Grigorius Holdings, SIA (“Complainant”), just lost it bid to grab the generic domain name sexyjapanese.com which was registered on January 2, 1998.

The one member panel John J. Upchurch found that Complainant failed to establish rights in a trademark that predate the registration of the domain name.

However Mr. Upchurch failed to even discuss Reverse Domain Name Hijacking despite finding the Complainant didn’t meet any of the three requirements of a UDRP and really had no claim to a right based on the registration date.

Here are the highlights:

FINDINGS

Complainant asserts that its mark has acquired secondary meaning and has been in use since at least May 28, 2012. In its additional submission at p. 3, Complainant has provided a link to a YouTube video—which was uploaded on May 28, 2012—that shows the sexy JAPANESE logo in the upper left corner.

The Panel notes that this is the extent to which Complainant has provided evidence that the mark had acquired secondary meaning. Therefore, the Panel finds that the sexy JAPANESE mark had not acquired secondary meaning, since no evidence of sales, advertising, or expenditures was provided. See Mary’s Futons, Inc. v. Tex. Int’l Prop. Assocs., FA 1012059 (Nat. Arb. Forum Aug. 13, 2007) (“A common law trademark must be shown by evidence such as sales figures, advertising expenditure, [and] numbers of customers.”).

Accordingly, the Panel concludes that Complainant’s rights in the sexy JAPANESE mark can only date back to October 20, 2014, the day on which the mark was registered with the Republic of Latvia Patent Office.

Rights and Legitimate Interests

Given the Panel’s finding below on bad faith, it’s unnecessary for the Panel to reach this issue.

Registration and Use in Bad Faith

Since Complainant failed to establish common law or unregistered rights in the sexy JAPANESE mark, its rights can only date back to the mark’s registration date of October 20, 2014. The registration date for the domain name is January 2, 1998.

Therefore, because Respondent’s registration date for the disputed domain name predates Complainant’s rights in the sexy JAPANESE mark, Respondent did not register the domain name in bad faith under Policy ¶ 4(a)(iii).

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is ordered that the domain name REMAIN WITH Respondent.