In an important case under the relatively new Uniform Rapid suspension System, Examiner Douglas Isenberg, denied the complaint even though the Respondent was in default and did not file a response.
In
, (I love that name), complaint was brought against the Registrant of BAUR.XYZ. The Examiner stated that even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the three elements to obtain an order that a domain name should be suspended.
In this case, “the Registrant is the owner of 123 other domains, most of them being third parties’ trademarks the Registrant has no legitimate rights or interests to. It is well established that the registration of an excessive amount of domains including third parties’ trademarks is indicative for bad faith.”
The Examiner went on to hold: “As the Complaint makes clear, the Disputed Domain Name is not being used in connection with an active website. While Complainant correctly observes that such passive holding of a domain name can, under certain circumstances, nevertheless constitute bad faith, those circumstances do not appear to be applicable here. For example, the BAUR trademark registration on which Complainant relies was only registered on January 24, 2013 and, unlike in other URS determinations involving passive holding, there is no evidence in the record that the trademark is “well known worldwide.”… Further, a Google search indicates that the BAUR trademark is used by many entities other than Complainant, including in connection with electrical power distribution systems, a restaurant and a theater. As a result, the “failure to establish in the record that the relevant trademark is exclusively or most commonly associated with Complainant plus the absence of any evidence that the domain name is currently being used in a manner that is exclusively or strongly associated with that trademark – do not convince this Examiner by clear and convincing evidence that the Registrant has no legitimate right or interest to the domain name or that the domain was registered and is being used in bad faith.” Heartland Payment Systems, Inc. v. Whois Privacy Protection Service, Inc.; Kyle Ramsey, NAF Claim No. 1547394.
This is certainly a step in the right direction in dealing with a URS Claim.
Thanks for “listening”
Howard
The Neu Facebook
