“Mascot International A/S of Silkeborg, Denmark, just won the rights to the domain name mascot.nl which was registered on October 31, 2001.
Complainant, a Danish company has a Benelux trademark for the term MASCOT which is really a figurative mark for the word MASCOT as written in a special script:
which was granted in January 18, 1989
Complainant also filed a wordmark as CTM, for goods in classes 9 and 25, application date October 29, 2001, registration date March 3, 2004, registration no. 002429587.
The domain holder acquired the Domain Name on October 7, 2014, by change of registrant.
The Domain Name resolved to a default page at the time of filing of the Complaint.”
However the trademark holder didn’t really try to reset the clock as to the purchase date it just used the 2001 registration date and argued successfully that the 1989 figurative mark carried the day.
“Absent any contrary evidence from Respondent, its passive holding of the Domain Name does not constitute a legitimate noncommercial use of the Domain Name.
The Response does not show that Respondent has any rights to or legitimate interests in the Domain Name, whereas the Complaint plausibly establishes the contrary.
Based on the foregoing, the Panel finds that Respondent has no rights to or legitimate interests in the Domain Name.
The registrations and use of Complainant’s Trademark predate the registration of the Domain Name by many years.
Complainant’s trademark rights date back to 1989 and it has not been contested that the Trademark is well-known.
This leads the Panelist to conclude that Respondent c.q. his legal predecessor most likely was aware of the Trademark when registering the Domain Name.
The apparent lack of any active use prior to the filing of the Complaint (i.e., for the Domain Name to resolve to an active website) of the Domain Name without any active attempt to sell or to contact the trademark holder (so-called ‘passive holding’ by Respondent) does not as such prevent a finding of bad faith.
On the contrary, the specific cumulative circumstances in this case in which the Domain Name is identical to the (undisputedly well-known) Trademark of Complainant and in which Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by him of the Domain Name, are indicative of bad faith on the part of Respondent in his registration and/or use of the Domain Name.
In addition, the lack of any response by Respondent to the cease and desist letter sent to him by Complainant, as well as the materially incorrect reference to the day he acquired the Domain Name, are further circumstances suggesting bad faith on the part of Respondent.
On the above grounds, the Panel finds that the requirements of registration or use in bad faith of the Domain Name are met.”
I feel that the panel used the C&D as icing on the cake. In my opinion, responding to a C&D is a way to establish ‘good faith’ and is an opportunity to let the complainant know that they are about to be the recipient of a RDNH. Obviously you cant blatantly say that, but if you lay your facts out on the table and you are in the right, it could avoid the entire UDRP process.
The judgement sits uncomfortably with me, but for another reason. Briefly comparing this to the start of the book Leviathan (maybe Michael’s read it?), and its general themes of freedom of interference, in this case it should follow so long as the registrant acquired the name lawfully in the marketplace, and continues to pay renewals these acts themselves should be considered as a basis for good faith. It appears burden of proof has incorrectly been shifted here from complainant to respondent – for example “Complainant’s trademark rights date back to 1989 and it has not been contested that the Trademark is well-known.” This interpretation of law seems fundamentally incorrect as all that has been established is that there is a trademark, and nothing more. Further any lack of correspondence after the registration, would be after the fact, and so should not be a basis for any conclusion of good or bad faith dealings. What are your thoughts Michael? If you were the respondent would you appeal? (Please note I’m not the respondent in this matter, just interested in others opinions)
Correction to prior comment – “freedom of interference” should be “freedom from interference”.
On a side note, it looks as if the leviathan book has been remade into another movie in 2014. It appears to be getting some great reviews! Trailer’s here: https://www.youtube.com/watch?v=2oo7H25kirk
the problem starts even before with the reasoning that holding a domain name without any website is not a legitimate noncommercial use. This is ludicrous and keeps being used in UDRP year after year laying more ground to be used in further UDRPs.
If I own a house and keep it in good standing do I lose my right to own it? Why should I lose my domain because i am not using it for a website? and what about using the domain for email? or as a dns server? who says what should be the use of a domain? complete BS.
but knowing how all these crooked guys act we must think ahead and cover all angles. Any C&D letter should be answered. Politely but incisive, taking care of not giving any ground for further action. Saying something like “We are sorry that you think that way and felt the need to send this C&D letter. We have been preparing to use the site for bla bla bla. In the meantime we are using it as bla bla bla. We have the rights of using this domain purchased legally sometime ago and in no time did we thought of tarnish any intellectual property rights that you may have or think you have. As you may confirm, we have never contact you neither offer the domain for sale. In fact, we have never looked at your business for any reason. You can rest assure that we will continue not infringing any rights you may have like we have done with other web properties on our possession”.
feel free to beautify this response and populated it with more legal stuff if you wish.
It is ccTLD.
It is not governed by ICANN UDRP.
CcTLDs have their own rules. Some just take your name back without any excuses whatsoever.
Davd
While ccTLD’s are not governed by ICANN, they can and most have adopted the UDRP to handle domain disputes
That is up to each ccTLD to decide and a few have even adopted the URS including as I wrote about this week, .US (also .pw)
So two different animals altogether