Sentimental Value, “Click Through” Fees and Refusal to Sell Domain Name
Rights and Legitimate Interests and Bad Faith
In this case, the disputed domain name was registered many years before the relevant trademark. The registrant of the domain name was deceased , but his son, acting on behalf of the deceased’ widow, maintained that the family wanted to keep the domain name for its sentimental value and rejected two offers from the Complainant to buy it.
Issues arose around rights and legitimate interests and also bad faith.
On rights and legitimate interests, the panel reached the following conclusions:
“… a desire to retain the Disputed Domain Name for “sentimental” value would likely be insufficient under other circumstances not present here, …” Your editor is not entirely clear whether this means that in the present case sentimental value is insufficient to show a right or legitimate interest or whether that would be the case only in the presence of other circumstances, absent in the present case. However, if it is the latter, it is not clear what those circumstances would be. Later in the decision, it must be said, the panel said that the sentimental value argument was not “commercially compelling.”
The Complainant had argued that the use of the domain name for “ click through“ services showed it had no right or legitimate interest in it, relying on Jappy GmbH v. Satoshi Shimoshita (WIPO Case No. D2010-1001). But the Panel found that the Respondent had commenced to use the domain name for that purpose years before the registration of the Complainant’s trademark, whereas in Jappy GmbH v. Satoshi Shimoshita, the Respondent “began using said domain name for click-through revenue three years after the complainant began using its trademark.”
The Respondent’s refusal to accept the offers from the Complainant to buy the domain name did not show that the Respondent had acquired the domain name for its trademark value and the facts showed the opposite, that it was being held for sentimental reasons, even if that were not “commercially compelling”.
On Bad Faith, the Complainant was also hard pressed to show the domain name had been registered or used in bad faith, as the facts did not support that conclusion. Principally, the panel found that although the Respondent had re-registered the domain name after the death of his father, that was not akin to an acquisition requiring him to do due diligence to ensure it did not trespass on a trademark.
But the real value of the decision is the panel’s view that in essence the complaint was that the Respondent had refused to sell the domain name to the Complainant and that this was not bad faith or the absence of a right or legitimate interest in the domain name.
Reverse Domain Name Hijacking
On this issue, as is always the case, the decision was made on the actual facts of the case. The Panel, however, made an interesting general observation that the bringing of the complaint could be “speculative” , as it was in this case and yet not justify a finding of Reverse Domain Name Hijacking, relying on IUNO Advocatpartnerselskab v. Angela Croom, (WIPO Case No. D2011-0806). The Panel decided, not with a great deal of evident enthusiasm and despite the fact that the claim was speculative, to give the Complainant “the benefit of the doubt” and not make a finding of Reverse Domain Name Hijacking.