Namecheap, Inc, just lost a UDRP on its attempt to get the domain name namechap.com

The domain holder defended the registration of the domain which was just registered in 2013 by saying it was a term in and of itself “Name Chap”

Interesting case.

Here are the relevant facts and findings by the one member panel who found the domain name was NOT confusing or similar to the trademark holder Name Cheap.

Complainant was launched in 2000, and is now one of the most prominent domain name registrars on the web.

Operating at , Complainant currently services more than 3,000,000 domain registrations and 800,000 users.

Based on its registration of each mark with the United States Patent and Trademark Office (“USPTO”), Complainant has rights in the NAMECHEAP (Reg. No. 4,213,990 registered September 25, 2012) and NAMECHEAP.COM (Reg. No. 3,622,358 registered May 19, 2009) marks under the UDRP.

Respondent registered the domain name on September 5, 2013

B. Respondent:

1. The disputed domain name consists of the generic terms “name” and “chap,” in which Complainant has established neither registered nor common law trademark rights.

a. The term “chap” has a distinct meaning apart from the term “cheap” found in Complainant’s mark. See Respondent’s Annex I, providing various dictionary definitions for the word “chap.”

b. A Google search for the term “chap” yields over 29,400,000 third-party results. See Respondent’s Annex J.

c. There are over 2,000 registered domain names that end with the term “chap.” See Respondent’s Annex L.

2. Respondent has made preparations to operate a “Kids Fashion Shopping-mall business” at the domain name. See Respondent’s Annex M, which appears to show a website offering children’s clothing under the name “name chap.” This business is unrelated to Complainant.

a. Respondent acquired the domain on September 5, 2013, and has not yet had the time to set up or use the domain for its intended purpose.

3. Respondent did not register the disputed domain name with the intent to disrupt Complainant’s business or to confuse consumers seeking to find Complainant’s website.

4. Respondent registered the contested domain name for its generic meaning and was not aware of Complainant’s business or trademark at that time.

a. Complainant is not well-known in South Korea, where Respondent resides.

5. Complainant’s actions in this case constitute Reverse Domain Name Hijacking under the Policy, as there is no evidence that the disputed domain name was registered or is being used in bad faith.

a. Complainant filed a lawsuit in U.S. Federal Court requesting the transfer of three domain names, including the domain name, from the previous registrar on May 7, 2012. If Complainant really had rights to the domain name, it would have been awarded the domain in that dispute.

C. Complainant’s Additional Submission:

1. Respondent’s arguments that the disputed domain name is comprised of the generic terms “name and “chap,” and that the term “chap” is different from “cheap” as found in Complainant’s mark, are irrelevant under Policy ¶ 4(a)(i).

2. Respondent’s Exhibit M, purporting to show a “Kids Fashion Shopping-mall business” under the domain name is merely a mock-up of a website and business that does not yet exist. Respondent has presented no business records or other evidence of commerce suggesting that Respondent has provided a bona fide offering of goods or services under the disputed domain name.

3. With respect to the Federal Action, Complainant stresses that the court found in Complainant’s favor, and that Complainant expressly identified the domain name in that action such that past registrants of the domain name should have been put on notice of Complainant’s rights in the domain. See Complaint Annexes E, J, & L.

a. Complainant was forced to resort to this UDRP action after Hebei, the registrar of record for the disputed domain name, ignored Complainant’s requests for transfer following the Federal Action.

FINDINGS

The disputed domain name is not confusingly similar to the Complainant’s trademark.

DISCUSSION

Under the Policy ¶ 4(a)(i) element, the panelist has to analyze two issues:

1) the rights of the complainant in the trademarks to which the disputed domain name is allegedly identical or confusingly similar;

2) the identity or confusing similarity between the disputed domain name and the trademarks in which the complainant asserts rights.

For the first issue, the Panel considers the contentions of the Complainant. Launched in 2000 and operating online at ,

Complainant claims to be one of the most prominent domain name registrars on the Internet.

According to Complainant, it currently services more than 3,000,000 domain registrations and 800,00 users.

Complainant claims to use the NAMECHEAP and NAMECHEAP.COM marks in connection with its offering of domain name registrations and related services such as private registration, web hosting, URL forwarding, security features, email forwarding, and other functions related to the registration, management, build-out, and administration of domain names.

