In a decision sure to drive the trademark groups crazy, a one member UDRP panel reject the trademark holders claim to the domain name Segis.com

The panel held for the domain holder, despite the complainant having bang on trademark registrations going back as far as 2007.

The panel says the Respondent is a college graduate in Republic of Korea and that the disputed domain name was created on August 23, 2013 which of course is impossible since its only July 2, 2013.

According to DomainTools.com the domain appears to have been registered on August 25, 2005 by the current domain holder, but still long after the trademarks.

I have no idea of where the date August 23, 2013 came from but it is the date cited in the decision as the date of registration.

Despite the fact that the domain has never been used by the domain holder, the panel found no bad faith and in addition found that the domain holder had legitimate rights to the domain.

Here are the relevant Facts and findings by the WIPO panel:

The Complainant is an Italian company for the contract furniture industry and owns a large number of registered trademarks that include the term “Segis” alone going back until 1997 and that incorporate the term “Segis” with other elements. The Complainant also owns the following trademark and domain name registrations:

Mark:	Country:	Reg. No.:	Reg. Date:	Int’l Class:
SEGIS	Italy	801251	March 21, 1997	20
SEGIS	International	861669	July 1, 2005	20
SEGIS DELIGHT MULTIPLA	China	G929310	May 15, 2007	20
SEGIS DELIGHT MULTIPLA	United States of America	3,395,175	March 11, 2008	20
SEGIS DELIGHT MULTIPLA	European Community	005573365	August 29, 2008	20

The Complainant also owns many Domain Names including:

segis-usa.com

segis-eu

segis.it

segis.fr

segis.nl

Segis.cn

Segis.vn

“The Respondent claims that the disputed domain name was coined by himself and his friends who were planning to operate a website. Specifically, the Respondent claims that the disputed domain name is an acronym for “Se Eun Geographic Information System.”

According to the Respondent, the name “Se Eun” is his girlfriend’s first name.

“The Respondent claims that the plan he and his friends had to use the disputed domain name to resolve to a website in connection with their prospective business was delayed for several years due to an extended illness suffered by the Respondent.”

“Recently, however, the Respondent has recommenced plans to start a business using the disputed domain name.”

“The Respondent did not make any direct claim of a right or legitimate interest in the disputed domain name,.

First, the Respondent merely stated how he and his friends came to create the name “segis” in connection with a domain name that was planned to resolve to a website for their future business.

However, the Respondent did not provide any evidence on the record that the “segis” name was created under such circumstances.

He could have provided, for example, notarized statements from his friends and/or from his girlfriend attesting to the facts he claimed, and yet he did not. He could have explained the activities and undertakings that he and his friends had commenced in order to move forward with starting their prospective business, he could have explained the nature and purpose of the prospective business, he could have explained the significance of the name “Geographic Information System,” etc., and yet he did none of them.

Given these circumstances, there can be no reasonable conclusion but to find that the Respondent was not planning to engage in a bona fide offering of goods/services under the disputed domain name, and was not otherwise planning to engage in legitimate business activities.

Second, as to paragraph 4(c)(ii) of the Policy, the Respondent in his Response to the Complaint does not assert that he is commonly known by the disputed domain name and there is no evidence in the record to indicate such.

Finally, as to paragraph 4(c)(iii) of the Policy, the Complainant has claimed that the disputed domain name does not resolve to an active website, and in fact, the only content in the website is the statement “This domain is renewed every year automatically.” The Respondent did not dispute this claim. Accordingly, this Panel is of the position that the Respondent is not engaged in the activity set forth in this paragraph 4(c)(iii) of the Policy.

For these reasons, the Panel finds that the Respondent is not found to have a right or legitimate interest in the disputed domain name, as this concept is understood to mean pursuant to paragraph 4(c) of the Policy.

D. Registered and Used in Bad Faith

The Complainant raises a number of previous UDRP decisions to support its arguments that the Respondent registered the disputed domain name in bad faith and that it is being used in bad faith.

In the first argument, the Complainant claims that the Respondent had a duty to check and to ensure that its domain name would not infringe upon another’s mark at the time it sought registration and at each time the registration is renewed.

Although the Complainant does not affirmatively state that the Respondent failed to meet its duty to check, the Complainant appears to be taking the position that had such check(s) been conducted, the Respondent would have known about the Complainant and its SEGIS mark, and that the registration of the disputed domain name would infringe its mark.

However, even if we assume arguendo, that the foregoing is the Complainant’s line of argument, the Panel is un-persuaded, largely because there is nothing in the record to support the claim that the Respondent failed to meet its duties/obligations in connection with the proper registration of the disputed domain name, let alone a failure that would rise to the level of bad faith. F

Further, it must be noted that the term “segis” is a term that is used by others in the public in connection with different subject matters. This is readily confirmed by a cursory check of the Internet. For example, the term “segis” has been found to be widely used as an acronym for “Solar Energy Grid Integration Systems,” in connection with a United States government sponsored solar energy project.

Another example is the use of the term “segis” as a trademark for a smart grid inverter.

As such, the logic used by the Complainant here, namely that had the Respondent conducted a check, it would have known about the Complainant, is not persuasive, since a check would likely have resulted in finding different uses of the name “segis” by different parties in connection with different subject matters.

The Panel also notes that even when some UDRP panels found bad faith registration on the ground that the respondent should have known the complainant’s registered marks, they are less inclined to find it when the complainant’s trademark is less well-known or corresponded to a common word. In this case, the Complainant has not provided enough evidence of showing that its mark was so well-known that the Respondent must have known of the Complainant’s SEGIS mark.

Furthermore, the Complainant did not claim that the Respondent’s prospective business is somehow related to its business, and in fact, there is nothing in the record to suggest same. It is therefore not possible to make any reliable determination as to whether the Respondent must have known that the disputed domain name could be an infringement of the Complainant’s SEGIS mark.

In the Complainant’s second argument – that the Respondent’s passive holding of the disputed domain name can infer bad faith – the Panel notes that while this has been recognized by the panels in other UDRP decisions, such factor is but a single consideration among others, and that an ultimate finding of bad faith involved a finding of a number of cumulative, supporting circumstances. In this case, however, there is no evidence on the record that shows, for example, that the Respondent attempted to sell or to contact the Complainant as the trademark holder; that the Complainant’s SEGIS mark is well-known; that the Respondent failed to respond to the Complaint; or that the Respondent attempted to conceal his identity, all of which factors were outlined in the Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, as cited by the Complainant in its Complaint.

Further, the record does not support a finding of any circumstances under paragraph 4(b) of the Policy that evidence registration and use of the disputed domain name in bad faith. Specifically, there is no evidence of the existence of any of the four circumstances under 4(b)(i)-(iv) of the Policy, as summarized above.

In conclusion, the Panel finds that the Complainant has not established that the disputed domain name “has been registered and is being used in bad faith” by the Respondent.