top of page

Recent Case Notes & Commentary

REWRITING HISTORY? TREAD LIGHTLY

Apnea Sciences Corporation v. Private Domain / Above Privacy

 

FORUM Claim Number: FA2310002065870

 

December 24, 2023


RATIO

 

Relief was denied to the Complainant on the grounds that it had failed to establish that the Respondent did not have any rights or legitimate interest in the disputed domain name. Further, a finding of Reverse Domain Name Hijacking (“RDNH”) was found in favour of the Respondent, as the foundation of the Complainant’s case was falsified and exaggerated, and had clearly been brought in bad faith.

 

BACKGROUND

 

Apnea Sciences Corporation (“the Complainant”) is engaged in the business of trading in medical devices and is the registered proprietor of the trademarks “SleepRx” under the trademark registration numbers 5953006 registered on January 7, 2020, and 6560937 registered on November 16, 2021, both with the United States Patent and Trademark Office (“USPTO”).

 

The Complainant has brought the present complaint against Private Domain / Above Privacy (“the Respondent”), alleging that the Respondent had acquired the domain name <sleeprx.com> in 1999, and for the next 19 years cybersquatted on the domain name without using it, and then activating it in approximately June 2020. The Complainant claimed that the Respondent did not use the domain to sell any products, but sold referrals, and to direct consumers to diagnostic sleep companies. The Complainant claimed that the Respondent activated the domain name to provide Google ad pages, immediately after the Complainant received registration of its trademark SleepRx on January 7, 2020. Therefore, according to the Complainant, the Respondent was tarnishing the trademark “SleepRx” of the Complainant, and causing the Complainant financial loss.

 

The Respondent contended that it is a professional domain name investor and owned more than 1000 domain names, offering them for sale. Many of those domain names incorporate common phrases and keywords, such as “sleep rx”. The disputed domain name became available for purchase in May 2022, and the Respondent acquired it for its business at a public auction, where the Complainant had not appeared and did not bid. The Respondent subsequently acquired the disputed domain name on July 10, 2022. The Respondent contended that it had not acquired the domain name for the purpose of selling it to the Complainant. While the Respondent acquiesced that the domain name was similar to the trademark “SleepRx” of the Complainant, the Respondent still had a right and legitimate interest in the domain name, and that it had not registered or used the domain name in bad faith.

 

The Respondent also sought a finding of RDNH in its favour, alleging that the Complaint had been brought in bad faith to harass the Respondent.

 

DECISION

 

The Panelists reviewed the matter in accordance with the UDRP Rules. Reference was made to UDRP Rules ¶ Paragraph 15(a) which states that the panel has to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Reference was also made to UDRP Rules ¶ Paragraph 4(a) that set out the elements that need to be proven for successful disputed domain finding, which has already been discussed in earlier posts on this blog.

 

Identical and/or confusingly similar

 

The Respondent conceded that the disputed domain name <sleeprx.com> was identical or confusingly similar to the Complainant’s registered trademark “SleepRx”. Therefore, the Complainant had established the first of the three elements under UDRP Rules ¶ Paragraph 4(a).

 

Rights or legitimate interests

 

The evidence in this case clearly established that the Respondent had bought the disputed domain name at an auction on May 15, 2022 and the subsequently acquired it on July 10, 2022. Therefore, the Complainant’s allegation of cybersquatting was false. The Respondent had acquired legitimate rights and interest in the domain name when it bought the same from the public auction. The evidence also showed that the Respondent was the owner of similar domain names as <sleeprx.com>, such as <naturalsleep.com>, <silentsleep.com>, <rxdrug.com> and <rxconsulting.com>. The evidence also shows that the Respondent has used the domain name to resolve to Google ads that promote interests that provide diagnostic sleep services, and there is nothing untoward about using the domain name to provide links to those who offer those services. Lastly, UDRP Panels have held that domain name holders may have legitimate interest in the domain names that consist of dictionary words and phrases, common expressions, or generic and descriptive terms, such as “sleep rx” in the present case, which is clearly descriptive of sleep and also the notion of medical prescriptions (rx) for conditions related to sleep, such as sleeplessness and snoring.

 

Therefore, the Panel found that the Respondent has a right and legitimate interest in the disputed domain name, and the Complainant had failed to establish the second element as required under UDRP Rules ¶ Paragraph 4(a).

 

Registration and Use in Bad Faith

 

The Panelists found the Respondent had the right to buy the domain name as it did at a public auction in which the Complainant did not participate, and in the course of participating in the auction, the Respondent had acted in good faith. There was no targeting of the Complainant. The Respondent had merely bought the domain name as an investment and had no intentions to disrupt the business of the Complainant.

 

Therefore, the Complainant had failed to establish the third element under UDRP Rules ¶ Paragraph 4(a). The Panelists accordingly concluded that the Complainant was not eligible for relief.

 

REVERSE DOMAIN NAME HIJACKING (“RDNH”)

 

The Panelists further concluded that the present action was brought by the Complainant in bad faith to harass the Respondent under UDRP Rules ¶ 15(e). The Complainant had exaggerated its claims of cybersquatting by the Respondent for 19 years, and had attempted to rewrite history after receiving registration for its trademark “SleepRx”. The Respondent had legitimately acquired the domain name and had rights on it. The Respondent had no intention to use the domain in bad faith. Further, the disputed domain includes the ordinary use of an easily understood and common English word and a common term, "rx". The Complainant could have studied the website and seen that the sleep studies being promoted easily came within the ambit of the domain name.

 

Based on the above, the Panelists indeed found that there had been a case of RDNH, and concluded that the domain should remain with the Respondent.

bottom of page