Complainant provides evidence of its registration of the NAMECHEAP (Reg. No. 4,213,990 registered September 25, 2012) and NAMECHEAP.COM (Reg. No. 3,622,358 registered May 19, 2009) marks with the USPTO, arguing that such registrations confer rights under the Policy. Past panels have agreed that registration of a mark with the USPTO establishes rights under Policy ¶ 4(a)(i), regardless of the location of the respondent.

The Panel therefore concludes that Complainant has established rights in the NAMECHEAP and NAMECHEAP.COM marks under Policy ¶ 4(a)(i), Respondent’s apparent residency outside of the United States notwithstanding.

For the second issue, Complainant urges the Panel to find the disputed domain name confusingly similar to Complainant’s NAMECHEAP and NAMECHEAP.COM marks pursuant to Policy ¶ 4(a)(i).

In its assertions Complainant notes that the disputed domain name merely omits the second instance of the letter “e” in Complainant’s NAMECHEAP.COM mark.

In addition, the Complainant asserts that a US Federal Court has already considered and adjudicated the infringement issue as to this domain, and presents a decision of the United States District Court for the Central District Court of California in case no. CV 12-03868, by which it was considered that for a number of domain names, including the disputed domain names in this procedure; complainant contends this is a justification for an entry of default judgment.

The said judgment was delivered in connection to the disputed domain name in relationship to the unknown holder of the domain name and the Registrar Hebei Guoji Maoyi (Shanghai) Ltd. The judgment was delivered on August 27, 2012.

The disputed domain was registered with the Registrar Namebay on September 5, 2013 by the actual Respondent.

Therefore, the judgment of the United States District Court for the Central District Court of California in case no. CV 12-03868 could not refer to the same factual situation which had been initiated with the registration of the disputed domain name and which is under analysis to present proceedings.

Moreover, on the aspects regarding the substantive merits and sufficiency of the Complaint, the judgment just reproduces the Plaintiff’s (the Complainant in these proceedings) bulk allegations as to all the domain names under judgment and does not make any kind of analysis as to the confusing similarity of the disputed domain name

Therefore, the Panel considers that under the first element of the Policy Complainant has to make its own analysis as to the identity and or the confusing similarity of the disputed domain name to the Complainant’s trademark NAMECHEAP.COM.

According to “WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the threshold test for confusing similarity under the UDRP is that the relevant trademark would generally need to be recognizable as such within the domain name. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.

Applying the said criteria in the analysis subject to these proceedings, the Panel finds that despite the fact that apparently the disputed domain name is different with only one letter “e” from Complainant’s trademark, such difference cannot be considered as misspelling or even “typosquatting,” as the Complainant asserts further under its second element of the Policy contentions.

In fact, the disputed domain name consists of two generic terms “name” and the “chap,” each with its clear meaning of its own.

The disputed domain name may differ with one letter from Complainant’s trademark in their second parts, namely the term “chap” differs with one letter from term “cheap,” but this one letter difference makes also difference from the point of view of the meaning, orthography and pronunciation between the two terms. While, according to oxforddictionaries.com, the term “cheap” has, general meaning of low in price, especially in relation to similar items or services, the term “chap” has total different ones as: a cracked or sore patch on the skin, or a man or a boy.

Considering the absence of a letter “e” in the disputed domain name in comparison with Complainant’s trademark, the Panel finds that this particular absence cannot qualify as a misspelling but rather distinguishes the disputed domain name from the Complainant’s trademark.

Also considering the distinctive character, the disputed domain name gains by the omission of the second letter “e” from the Complainant’s trademark, also “typosquatting” could not be found applicable, as typosquatting is applicable only when a domain name contains a common or obvious misspelling of a trademark, where the misspelled trademark remains the dominant or principal component of the domain name, which is not the case in the disputed domain name .

Last, but not least, the content of the website to which the disputed domain name is resolving cannot be considered to count in the threshold assessment of risk of confusing similarity under the first element of the UDRP, as such content may be regarded as highly relevant to assessment of intent to create confusion under subsequent UDRP elements (i.e., rights or legitimate interests and bad faith).

Therefore the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), and declines to analyze the other two elements of the Policy.

The Panel denies a finding of Reverse Domain Name Hijacking.