Tailwind Management, Inc. v Robert Casselman/Sharbo Inc.
NAF Case: FA 151 100 164 7644
Tailwind provides an interesting discussion on the satisfaction of ‘Registration and Use in Bad Faith’ (4(a)(iii)) which often arises in UDRP decisions. Having easily satisfied the first two criteria, the Complainant in this case failed to meet this third requirement.
Complainant failed – domain name not transferred.
Disputed Domain Name <rentmsnu.com>
The Complainant provides real estate services to Minnesota State University students. The complainant trades under the RENTMSNU trademark.
The Respondent owns a similar business of renting services to Minnesota students, and has a bona fide offering of services which boasts over two years of marketing its product.
The first issue was the failure of ‘mere assertions’. It is common in UDRP disputes for Complainants to accuse their Respondents of bad faith without providing evidence or facts. The Panelist, relying on Starwood Hotels & Resorts Worldwide[1], was adamant that ‘mere assertions of bad faith are insufficient’.
The second issue was the Respondent’s registration of the Domain Name prior to the Complainant’s registration of its trademark. This is a prevalent issue in UDRP cases where Complainants assert that they have a well known trademark, whereas evidence sometimes shows that there was no reason at all for the Respondent to be aware of the Complainant’s existence. This issue was discussed recently The Trimount Company, Inc DBA StinkySocks Hockey v. Eric Sweet/Scribbler’s Club (2015)[2]. Here, the Respondent had registered a ‘confusingly similar’ Domain Name and was selling it for $6500. Although this may have provided evidence of bad faith, the earlier registration of the Respondent’s domain name made it impossible for it to contemplate the ‘Complainant’s then non-existent right’.
Thus, the Panelist in Tailwind decided that the Respondent could not have registered the domain name in bad faith as it ‘pre-dates the trademark registration and non-likelihood of confusion existed when the Domain Name was registered’.
A useful case to cite on bad faith.
[1] FA 406512 (Nat. Arb. Forum Mar. 9, 2005)
[2] FA1511001647849 ( Nat. Arb. Forum, Dec. 30, 2015)