FORUM Case Claim Number: FA1805001787481 .
July 9, 20018
It is good to have clarity in the views of panelists on the application of various provisions on the UDRP. A recent unanimous three-person panel decision meets the bill, first, on the issue of rights and legitimate interests. The Complainant must prove that the Respondent has no rights or legitimate interests in the domain name. The domain name in the present case was <oceanbreeze>, a very generic and descriptive word and one that is made up solely by combining two generic words. The Respondent had a good show of establishing an RLI in the domain name, simply for that reason.
DOMAIN NAME REGISTERED BEFORE TRADEMARK
But the Panel honed in, first, on another issue that seems to be coming up more frequently these days, where the domain name was registered before the trademark on which the Complainant was relying and where, as it were, the Respondent was faced with a clean slate on which to assert the principle “First Come, First Served”. It was here that the Panel laid down a clear principle, in its own words, that:
“Based on the evidence, the Panel finds that Respondent’s registration of the disputed domain name prior to Complainant’s own trademark registration … confers rights in the same under the Policy.”
You could not have it clearer than that.
PURPOSES FOR WHICH THE DOMAIN NAME IS USED
Another principle was also stated clearly, applicable where the domain name is a generic word and it is used for purposes within the meaning of that word. The principle is , as the Panel said, that:
“Using a domain name in a different industry than a complainant, and in connection with services descriptive of the terms in the domain name, can confer rights and legitimate interests in a domain name under Policy para 4(c)(i) and (iii). See McMullen Argus Publishing Inc. v. Moniker Privacy Servs., (D2007-0676, WIPO
July 24, 2007) (holding that “pay-per-click websites are not in and of themselves unlawful or illegitimate”); see also Heart of Success, Inc. v. PRIVATE REGISTRANT / A HAPPY DREAMHOST CUSTOMER,
(FA1689461 Forum Oct. 10, 2016) (“The records of the case show that the domain name acquired by Respondent is descriptive of the services it has offered online since the domain name registration date… Therefore, the Panel agrees that the circumstances of the instant case indicate that Respondent has not attempted to take advantage of the trademark value of Complainant’s mark and has made a bona fide offering of services per Policy para 4(c)(i).”).”
NEGOTIATIONS ON THE PRICE OF A DOMAIN NAME
Nor can an RLI be negated if there were negotiations on a price, but they were initiated by the Complainant.
GENERIC TERMS IN DOMAIN NAMES
The Panel made yet another clear statement on the implications of the domain name being made up of common and generic terms, which are that they show the Complainant had no exclusive rights over the words and, hence that the Respondent had an RLI in the domain name so long as it was used for purposes coming within the meaning of the domain name.
NO BAD FAITH IF DOMAIN NAME REGISTERED BEFORE TRADEMARK
Nor is it surprising that, on the last issue of bad faith, the Panel, in another clear statement, said that:
“Respondent’s registration of the <oceanbreeze.com> domain name predates Complainant’s first claimed rights in the OCEAN BREEZE mark. Under such circumstances, Complainant cannot prove registration in bad faith per Policy para 4(a)(iii), as the Policy requires a showing of bad faith registration and use."
A useful collection of plain statements from a unanimous three person panel.
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