The National Arbitration Forum panels are beginning to catch up with the WIPO panels in finding Reverse Domain Name Hijacking. In Personally Cool Inc. v. Name Administration Inc. (BVI), Claim Number: FA1212001474325, decided by Jonas Gulliksson (Chair), David H. Bernstein and Sir Ian Barker as Panelists, the Complainant owned trademarks on COLD FRONT registered in 2009 and 2011, and had ALSO REGISTERED THE DOMAIN NAME IN 2002!
However, it is interesting to note that the Complainant did not present any arguments that the disputed domain name is confusingly similar or identical to the COLDFRONT mark. It is also interesting to note the the domain name was parked and not developed into a working web site.
The Panel found that “cold front” is a generic word relating to weather. Also, the Panel found that the search terms used on the website linked to the disputed domain name are not related to the Complainant’s trademark or business. Therefore, the Panel found that the Respondent is making a bona fide offering of goods or services under Policy ¶ 4(c)(i), through its use of the disputed domain name to take advantage of the generic nature of the terms of the domain name and by virtue of the fact that it does not take advantage of the trademark value of the Complainant’s mark.
Another interesting factor raised by the Complainant is: “The Complainant argues that the Respondent’s website does not receive much Internet traffic, so is not being used legitimately, but is actually being used to drive up the price of the domain name. The Complainant asserts that the Respondent is attempting to sell the domain name as the first line at the resolving website states “Click here to buy Coldfront.com for your website name.” The Complainant notes that the asking price is $51,000, and that that Complainant has been informed that the registrant will not take less than $20,000. The Complainant also notes that the last hyperlink on the website is for <DomainNameSales.com>. The Complainant asserts that the Respondent’s contentions that there is a secondary market for domain names that is legitimate exceeds the definition of such a market, as two independent appraisers have appraised the domain name at around 17 times less than what the Respondent seeks. ”
Finally, as to the issue raised by John Berryhill on abuse of the process by Complainant, the panel found “In this case, the disputed domain name was registered more than seven years prior to the Complainant’s application for trademark registration for COLDFRONT. Apart from being a trademark of the Complainant and other trademark owners, “cold front” is also a generic word for a weather-related incident. The webpage linked to the disputed domain name has not been used to compete with or tarnish the Complainant’s trademark or business, but to present pay-per-click advertisement within fields unrelated thereto.
The Panel finds that the Complainant had or could easily have obtained knowledge of all these facts before it brought its Complaint to the Forum. Indeed, the Respondent expressly warned Complainant about the frivolous nature of its claims but the Complainant proceeded. It is true that Complainant appeared pro se, without counsel, but that is not an excuse for clear disregard for the limitations of the Policy. Rather, when there are questions about the validity of the claim – and especially where Respondent offered detailed information about why a complaint would have no merit – it is incumbent upon the Complainant to research carefully the validity of its claims, including if necessary consulting with experienced counsel.
Therefore, after considering the submissions in this case the Panel finds that the Complaint was brought in bad faith in an attempt at Reverse Domain Name Hijacking. See Viking Office Products, Inc. v. Natasha Flaherty a/k/a ARS – N6YBV, FA 1383534 (Nat. Arb. Forum May 31, 2011) (“The Panel finds that Complainant knew or should have known that it was unable to prove that Respondent lacks rights or legitimate interests in the <viking.org> domain name and that Respondent registered and is using the disputed domain name in bad faith. Therefore, the Panel finds that that reverse domain name hijacking has occurred.”).
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