Vertical Axis Inc which was as always represented by Esqwire.com beat back a UDRP on the domain name ThinkThin.com
The trademark holder 1st registered their trademark and started selling their product in 2006, somehow they thought they were entitled to the domain although it was registered back in 2001.
Typical.
The three member panel should have found Reverse Domain Name Hijacking but instead just denied the UDRP:
The factual findings pertinent to the decision in this case are that:
1. Complainant has sold weight management snack bars by reference to the trademark THINKTHIN since 2006;
2. Complainant is the proprietor of United States Patent and Trademark Office (“USPTO”) Reg. No. 3,238,772 filed October 19, 2006 for the word mark THINKTHIN;
3. Respondent registered the disputed domain name on August 8, 2001;
4. Respondent is a domain name reseller and the domain name is for sale;
5. The disputed domain name resolves to a portal-style website with links to diet and weight loss plans, including a link to Complainant’s website;
6. Complainant has not licensed or otherwise given permission to Respondent to use its trademark or to register any domain name incorporating the trademark.
Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name.
The only live question is whether the disputed domain name has been used in connection with a bona fide offering of goods or services prior to notice of the dispute. Respondent states that it is a generic domain name reseller, and submits that the sale of domain names containing generic terms is a bona fide offering of goods or services.
Respondent registered the domain name five years before Complainant had any interest in the trademark.
The domain name is generic in the sense that it is apt to describe any foodstuffs marketed in connection with weight management.
At that level Respondent had a right to the domain name at the time of registration and in terms of paragraph 4(c)(i) there is a respectable argument that, well before any notice of the dispute, Respondent made bona fide use of the domain name either as part of business which resells generic domain names and this was one such domain name for sale, or as the host site for links to third parties offering goods or services linked in some way to weight loss or dietary products.
The facts that Complainant later came to acquire trademark rights in an all but identical term and that the resolving website linked for a time to Complainant’s official website are additional considerations Panel feels best discussed in relation to paragraph 4(b) of the Policy and for reasons which follow a conclusive finding on this aspect of the Policy is not necessary.
Panel makes a number of preliminary findings. First, it is unequivocal that, at the time Respondent registered the disputed domain name, it had no knowledge of Complainant or of its trademark.
Accordingly, it would be open to the Panel to decline to find bad faith registration and move directly to final decision.
Secondly, it follows that there is no scope for the application of any of subparagraphs 4(b)(i)-(iii) above which all hinge on bad faith registration but for the argument made by Complainant that Respondent was aware of Complainant and its trademark upon Respondent’s re-registration (renewal) of the disputed domain name. In that regard UDRP panels have in the past considered the questions of whether or not transfer or renewal of a domain name constitutes re-registration for the purposes of paragraph 4(b) and – so far as it exists – the consensus viewpoint has been that transfer might be treated as re-registration but not renewal. See Dixons Group Plc v Mr. Abu Abdullaah, WIPO Case No. D2000-1406; but see contra, Eastman Sporto Group LLC v. Jim and Kenny, WIPO Case No. D2009-1688.
Thirdly, Complaint submits that Respondent had constructive knowledge of Complainant’s trademark rights by reason of registration of the trademark. Constructive knowledge of trademark rights has been largely discredited as a principle to be applied to paragraph 4(b) of the Policy, but in any event, there could have been no knowledge, constructive or otherwise, at the relevant time.
Finally, there is the undeniable evidence that the resolving website provided a link to Complainant’s website after the trademark became registered and Complainant acquired trademark rights.
Moreover, after the establishment of those trademark rights, the resolving website carried links to third parties providing goods and services in competition with Complainant.
Panelists have generally found that a domain name registrant will be deemed responsible for content appearing on a website at its domain name, even if the registrant does not exercise direct control over that content. Respondent explains that the links on the resolving website are and have always been auto-generated by Google and are constantly changing based on Google’s algorithm, keyword advertising inventory and user search behavior. Additionally, Respondent claims to have personally removed references to Complainant and its competitors on the resolving website.
Accordingly, although the evidence undoubtedly reveals instances of conduct which, without more, might be seen as bad faith use, this should not negate or outweigh the Respondent’s other bona fide actions and motivations. On the evidence, the Panel finds that Respondent did not register the domain name in bad faith and, on balance, did not use the domain name in bad faith.
Panel finds that Complainant has failed to establish this third aspect of the Policy.
Why is it that UDRP attempts never go after the hundreds of other low-quality domains that have the same keyword?
This is a good decision, but not great; these panelists are making a simple job too difficult for themselves, and everybody.
Here’s why:
In the FACTUAL FINDING, bulletin 4, the panelists adduced that the Respondent is a domain name reseller and the domain name is for sale; which means the Respondent is NOT in the weight management snack bars business, as the Complainant. The panelists are not saying that domain resell business can be confused with snack bar hustling, and nobody could. The case should have ended there. Marks can be shared by two, or more different entities as far as there are clear demarcations, be it geographical, or in this case industry. They should keep it simple. Nevertheless, I give the panelists a B.
Respondent registered domain name in 2001.
Complainant first registered their trademark and started selling their product in 2006 – 5 years after registrant registered the domain name.
The complainant in this case was represented by Eleanor M. Yost of Goodwin Procter LLP
The panelists were:
Debrett G. Lyons (chair)
The Hon. Neil Brown QC
Carolyn Marks Johnson
Debrett G. Lyons was also the Chair in the recent controversial AustinPain.com UDRP
From WIPO’s website Can bad faith be found if the disputed domain name was registered before the trademark was registered or before unregistered trademark rights were acquired? “..when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right.” For a UDRP complaint to succeed it is necessary to prove that the domain name was registered and used in bad faith. This complaint could not therefore have succeeded. As complainant using legal counsel would have been aware of this when launching this UDRP, why then was no Reverse Domain Name hijacking was found?
This is the type of case where I think UDRP is totally unfair and infact the trade mark holder should, if he thinks his trade mark is being breached, be forced to issue a trade mark proceeding .