Stanley Pace owns over 10,000 generic family names and has been tested on more than one occasion with UDRP Claims against him. I had the pleasure of representing him in the latest claim against BOLTER.COM. The 3 member panel consisting of Fernando Triana, Debrett Lyons and David Einhorn denied the claim. Here are the pertinent parts of the Decision:
Registration and Use in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(1) Circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(2) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(3) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(4) By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his/her website or location or of a product or service on his/her website or location.
The website to which the disputed domain name resolves makes it clear that Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration.
When Complainant offered to buy the disputed domain name, Respondent requested a valuable consideration in excess of out-of-pocket costs directly related to the disputed domain name, as shown in the asking price started at USD$59,999 and ended at USD$99,999. Which Respondent confirms in his Response and his Additional Submission.
Nonetheless, Complainant failed to offer enough evidence to determine that the disputed domain name was also registered in bad faith.
The only evidence filed regarding use by Complainant of its trademark before the disputed domain name registration, are four invoices which can be found in Complainant’s additional submission. Those invoices are for the total amount of USD$90, which is not enough to determine common law rights regarding the trademark or to even allow the Panel to conclude that Respondent knew the trademark when registering the disputed domain name.
Furthermore, Complainant did not provide the Panel with any other element regarding registration in bad faith, such us, a documented previous relationship with Respondent.
Therefore, paragraph 4(a)(iii) of the Policy was not duly proven in the present case in respect of the disputed domain name. Since Complainant has not satisfied paragraph 4(a)(iii) of the Policy there is no need for the Panel to address paragraphs 4(a)(i) and 4(a)(ii) of the Policy .
DECISION
Having not established one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the disputed domain name
Fernando Triana, Esq.
Chair of the Panel
Debrett Lyons, Esq. David Einhorn, Esq.
Co-Panelist Co-Panelist
Dated: April 20, 2015
Thanks for “listening”
Howard Neu, Esq.
The Neu Facebook
Good decision and nicely done Mr. Howard 🙂