WIPO Case No. D2018-0924. July, 2, 2018.
When a domain name- as in this case -is as generic and descriptive a word as “jolly”, you would think it a golden opportunity to expand on the use of generic words in domain names and how, in appropriate cases, they can give rise to a right or legitimate interest in the domain name. They can also make it more difficult to prove bad faith registration and use. So it is a pity this decision did not analyse these broader implications of the use of generic words in domain names. However, it is a useful decision, if for no other reason than to show how a Complainant may fail, as the Complainant failed, to prove the lack of an RLI and the presence of bad faith.
The Complainant tourism company had a trademark for JOLLY and many others where JOLLY was a constituent word in other trademarks like JOLLY INTERNATIONAL TOURS. The Respondent had registered the domain name <jolly.com> on February 27, 1997. It had for some years operated a Seattle based business and a website at the disputed domain name for selling and buying electronic apparatus. Presently the disputed domain name resolved to a “Coming Soon” parking page with no advertisements.
The Complainant's argument on RLI was, in effect: there is the “Coming Soon” parking page and the domain name is therefore not being used for goods and services within the generic meaning of “jolly”. But, the panellist found, the domain name had:
“hosted an active website from December 5, 1998 (before the Complainant's trademark number 198468 was granted registration) until January 28, 2013, dealing consistently in the business of specialised electronic apparatus.“
So, the domain name had been used for goods and services coming within the genus of “jolly’.” This could therefore be a basis for an RLI in the domain name and it had not been disproved.
Secondly, the proxy service for the registration of the domain name was not hiding the registrant’s name, as it was clearly stated on its website together with contact details.
The reason why we draw your attention to this case is that it is not as if there were strong reasons or evidence put forward by the Respondent (who did not defend the claim) positively showing an RLI, but that the only grounds relied on by the Complainant for proving the opposite were dubious. The onus was on the Complainant and it had failed to discharge it.
The issue of bad faith resolved around the dates on which the domain name and the competing trademark had been registered, an issue often arising these days. They were:
Domain Name: 27 February, 1997.
Trademark: applied for - July 10, 1998.
registered- July 27, 1999.
Clearly there could have been no bad faith registration because the domain name had been registered such a long time before the trademark.
Importantly, the Complainant had not shown what might have been an exception to that outcome, so that bad faith registration could still have been shown; i.e. that the Respondent could have known of or anticipated in advance the registration of the trademark (say, when two companies were amalgamating and the registrant anticipated a new trademark using both former names).
Also no other criteria of bad faith had been proved.
Nor was this a case of passive holding, as the criteria in Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003), had not been met.
TAKE HOME MESSAGE: A Respondent can win on both RLI and bad faith, not because it has adduced strong evidence itself to rebut them, but because the Complainant has not positively proved itself the elements that the UDRP specifies for proving RLI and bad faith.