Buying a domain name does not constitute a right or legitimate interest in the domain name
It is, of course, well known that a Complainant in a UDRP proceeding must establish a trademark. It is equally well known that the trademark may be a registered one, which it usually is, or a common law or unregistered one.
But if the trademark relied on by the Complainant is a common law or unregistered trademark, it must be proved by evidence satisfactory to the panellist.
It is not enough to assert these issues; they must be proved.
A recent case re-enforces this principle and shows that Complainants sometimes fail in proving this point.
The case was Alexey Kistenev v. Jinsu Kim
Case No. D2008-1870 decided on 2 March 2009 and concerned one of a growing number of valuable domain names formed around the expression Bit Torrent, in this case
The Bit Torrent process as the panellist in this case described it is:
“…software and services designed to help users locate and download torrent files (files based on a peer-to-peer file sharing protocol initially developed by BitTorrent). “
The Complainant claimed that it owned another domain name,
Not so, said the panellist.
“ The Complainant argues that it owns and has used the domain name
So the claim failed because the Complainant could not prove the first of the 3 UDRP elements.
Goodbye $17, 500.
The panel went on to consider the other 2 UDRP elements.
The Respondent had claimed that he had a right or legitimate interest in the domain name because he had bought it,
Not so, said the panellist:
“The Respondent’s assertion that he has a right or legitimate interest in the disputed domain name because he paid USD17,500 for it in an auction is not particularly relevant. Domain names are often traded and auctioned off for profit depending on the amount of traffic associated with it, and it is often the case that domain names that are confusingly similar to an already operating domain name or existing trademark fetch a higher price among cybersquatters and domain name traders.”
There would also have been a finding of bad faith against the Respondent.
Thus, although the Respondent failed on the second and third elements, the Complaint was denied as the Complainant had failed on the first element.
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