ICANN just closed its comment period related to an ongoing analysis of the effectiveness of the UDRP, and the ICA submitted a well-reasoned comment. With that in mind, I want to highlight a UDRP decision that was just published. The UDRP was filed against a valuable 4 letter brandable type of domain name that can be pronounced and is also an acronym – Mohu.com.
Mohu.com is registered to a China-based domain registrant who responded to the complaint and requested a finding of Reverse Domain Name Hijacking. The sole panelist, David P. Miranda, Esq., ruled against the respondent, giving this valuable domain name asset to the complainant. In my opinion, based on what I read in the UDRP filing, this decision was wrong and is completely unfair to the registrant.
According to the decision, here’s some background information about the domain registrant (the bolded emphasis was added by me):
“Respondent, Feng Wenjia, established the Henan Xinyifu Technology Co., Ltd. and Henan Mohuili Information Technology Co., Ltd. companies, which provide website development and promotion. Respondent has rights in the 魔狐 mark based on registration with the CNIPA (e.g., Reg. No. 57312069, filed June 29, 2021) and the Pinyin for the mark is MOHU. See Resp. Annexes 1 & 6. The domain name is a general word and is not confusingly similar since Respondent and Complainant operate in different fields of business.”
Assuming this information is accurate, it seems pretty obvious why the registrant owns Mohu.com. Mohu seems like a pretty good abbreviation for Mohuili, and the Pinyan term for the trademark is MOHU. Mohu.com is a very good domain name for this business to own.
Later on in the decision, it was reported that “The domain name was acquired by Respondent on June 14, 2021.” In short, the registrant reportedly acquired the generic and valuable Mohu.com domain name on June 14, 2021 and filed for a trademark in China for the MOHU mark on June 29, 2021. To me, this indicates an intent to use the domain name.
In the discussion section of the UDRP, the panelist seems to rely on Whois information for determining whether the registrant is known as Mohu:
“Additionally, lack of permission or authorization to use a mark constitutes a further showing that a respondent is not commonly known by the disputed domain name. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). Here, the WHOIS information lists “FengWenJia” as the registrant and Complainant asserts Respondent is not authorized to use the MOHU mark. See Registrar Verification Email. Thus, Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).”
My interpretation is that the registrant created a company called Mohuili and filed for a trademark with the matching Pinyan term of MOHU shortly after the domain name was acquired. However, the Whois record remained in the name of the founder of the company but did not include the name of the company, so it counted as a strike against the registrant.
There have been a number of times I sold a domain name to someone who had not yet formed a business. The domain name acquisition came first. In fact, yesterday I was trying to buy a domain name from a guy who bought a domain name in 2016 and was preparing to launch a brand matching that domain name. The Whois information was in his name and his other company’s name. People don’t always think of updating Whois information.
I think the fact that a TM application was filed shortly after acquiring a domain name is better evidence of intent to use the domain name than the name on the Whois record.
In addition to the Whois issue, the panelist seems to have taken issue with the fact that the domain name is not being used yet, despite what I believe is a short time frame:
“The inactive holding of a disputed domain name is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”). Thus, Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”
The domain name was acquired much less than a year ago. Perhaps the domain registrant was building a business before launching a website on it. My company has sold a whole lot of domain names that still resolve to the same nameservers as when I owned them. For many or most of these domain names, the buyer is likely building a business behind the scenes.
Maybe a “coming soon” type of landing page would have been acceptable to the panelist? Perhaps this is a lesson for domain registrants who haven’t yet launched their own business on a domain name and don’t want to risk a UDRP loss while working behind the scenes. Put up some sort of coming soon type of page because a TM filing is apparently not good enough evidence.
I also disagree with the panelist’s conclusion in the discussion about registration and usage in bad faith (the bolded emphasis was added by me):
“Complainant argues that Respondent registered and uses the domain name in bad faith because Respondent previously offered the disputed domain name for sale. An offer to sell a disputed domain name in excess of registration costs indicates bad faith under Policy ¶ 4(b)(i), if the respondent intended to make such an offer when registering the disputed domain name. See Retail Royalty Company and AE Direct Co LLC v. Whois Foundation / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin, FA 1821246 (Forum Jan. 13, 2019) (“Respondent lists the disputed domain name for sale for $5,759, which is a price well in excess of out of pocket costs. Such an offering can evince bad faith under Policy ¶ 4(b)(i).”). Complainant provides a screenshot showing the disputed domain name was previously offered for sale and copies of emails indicating a prior owner of domain offered to sell the domain name to Complainant for $25,000. See Compl. Exs. 5 & 7.”
My mind is a bit of a pretzel here. From what I gather, a former registrant offered the domain name for sale to the complainant. The current registrant later acquired the domain name in mid-2021. In this UDRP, the panelist seems to be ruling bad faith based on a former registrant’s attempted sale of the domain name. This makes no sense to me and seems to go against the UDRP guidelines. As far as I can tell, the current registrant did not register and use the domain name in bad faith. A former registrant may have registered and used a domain name in bad faith but the current registrant should not be penalized for it.
Further to the registration and usage in bad faith discussion, the panelist has an issue with the fact that the domain name isn’t being used yet:
“Complainant also argues that Respondent’s bad faith is evidenced by the inactive holding of the disputed domain name. Failure to make active use of a disputed domain name is evidence of bad faith under Policy ¶ 4(a)(iii). See CommScope, Inc. of North Carolina v. Zhuang Yan / WANGYONG, FA 1764026 (Forum Feb. 14, 2018) (“Respondent’s domain names do not have resolving websites. Using a domain name to resolve to an inactive website (or no website at all) indicates bad faith registration and use.”). Complainant provides a screenshot showing the disputed domain name resolves to an error message. See Compl. Ex. 6.”
As I previously wrote, it can take some time to use a domain name.
All in all, in looking at what was presented in this UDRP, I think the panelist made the wrong decision here and it wasn’t really close. A domain registrant is going to lose a valuable 4 letter .com domain name, and it’s not fair.