Posts Tagged ‘ WIPO case’

Another UDRP win by with Howard Neu

Hello and Assalamo Alaikum,

It’s never a good thing for domain owner to get hit with UDRP.

With our last UDRP win for, this time it was on target. I already mentioned about the acquisition of this domain some time back. ALL credit goes to Howard Neu for saving another valuable domain.

Below is the abridged opinion of case #D2017-1679 at WIPO.INT.

“The Disputed Domain Name resolves to a pay-per-click (“PPC”) site, which mentions that the domain name “may be for sale”.  When the Complainant, via an unknown individual, inquired about a potential purchase of the Disputed Domain Name, the Respondent offered to sell the Disputed Domain Name in exchange of a six-digit figure amount.  An earlier request by the Complainant to purchase the Disputed Domain Name resulted in a five-digit figure amount offer.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the Disputed Domain Name.  The onus of proving this requirement, like each element, falls on the Complainant.  Given the difficulty in proving a negative, however, it is usually sufficient for a complainant to make out a prima facie case that the respondent lacks rights or legitimate interests.  If the complainant does establish a prima facie case, the burden of production shifts to the respondent.  See, e.g., WIPO Overview 3.0, section 2.1.

The Complainant considers that the Respondent aims at selling the Disputed Domain Name and that the Respondent is only parking the Disputed Domain Name on a page comprising PPC links to websites that are in competition with the Complainant’s activities.  In response, the Respondent submits that the Disputed Domain Name refers to PPC advertising relating to the dictionary meaning of the words “print factory” only.  The Respondent considers such use a legitimate business use.

Under paragraph 4(c)(i) of the Policy, the Respondent will have rights to or legitimate interests in the Disputed Domain Name if, before any notice of the dispute, he had used or made demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services.

Using a domain name to host a page comprising PPC links surely constitutes a very minimal use of the domain name.  Nevertheless, panels have recognised that “the use of a domain name to host a page comprising PPC links would be permissible – and therefore consistent with respondent rights or legitimate interests under the UDRP – where the domain name consists of an actual dictionary word(s) or phrase and is used to host PPC links genuinely related to the dictionary meaning of the word(s) or phrase comprising the domain name, and not to trade off the complainant’s (or its competitor’s) trademark.” (See WIPO Overview 3.0, section 2.9).

In the case at hand, there is no evidence that the Respondent is trying to trade off the Complainant’s (or any of its competitors’) trademarks.  The PPC links on the website associated with the Disputed Domain Name appear to be genuinely related to the dictionary meaning of the words comprising the Disputed Domain Name.  The PPC links are not related to the goods for which the Complainant has registered trademark rights.

The Panel therefore concludes that, on the basis of the evidentiary record in this proceeding, the Complainant has failed to prove the absence of rights or legitimate interests on the part of the Respondent.

Accordingly, the Complainant has not established the second requirement under the Policy and the Complaint must be dismissed.

C. Registered and Used in Bad Faith

In view of the Panel’s findings under the second limb of the Policy, there is no need for the Panel to consider the third requirement under the Policy as all three requirements of paragraph 4(a) of the Policy must be met for a complainant to prevail.

In any event, the Panel considers that the Complainant has not shown, on the balance of probabilities, that the Disputed Domain Name was registered and is being used in bad faith.  Surely, the Disputed Domain Name appears to be registered primarily for the purpose of selling, renting, or otherwise transferring the domain name for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name.  However, no evidence suggests that the Respondent had the Complainant or its trademark in mind when registering the Disputed Domain Name.  The value the Respondent attaches to the Disputed Domain Name appears to be inspired by the dictionary meaning of the Disputed Domain Name, and not by the identity of parties that may be interested in acquiring the Disputed Domain Name.”

The Panel consisted of Flip Jan Claude Petillion, Presiding Panelist, Gregor Vos and Tony Willoughby.

Once again I thank Mr. Howard Neu for representing and defending the domain.

I wanted to convey a message to all people around the world, I will try my best to defend my properties and won’t let them go easily.

Any feedback is welcome.