A Mexican company called Grupo Nacional Provincial, S.A. filed a UDRP against the valuable GNP.com domain name, which is owned by a domain investor. The decision was distributed today, and the UDRP complaint was denied by a three member WIPO panel. The domain registrant was represented by attorney John Berryhill.
Ordinarily, a domain registrant has a pretty strong chance of winning a UDRP against a three letter .com domain name unless there are seriously mitigating circumstances. For instance, if a domain registrant parks a LLL.com domain name and it shows advertising that infringes on the trademark of a company that utilizes the three letters as its branding, it can be difficult to convince a panel the domain name hasn’t been used in bad faith. It is not an impossible task, but it may make the UDRP more difficult to defend.
In the case of GNP.com, the complainant submitted a piece of evidence that alleged the domain name was used to display pay per click advertising links that infringed on its trademark. Through its counsel, the respondent declared that the domain name was not intentionally used for advertising links. I don’t see any screenshots or archived records showing PPC links, so if it happened it must have been short-lived. At present, GNP.com utilizes a “for sale” landing page within the Namerific.com website.
In addition to the complaint’s claim about the pay per click advertising, the complainant also mentioned the usage of a Whois privacy service as a reason for the panel to find that the domain name was registered in bad faith. The panel shot this argument down because the domain registrant “is clearly operating a legitimate business.”
In the decision, the panel lays out some strong language in defense of domain investor rights to own domain names like this one. Here are a few excerpts from the decision that should be noted by domain investors:
“The Panel considers a domain name comprising a three-letter combination could readily be purchased for its inherent value as a general acronym and sees no clear evidence on the record in this case to suggest that was not the case. As a general rule it is likely that in such cases the registration will be for bona fide purposes. That would seem to be so as a matter of common sense and it is supported by previous UDRP decisions dating from the very beginning of the UDRP.”
“The Panel accepts (and the Respondent concedes) that the right to register such acronyms cannot be unlimited. Knowing of a complainant’s trademark, registering a domain name to copy the trademark or using it to trade off it or to target the trademark owner or act inappropriately towards it must put the registrant in a different position and put at risk its claim to have a right or legitimate interest in the domain name. But in the absence of such factors, and none are present in this case (as to which see further below) the registrant has as much right as anyone else to use expressions such as acronyms, generic, dictionary words or other domain names made up from a small number of letters.”
“The Panel considers that is the case here – the Respondent has a legitimate interest in marketing domain names together with custom designed logos when those names have been chosen for their generic nature and do not seek to capitalize on the Complainant’s trademark.”
“Whilst the Panel’s finding above is sufficient to enable a conclusion to be reached in relation to this Complaint, the Panel also finds that there is no evidence to suggest that the Disputed Domain Name has been registered and used in bad faith. It is abundantly clear to the Panel that the Respondent purchased the Disputed Domain Name because of its value as a generic three-letter acronym and not because of any connection with the Complainant. The Panel sees no reason to disbelieve the Respondent when he says he had never heard of the Complainant and the contemporaneous correspondence corroborates that fact. The Respondent offering the Disputed Domain Name for sale as part of his “namerific” business is a bona fide business activity and does not amount to bad faith use.”
“So far as the other factors relied upon by the Complainant are concerned use of a privacy service may or may not be a relevant factor in determining bad faith. As noted at section 3.6 of WIPO Overview 3.0: “There are recognized legitimate uses of privacy and proxy registration services; the circumstances in which such services are used, including whether the respondent is operating a commercial and trademark-abusive website, can however impact a panel’s assessment of bad faith”. In the present case the Respondent is clearly operating a legitimate business and is entitled to use a privacy service if he wishes – it does not support a finding of bad faith.”
“So far as the parking page relied upon by the Complainant is concerned it is unclear exactly when and why that page was displayed, because the evidence submitted by the said Complainant does not contain any reference to a particular, certain date, and therefore the probative value of this evidence is low. In any event the Panel doubts that in circumstances where a domain name has been legitimately acquired for its generic properties, linking that domain name to a parking page which automatically generates links to third party websites based on the generic properties of the domain name is unlikely to amount to bad faith use. The Panel concludes that in this case the parking page in question does not support any finding of bad faith.”
