Email Leakage at Heart of RCC.com UDRP

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Royal Caribbean filed a UDRP against the high value RCC.com domain name. RCC.com is owned by James Booth of BQDN, and the UDRP was won by the domain registrant. Attorney Zak Muscovitch defended the domain registrant. A finding of Reverse Domain Name Hijacking does not appear to have been discussed by the three member panel, which is not all that surprising given the circumstances of this case.

The UDRP decision was published this morning, and it looks like email leakage was at the heart of this dispute. Here’s an excerpt from the complainant’s contention:

“The Complainant notes that it is an overarching goal of the Policy to curb abusive registration of domain names where the registrant seeks to profit from and exploit the trademark of another, asserting that bad faith is evident in the present case. The Complainant states that the website associated with the disputed domain name only offers it for sale and makes no other commercial use, adding that bulk domain purchasers have an affirmative obligation to avoid the registration of trademark-abusive domain names. The Complainant asserts that the Respondent is engaging in a scheme of abusive registration and acquisition of domain names, primarily to profit from and exploit the Complainant’s RCCL mark, citing the correspondence between the Complainant and the Respondent’s broker. The Complainant adds that bad faith is also shown by the Respondent’s configuration of an email server to capture mis-sent emails by the Complainant’s customers and by its holding of such information, which included confidential data, for ransom.”

The panel, in a nod to the legitimate practice of investing in valuable three letter .com domain names, ruled that the registrant did not register the domain name in bad faith. In addition, the panel acknowledged the 2.5 year period of time between when the registrant acquired the domain name and when Royal Caribbean was contacted about a potential acquisition of the domain name.

Here’s an excerpt from the decision:

“The Panel is inclined to favor the Respondent’s case on registration in bad faith, despite the approach of the Respondent’s broker which has at least an appearance of being specifically targeted to the Complainant and its rights. In other circumstances, the nature of such approach might have irrevocably tainted the Respondent’s protestations that it acquired the disputed domain name in good faith. However, on the facts before it, the Panel accepts that the Respondent more probably than not acquired the disputed domain name due to its value as a short, ubiquitous and memorable three-letter string which would be attractive to a wide variety of existing and potential entrants to the marketplace rather than in a bad faith attempt to target one specific rights owner in the form of the Complainant. To a considerable degree, this turns on the limited extent of the uniqueness and fame or well-known nature of the initialism contended for by the Complainant when compared with other actual or possible uses.

The Respondent’s evidence of the ubiquity of the initials “RCC” is compelling and undoubtedly outweighs the Complainant’s evidence relating to the strength of its RCCL initialism. This is not a case where the three letters in question conjure up a particular famous mark in the minds of most people such that knowledge and targeting could reasonably be inferred at the point of registration (see, for example, the panel’s rejection of a complainant’s similar claim that it was commonly known in Europe by the initials “PI”, and that this was comparable to the initialisms for International Business Machines (“IBM”), and Volkswagen (“VW”) (Physik Instrumente GmbH. & Co. v. Stefan Kerner and Jeremy Kerner and Magic Moments Design Limited, WIPO Case No. D2000-1001)). There is insufficient evidence before the Panel in this case for it to find that the Complainant’s unregistered initialism is in any such category of trademark and, even if it is, this would not necessarily mean that the RCCL mark could evoke the same association with the shorter form “RCC” as is found in the disputed domain name.

Furthermore, the Panel accepts that the delay of some two and a half years between the acquisition of the disputed domain name and the broker’s approach to the Complainant, during which time the Respondent engaged with multiple other parties regarding a potential sale of the disputed domain name, is also supportive of the Respondent’s case. The Respondent denies any bad faith motivation whatsoever but also submits that any bad faith which might be apparent in the broker’s approach should not be equated with bad faith intent at the point of registration. The Panel accepts that submission in the circumstances of the present case.

The Panel can well understand the Complainant’s concerns regarding the circumstances of the broker’s approach to it. Even the Respondent candidly recognizes that the actions of his broker precipitated the Complaint in this case. The apparent sharing of confidential personal data of the Complainant’s customers (however stumbled upon) between the Respondent and its broker is something which is likely to have raised substantial concerns within the Complainant’s business, as would the broker’s subsequent tactic of raising the risk of such data going further astray following any sale of the disputed domain name to a third party. These are not actions from which the Respondent is entirely distanced, given that he selected the broker to act as his agent and presumably supplied the material with which it made its approach. While the Respondent attempts to play down the issue, describing his broker as proceeding “indelicately and in an embellished manner” and pursuing “an arguably ill-considered solicitation”, the latter phrase appears to the Panel to be something of an understatement. That said, approaches to potentially interested parties to purchase a domain name which has been registered without intent to target a particular rights owner do not automatically constitute registration and use in bad faith in terms of the Policy, even where the manner of approach is particularly ill-judged.”

I think the last sentence is notable for anyone thinking about turning on a catch-all email and using the same approach to a prospective buyer. The panel called it “particularly ill-judged,” and if circumstances had been different – perhaps a recent acquisition or a name more closely resembling a complainant’s mark – the decision may have been different.

I will keep my eyes on the RCC.com domain name to see if Royal Caribbean ends up buying the domain name from BQDN.

2 COMMENTS

  1. Sorry but implementing a catch-all and then approach TM holders with the fact that you received their emails is a pretty stupid move.. This time the owner got lucky, I guess largely because of Zak’s response.

    Don’t push too hard guys, they’ll probably figure out that they don’t get all their emails rather sooner than later.

  2. To the person who posted a comment with private info: I am not going to publish a “Word on the street” accusation whether it is accurate or not.

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