In the first 6 months of 2021, there have been a few very good decisions, but also a number of very bad decisions that I wish to bring to your attention. The year started off with a bad decision from Panelist Nick Gardner in Case #2020-3387, Roehrman v. hu huaigin. The Complainant had a trademark registered for MT KNIVES on January 14, 2020, with an alleged first use in 2011. The Respondent registered the domain mtknives.com October 23, 2017 and had it parked.
As to Rights and Legitimate Interest, the Panelist stated:
“ It is also clear that whilst the Complainant only filed his application for the MT Knives trademark in 2019 he had a well-established and well regarded business making and selling knives branded as “MT Knives” dating back to 2011. The Complainant has filed a body of evidence, which convincingly shows that his knives were highly regarded in specialist circles interested in knives for use in connection with outdoor pursuits with effect from 2012.”
The Complainant was from Missouri, while the Respondent, who responded in Chinese was from China.
“The Respondent asserts correctly that his registration of the Disputed Domain Name predated the Complainant’s registration of the MT Knives trademark. However, the Respondent has provided no explanation of how or why he chose to register the term “mtknives”. He is also silent as to his knowledge of the Complainant or his business at the time the Disputed Domain Name was registered. In those circumstances the Panel does not consider the Respondent has discharged the burden on him to show he has any rights or legitimate interest in the Disputed Domain Name.”
As to Bad Faith registration AND use, the Panelist held:
“In the present circumstances, the distinctive nature of the term “MT Knives”, and the lack of any explanation from the Respondent as to why he registered the Disputed Domain Name lead the Panel to conclude the registration and use was in bad faith.”
So it appears that a domain investor must now EXPLAIN why he registered the domain even though it was registered 2 ½ years before the trademark; he lived in China while the Complainant lived in the U.S. and marketed his product in the U.S..
“The Panel infers the Respondent selected the Disputed Domain Name with knowledge of the Complainant or its products and linked it to a PPC webpage.”
Keeping in mind that the Respondent did not file a formal Response, but sent in an informal communication as follows:
““Hi, If conditions permit, I hope to communicate in Chinese. The trademark of the complainants was registered in January 2020, while my domain name was registered in October 2017 and has been held by me all the time. I think this is a malicious arbitration initiated by the complainants, and I totally do not accept it. And this is not in line with the domain name arbitration elements”.
“The communication also contained some Chinese logograms. The Panel does not understand Chinese but infers that these may simply be a repeat of the English text (and see below as to language).”
So the bottom line is that the Respondent lost the domain due to inferences made by the Panelist rather than following the facts as presented by both parties. Though in my estimation this was a bad decision, I must also commend Nick Gardner for denying 6 other complaints, finding 2 of those Complainants guilty of Reverse Domain Name Hijacking (RDNH), and only transferring 4 other contested cases.
There are more Good and Bad Decisions to come as well as outing the Complainants found guilty of RDNH.
Howard Neu, Esq.
http://neulaw.com.
The Neu Facebook
