Rayfil Wong v. Domain Admin / HugeDomains.com
Forum claim Number: FA1908001856257
September 20, 2019
Sometimes, those who let their domain name registrations lapse can have them swept up by premium domain name resellers. While unfortunate for the person in question, domain name reselling is a legitimate business, provided that resellers only buy and sell domain names based on their value as generic terms, and don’t directly attack or take advantage of others’ trademarks.
While it may be instinctive to reach for legal recourse immediately, when you notice your domain has been snatched up by someone else, if it is comprised of generic words and there are no registered trademarks or consumer reputation attached to it, the UDRP may present an unclimbable mountain.
This case demonstrates how legitimate domain name reselling can be a bona fide business and is distinct from cybersquatting. If a Respondent can demonstrate that it operates such a business and has not engaged in any behaviour which attacks a Complainant’s trademark, it will be able to defend claims, regardless of whoever previously owned the domain.
The previous owner of the disputed domain name <professorsavings.com>, brought a case to the UDRP after the registration had expired and it had been snapped up by the Respondent, a domain name reseller who owned thousands of domains, several of which included the terms “professor” and “savings.”
Unfortunately for the Complainant, the case began on the back foot, as it held no registered trademarks relevant to the domain name. While it tried to claim common law rights for PROFESSORSAVINGS, the panel remained largely unconvinced, and given its findings in the following two elements, decided it was unnecessary to make a decision on this element.
The crux of this case centred around whether the Respondent bought the trademark for its resale value as a generic term, which has long been regarded to constitute a bona fide offering of goods and services, or instead sought to use it to attack a trademark in which the Complainant may have held rights. Given the weakness of the Complainant’s common law trademark claims, in addition to the domain name being comprised of two generic terms, the Panel concluded it was unlikely Respondent could have knowingly acted in a way that infringed anyone’s trademark rights. It had both a right and a legitimate interest in the domain name in association with its resale value as a generic term. Case closed.
Had the Complainant held strong trademark rights, with a widespread reputation, the Panel would have had to consider whether the Respondent knew or should have known about the trademark rights when it registered the domain name. If this were the case, things might have gone differently.
Nevertheless, it remains that the cheapest, quickest and easiest way to get your domain name back is not to let it lapse in the first place. Businesses, in particular, should have a specific employee whose job it is to keep supervising domain name registrations (and for that matter trademark and all other compliance requirements) and make sure they are all current.
As we see from many cases, it is also wise to have it written into an employee’s contract of employment that if they register domain names, it is not on their own account but is being done on behalf of their employer.