely unlikely that Respondent had any knowledge of Complainant, its founder, or its mark when he registered the domain name—let alone that his intent was to target any of them thereby. ”
“The domain name therefore could not have been registered in bad faith, and Complainant has failed to prove this element.”
However, the Panel refused to find Reverse Domain Name Hijacking (RDNH) against the complainant.
