OATH, INC., successor of interest to YAHOO! filed a UDRP Action against our client for the domain name YMOBILE.COM at the FORUM. In the case of Oath Inc. v. Mira Hold / Mira Holdings, Inc, FA1908001858330, decided October 8th, 2019, in a split decision, the panel Denied the Complaint finding that our client had Rights or Legitimate Interest in the Domain and that it was not registered or used in “Bad Faith.”
YAHOO! has registered trademarks for Y and Y! in the U.S., but its only trademark for Y MOBILE is in Japan. With a dissent from Panelist Steve Levy, who rarely, if ever, finds for the Respondent, Panelists Hon. Karl V. Fink (Number 5 on my All-Time Panelist List) and Hon. Neil Brown (Number 2 on my All_Time Panelist List) denied the Complaint.
“The Panel finds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See High Adventure Ministries v. JOHN TAYLOE / VOICE OF HOPE, FA 1737678 (Forum Aug. 9, 2017) (holding that a complainant’s failure to satisfactorily meet its burden suggests respondent has rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also JJ206, LLC v. Erin Hackney, FA 1629288 (Forum Aug. 25, 2015) (finding that a respondent may defeat a complainant’s established case by showing it has made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services).”
“Generic domain name reselling is considered to be a legitimate business so long as it does not appear that the Respondent attempts to target the Complainant’s mark. See Platterz Inc. v. Andrew Melcher, FA 1729887 (Forum June 19, 2017) (holding that “investing in genuinely generic terms, for purpose of resale, is a legitimate business and that the acquisition of domain names consisting of common, dictionary terms for resale can confer rights and legitimate interests upon entrepreneurs who engage in this activity”)”
” Respondent further contends that the disputed domain name’s resolving website makes no mention of Complainant’s Y! mark nor redirects users to Complainant’s competitors. There is no evidence that Respondent is targeting Complaint. Respondent has not mentioned Complainant or attempted to pass itself off as Complainant. A respondent may be found to have registered a domain name in good faith where it is fully comprised of generic terms and does not attempt to capitalize on the fame of a mark”.
The moral of this story is that you CAN win at the FORUM with the right Panel that looks at all of the facts and claims objectively (providing that you pay the extra money for a 3 person panel).
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