Kite Solutions, Inc. v. Brandon Abbey / Escrow.com
Claim Number: FA 1503001609855
May 4, 2015
A Respondent may defeat a Complainant’s claim by demonstrating they hold a right or legitimate interest in a disputed domain name. The UDRP details a non-exhaustive list of specific examples whereby Respondents may show they hold a right or legitimate in a domain name and hence in the website to which the domain name leads.
This case is interesting because it illustrates that despite assigning the rights to another, the original owner’s rights to a disputed domain name may subsist in a leasing agreement, thereby thwarting the Complainant’s request.
Disputed Domain Name <kite.com>
Denied – Respondent retains website.
Complainant used the KITE mark in connection with its software business, having registered it with the USPTO in April 2015.
The <kite.com> domain name was created 18 years prior to Complainant’s registration of the KITE mark. The disputed domain name was being leased to the Respondent, who held an option to purchase it in January 2018. During the life of the lease agreement an escrow company, Escrow.com, held all rights, title and interest in in the disputed domain name in escrow.
Paragraph 4(a) – Identical and/or Confusingly Similar
Who is the Respondent?
The Complainant registered the KITE mark with the USPTO on the relatively recently date of April 15, 2015. Because registration of the KITE mark with the USPTO is sufficient to establish rights in it (see Vivendi Universal Games v. XBNetVentures Inc., FA 198803), the Complainant established rights in the trademark.
But there was a preliminary issue as to who was the proper Respondent. The UDRP, in its introductory notes binds “you”, who is, in effect, “the domain-name holder or registrant.” Was the named Respondent, Brandon Abbey / Escrow.com, the domain name holder or registrant of the domain name in question? Yes, because Brandon Abbey/ Escrow.com was an escrow agent who held the domain name until all payments had been made under a leasing agreement by which the domain name was leased by its original owner, Mr Crowell, to a company called MEI, whereupon the domain name would be transferred to MEI. If the payments were not made by MEI, the domain name would revert back to the original owner and lessor. It sounds complicated, but the point that emerged was that Brandon Abbey/Escrow.com was the true respondent because it was registered in the WHOIS as the current registrant or domain name holder.
The remained of the issues under this, the first element of the Policy, were easily resolved:
(a) the simple addition of the gTLD .com is regularly held to be insufficient to distinguish a disputed domain name from a trademark (see Pomellato S.p.A v. Tonetti, D2000-049); and
(b) the disputed domain name was identical to the mark.
So it was unsurprising that the Panel ruled the Complainant was successful in proving the first step in paragraph 4(a).
At this stage, the Complainant was ahead, as it had proved its mark, that the Respondent was the holder or registrant of the domain name and the domain name was identical to the mark.
But did the Respondent have some sort of right or legitimate interest in the domain name so as to defeat the Complainant’s claim? Yes, it did.
Paragraph 4(a)(ii) – Rights or Legitimate Interests
The <kite.com> domain name had originally been registered in 1997; the rights to it were subsequently transferred to the Respondent when it became the holder by virtue of its being the escrow agent. The use of the disputed domain name predated the Complainant’s rights in the KITE mark by approximately 18 years.
Previous Panels have ruled a new domain name registrant will generally not get the benefit of an earlier registration date to defeat a Complainant’s rights acquired after the date of the original registration, but prior to the Respondent’s newer registration. However, this present case was distinguished from that approach and the escrow agent was able to show it had an interest in the domain name based on the long standing and use of the domain name by its owner, Crowell.