In a very interesting UDRP, Chris Pearson who owns the WordPress Theme of Thesis, lost its bid to grab the domain name Thesis.com from the parent company that owns and operates WordPress, Automattic, Inc.

According to the UDRP, Respondent and Complainant were both approached by a third-party about purchasing the domain name thesis.com and Automattic, Inc. was the high bidder, paying $100,000.00 for the domain name

The three member UDRP panel of the Hon. Neil Anthony Brown, QC, Hon. Richard DiSalle, and Hon. Carolyn Marks Johnson dismissal of the complaint may have well turned on the Complainant failing to attach as an exhibit to the Complaint showing that thesis.com redirects to a webpage owned by Respondent:

“”Complainant claims that Respondent’s use of the disputed domain name is to divert and confuse customers and potential customers. The Panel notes that Complainant did not include an exhibit showing that thesis.com redirects to a webpage owned by Respondent. The Panel suggests that the submissions might point toward use by Respondent that would support findings of bad faith, pursuant to Policy ¶ 4(b)(iv) if evidence had been adduced to that effect. However, Complainant failed to bring that proof to the Panel.

The Panel therefore finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii).”

The panel rejected the domain name holders argument that the term “Thesis” was generic.

Thesis.com was created November 8, 1998 and the Complainant’s registration of the THESIS mark was dated October 11, 2011.

Visitors to thesis.com are redirected themeshaper.com which the Complainant argued offers services that compete with Complainant

Here are the highlights:

The Panel finds that Respondent is using the disputed domain name to redirect internet users to Respondent’s competing webpage, which is not a bona fide offering of goods or service or a legitimate noncommercial or fair use of the domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii).

Allegedly, Respondent and Complainant were both approached by a third-party for the possible purchase of the domain name, and Respondent was the higher bidder, paying $100,000.00 for the domain name.

Such a purchase has been considered a bona fide offering of goods under Policy ¶ 4(c)(i) by past panels.

Therefore, this Panel considers that Respondent’s purchase of the domain name for $100,000.00 could confer rights sufficient for Policy ¶ 4(c)(i) rights and legitimate interests, had adequate evidence to that effect been adduced.

The Panel notes, however, that Respondent did not provide documentary evidence establishing this purchase of the disputed domain name for $100,000.00 and therefore the Panel declines to give that claim full credibility without such proof, which would have been easy for Respondent to provide and which should be Respondent’s burden to provide if the Panel were to rely on that claim as proof of rights.

Further, Respondent is purportedly using the disputed domain name in connection with a blogging site

Respondent argues that such use serves as an invitation to Internet users to discuss, object, and debate certain topical issues. Panels have found rights and legitimate interests where a respondent was hosting a noncommercial website. See Baja Marine Corp. v. Wheeler Techs., Inc., FA 96954 (Nat. Arb. Forum May 17, 2001) (finding that the respondent has rights and legitimate interests in the domain name where the respondent made a non-commercial use of the domain name and received no funds from users of the site connected to the domain name). Yet, here as well, Respondent provides nothing more than the invitation to engage in such activities. Therefore, the Panel declines to find that Respondent actually operates the domain name in connection with a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).

Respondent also argues that the term of the domain name is common and generic/descriptive, and therefore, Complainant does not have an exclusive monopoly on the term on the Internet.

Contrary to Respondent’s position, the appropriate authority registered THESIS as a mark and Complainant established those legal rights to that mark. Respondent’s premise is contradicted by this governmental proof of legal rights.

The Panel finds that Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name and that Respondent has not rebutted that prima facie case. Complainant has therefore satisfied the elements of ICANN Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith:

A party must satisfy all three of the burdens imposed under the Policy in order for the Panel to order transfer of a domain name from the entity registering it. Here, Complainant failed to establish that Respondent registered and used the disputed domain name in bad faith.

The Panel does not adopt Respondent’s contention that thesis.com is comprised entirely of a common term that has many meanings apart from use in Complainant’s THESIS mark.””