Edward B. Hamrick dba Hamrick Software lost its bid to grab the domain name vuescan.com in a UDRP from Frank Schilling’s Name Administration Inc. who was as always represented by John Berryhill, Esq.

However the panel refused to make Reverse Domain Name Hijacking (RDNH) ruling despite finding the domain holder did not register or use the domain name in bad faith, made legitimate use of the domain and that 9 years had passed since the Complainant first sent a C & D letter to the domain holder.

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

Complainant has rights in the VUESCAN mark based upon trademark registration dating back to December 15, 2008 pursuant to Policy ¶ 4(a)(i).

Complainant claims it began using its VUESCAN mark well before it filed for registration of its mark, beginning in April 1999. Complainant claims its software quickly was accepted as the leading scanner software because of its flexibility, ease of use, and compatibility with hundreds of scanners.

The USPTO Registration for the VUESCAN mark lists a date of March 3, 1998 as the mark’s First Use In Commerce. The Panel could find that Complainant has common law rights in the VUESCAN mark dating back to March 3, 1998 pursuant to Policy ¶ 4(a)(i).

The Panel holds that Complainant has not established a prima facie case in that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).

Respondent asserts that it has rights or legitimate interests in the disputed domain name. Respondent argues that it maintains a sizable portfolio of domain names comprising simple words, short phrases, and other descriptive or common terms for the purpose of providing keyword advertising in relation to the words in the domain name, and Respondent notes that it is also the registrant and operator of the domain name to which the disputed domain name is phonetically equivalent, .

Further, Respondent points out that the links displayed do not relate to scanner software, as they are listed under headings such as “Digital Televisions,” “LCD Television,” “Plasma Televisions,” “Projection Televisions,” and so on.

As such, the Panel finds that Respondent has demonstrated that it uses the disputed domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii) and thus that Respondent has rights or legitimate interests in the domain name.

Therefore, Complainant has failed to meet its burden of proof on this prong.

3. Registration and Use in Bad Faith

The Panel finds that Complainant has failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii).
The Panel concludes that Respondent has rights or legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii), and that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).

The Panel further finds that Respondent has not registered or used the domain name in bad faith.

Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii).

Respondent argues that the disputed domain name was not acquired for the primary purpose of selling it to a trademark owner given that at the time of registration there was no evidence that such a mark existed.

Respondent asserts that it has a business interest in the domain name that negates any instance of bad faith that would otherwise result from entertaining offers to purchase the domain name.

The Panel finds that Respondent did not register and is not using the domain name in bad faith given that Respondent’s aim in registering and using the disputed domain name was not to eventually sell the domain to the Complainant pursuant to Policy ¶ 4(b)(i), but instead was to hold the merely descriptive domain name for its advertising and marketing Internet processes.

Respondent notes that the links that are displayed via the domain name relate to televisions, not scanners or scanner software.

In order to demonstrate bad faith under Policy ¶ 4(b)(iii) there needs to be shown some element of competition between the parties.

Respondent notes again that the disputed domain name is one of many domains that Respondent has registered in its business of maintaining domain names that incorporate descriptive phrases.

Respondent next alleges that the domain name could not have been registered in bad faith as it was registered prior to Complainant’s acquisition of rights in the VUESCAN mark.

Respondent notes that Complainant’s alleged date of acquired distinctiveness in its mark and its USPTO trademark registration post-date the Respondent’s acquisition and use of the domain name.

Further, Respondent argues that the domain name clearly could not have been registered in 2000 for the purpose of targeted exploitation of rights which Complainant would not claim to have acquired distinctiveness in as of September of 2009.

It has consistently been held that a domain name cannot have been registered in bad faith where its registration date pre-dates the time at which the complainant acquired rights in the allegedly-infringed-upon mark.

Therefore, Complainant has failed to meet is burden of proof on this prong.

Doctrine of Laches

In 2005 and again in 2008, Complainant contacted Respondent threatening legal action in “ten days.”

Complainant did nothing after Complainant’s positive assertion of rights and threat of action without action for over eight years directly implicates the Doctrine of Laches as Complainant was clearly aware of Respondent’s registration and use of the domain name as far back as 2005.

The Panel considers the doctrine of laches as evidence for its considerations of the elements of the Policy.

Respondent’s continued use for almost 9 years without further action by Complainant simply cannot constitute use in bad faith. Without that alone, Complainant’s Complaint fails.

Reverse Domain 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 domain name, of its rights to use the disputed domain name.

Respondent asserts that the domain name could not have been registered in 2000 for the purpose of targeted exploitation of rights which Complainant would not claim to have acquired distinctiveness in as of September of 2009.

Respondent notes that Complainant approached Respondent multiple times over the years threatening legal action but did not follow through.

Respondent believes that Complainant’s course of conduct over the years amounts to nothing more than an attempt to wrongfully acquire a domain name that rightfully belongs to Respondent through the misuse of procedures such as UDRP and the United States’ trademark registration process.

Thus, the Panel could find that Complainant knew or should have known that it was unable to prove that Respondent lacks rights or legitimate interests in the vuescan.com domain name and that Respondent registered and is using the disputed domain name in bad faith.

However, the Panel finds that Complainant, in filing the Complaint in the circumstances described above may have been motivated more by unjustified optimism about the outcome of the proceeding rather than by an intention knowingly to harass Respondent and the Panel is not entirely persuaded that there is sufficient evidence of the latter.

Accordingly, on balance and in the exercise of its discretion, the Panel is unable to find that reverse domain name hijacking has occurred.