Recent Case Notes & Commentary

SOCCER CLUB GETS UP EARLY, AND SCORES A GOAL BEFORE THE MATCH TO BEAT RIVAL CLUB TO DOMAIN NAME


Issaquah FC v. Paul Dolan / Dolan Enterprises

FORUM Claim Number: FA2204001994474

13 June 2022


There has been another decision where a trademark owner has failed to win a domain name because the Respondent, the registrant of the domain name, got in first and registered the domain name before the Complainant, the trademark owner, acquired its trademark. (In the actual case, the Respondent was the Secretary for Issaquah Soccer Club in Issaquah but he agreed the Club, not he, owned the domain name. Issaquah , in Washington State, USA, describes itself as “Historically Hip”, an apt nickname for a town with a mining and timber past that now provides from its population of c. 40,000, technological services for Boeing and Microsoft.)


Thus, to return to the sequence of events, the domain name holder could show that he had a right or legitimate interest (an RLI) in the domain name, which is a complete defence to the claim. It was an RLI because the UDRP says that it is, if the registrant actually used the domain name, bona fide, in offering its goods or services before it, the registrant, knew about the dispute. In other words, if the person who registered the domain name acted honestly (bona fide) and used the domain name to promote its business before it knew there was an argument about who was entitled to the domain name, it would win. Which it did.


The registrant in this case acted honestly by registering the domain name before the trademark owner acquired its trademark (a common law trademark) and even before it was incorporated, to prevent other parties from potentially using it in a way that could cause confusion with Respondent’s services. It was a soccer club, but there was apparently another soccer club also called Issaquah FC in the offing and, as the Respondent said openly in its submission, “registering the domain name prevented other parties from potentially using it in a way that could cause confusion with Respondent’s services”.


So, the Secretary of the Isaaquah Soccer Club registered the domain name <issaquahfc.com> before the Issaquah Football (meaning soccer) Club could get its act together and register the domain name <issaquahfc.com> which it wanted because it reflected its name, Isaaquah Football Club.


Doing this, and using the domain name to promote his club’s services, the Secretary of the Isaaquah Soccer Club had acted bona fide, which gave him an RLI and hence he could keep the domain name.


ANOTHER TWIST

But there was another twist that was good for the Respondent and helped him on his way and good for those who have domain names under challenge who want to present a defence coming from the UDRP. The RLI arises not only if you are using the domain name itself for a bona fide purpose (as above), but also if what you are using is:


“…a name corresponding to the domain name in connection with a bona fide offering of goods or services…”.


The Respondent was not actually using the domain name for the bona fide purpose because the domain name was <issaquahfc.com> and he was using the domain name to promote , not “issaquahfc.com”, but the website www.iscgunners.org, which is different, but where “isc” invokes the Issaquah Soccer Club, which is its name , but means Issaquah Football ( i.e. soccer) Club. As to how and why “gunners” contributes to a name which corresponds to the domain name, neither the Complainant not the Respondent has vouchsafed to us in their submissions. But our intrepid and fearless investigators here at Domain Times have discovered that Gunners is a nickname of the Arsenal club in the UK which is called the Gunners because of its motif of ammunitions and weapons and Issaquah FC may be based on this.


Accordingly, <iscgunners.org> is a name that corresponds to <issaquahfc.com> (sort of) and because the Respondent was using it in connection with a bona fide offering of goods or services, ( i.e. promoting the services of <iscgunners.org), it gave the Respondent an RLI in <issaquahfc.com> and hence a complete defence to the claim (if you follow me).


BUT THERE IS MORE. WHAT ABOUT BAD FAITH?

Not surprisingly, the fact that the domain name was registered before the trademark, made it very difficult for the Panel to find that the domain name had been registered or, for that matter, used in bad faith. Moreover, it was not one of the cases where an exception might get the Complainant home (even if it was too late now, because of the finding against it on RLI), such as where the registrant had advance notice of a company merger and got the merged domain name registered before any merged trademark had been registered or acquired ( if a common law trademark). It was a case where the general rule applied, rather than an exception. So the panel found that the Complainant, Issaquah FC, had not proved registration or use in bad faith. The Respondent did not have to win on this element, of course, as it had already won on RLI. But it did win on that element as well.


But there is still more, because of:


REVERSE DOMAIN NAME HIJACKING (RDNH)

The coup de grace was then administered by the Panel, a finding of RDNH against the Complainant, as it must have known its case was doomed because it would not be able to prove registration and use in bad faith.


THE LESSON

We should try to learn a lesson from every case. The lesson here: be honest, so that acting bona fide will emerge naturally. And register the domain name and start to use it legitimately early, and often, to show you are acting bona fide.