Rive, LLC lost its bid to take away the domain name Rive.com from the domain owner who registered it back in 2004, based on a trademark registered with the USPTO,  on August 23, 2011

The Complainant argued that the domain owner registered and used the domain name in bad faith, “because Respondent attempted to sell the domain name for $45,500, fails to make an active use of the domain name, and owns at  least 25 domain names that demonstrate Respondent is a cybersquatter”.

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

Complainant stipulates that although Respondent originally registered the disputed domain name in 2004,Respondent then renewed the domain name registration on May 23, 2012, and although registration renewal is not “registration” for determining bad faith, previous panels have nonetheless recognized the harshness of the rule and have concluded that renewal may be considered registration when making a determination of bad faith.

Respondent admits that while no active website is associated with the <rive.com> domain name, same has been “leveraged as an e-mail service and has [been] used extensively in professional and personal correspondences.” Respondent submits its Annexes D1, D2, and D3, showing an e-mail inbox originating from the  domain name.

 The Panel determines that Respondent makes a satisfactory showing that it uses the disputed domain name in relation to its e-mail, and finds that linking a domain name to an e-mail address demonstrates a bona fide offering of goods or services under Policy ¶ 4(c)(i) and a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).

“Respondent claims that it has a business based on creating and selling domain names to the highest bidder, which Respondent argues constitutes a use in connection with a bona fide offering of goods or services, so long as the registration was not undertaken with intent to profit or otherwise abuse a complainant’s trademark rights. ”

Previous panels have found that the holding of a domain name for resale can in some circumstances constitute a Policy ¶ 4(c)(i) bona fide offering of goods and services. 

This Panel similarly determines that Respondent in this case makes a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and a legitimate noncommercial or fair use of the domain name pursuant to Policy¶ 4(c)(iii), as Respondent may be considered a generic domain name reseller operating a business.

Further, that Respondent could not have possibly targeted the Complainant since the Complainant did not exist at the time of the registration of the domain name.

Respondent also argues that the term of the Rive.com domain name is common and generic, and therefore, Complainant does not have an exclusive monopoly on the term on the Internet. Respondent argues that the word “rive” means to “rip or tear apart, to break into pieces,” as defined in the English language, and also provides examples of the word’s meaning in French (meaning “shore” or “bank”), as well as use of the word in geographical locations.”

The Panel agrees that Respondent’s Policy ¶ 4(a)(ii) rights and legitimate interests rests on the fact that it registers and sells generic domain names; an arrangement practiced by many business entities. “

The Panel agrees and finds that under the present circumstances Respondent can establish rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).

Respondent further argues that Complainant’s mark is not exclusively associated with the Complainant.

Respondent claims that the RIVE mark merely embodies a common and generic term. Respondent states that its decision to register this domain name reflects Respondent’s interest in obtaining generic terms. The Respondent asserts that possibly more than 940 million people would be familiar with the term which has meaning in over 83 countries.

The Respondent also points out that there are more than 59,000 domain names which contain the letters “rive” and more than 39,000 of which begin with these letters.

The Panel agrees that when the term “rive” is used as a mere generic term, the registration of a domain name including that term gives Respondent rights and legitimate interests in the generic value of embodying a generic term in the domain name. 

The Panel holds that Complainant has failed to make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The Panel finds to the contrary, that Respondent does have rights and legitimate interests in the disputed domain name under policy ¶ 4(a)(ii).

In light of the Panel’s finding in favor of Respondent with respect to the existence of rights and legitimate interests in the disputed domain names pursuant to Policy 4(a)(ii), there is no need to reach an analysis of the third element. 

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

Complainant makes the assertion that Respondent offers the <rive.com> domain name for sale for a price of $45,500 to the public

Complainant argues that offering a domain name for sale is evidence that the domain name should be considered as having been registered and used in bad faith.

The Panel finds that because Respondent makes a business of selling domain names, the offer to sell the domain name at issue cannot be considered in bad faith under Policy ¶ 4(b)(i).

“Complainant further alleges that Respondent owns at least twenty-five domain names, demonstrating that Respondent is a “squatter” with respect to domain names”

“The Panel notes, however, that the other domain names owned by Respondent are not at issue in the present dispute, and there is no evidence to suggest that they are actually infringing on the domain names. Therefore, the Panel will disregard Complainant’s arguments relating to prevention inferred from these various other domain names.”

Complainant makes the allegation that Respondent does not maintain an active website associated with the domain name. Complainant submits evidence in its Annex B showing the webpage resolving from the disputed domain name, which states, “Server not found.” 

The Respondent states that, while there is no website associated with the domain name, same has been leveraged as an e-mail service and has used it extensively in professional and personal correspondence.

The Panel agrees and finds that under these circumstances Respondent’s use of the domain name in connection with e-mail services is a legitimate use.

The Panel finds that a respondent is free to register a domain name consisting of common terms and that the domain name currently in dispute contains such common term. 

The Panel therefore finds that Respondent did not register or use the <rive.com> domain name in bad faith under Policy ¶ 4(a)(iii). 

On the issue of Reverse Domain Name Hijacking the panel found “that although Complainant has failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith as such bad faith was not proven.”

The panel also stated a position on principle of laches since the  name has been registered since 2004 and Complainant took no action during that time to make a claim that Respondent improperly registered the domain name.

The Panel finds that while the doctrine of laches does not apply as a defense under the Policy, and correspondingly chooses to disregard Respondent’s assertions, the absence of any complaint over a long period of time in which domain names are in active use can suggest that such use does not give rise to a serious problem.