A UDRP was filed earlier this year against the MagicPlan.com domain name at the National Arbitration Forum, and the decision was published this morning. The UDRP was defended by Ari Goldberger and Jason Schaeffer of ESQWire.com on behalf of the domain owner. In addition to winning the UDRP, the three member panel found that this was a case of Reverse Domain Name Hijacking (RDNH).
The first bit of good language for domain investors that was published in the decision came in the “Rights or Legitimate Interests” section. This discussion centered around the respondent’s business model as a domain investor, and it cited quite a few examples of similar types of domain names owned by the registrant in showing that the complainant’s business was not targeted. This section also referenced other UDRP decisions acknowledging that domain investing is a legitimate business. Here is an excerpt from this section:
“A respondent may register and use a domain name to attract internet traffic based upon the appeal of a commonly used descriptive term, even when it is identical or confusingly similar to a complainant’s registered mark. Johnson & Johnson v. Chad Wright, webQuest.com, Inc., WIPO Case No. 2012-0010, National Trust for Historic Preservation v. Barry Preston, WIPO Case No. 2005-0424.
A key factor with respect to registering generic, descriptive, common word domain names, whether in connection with a domain reselling venture or otherwise, is that the domain names be selected for their value as generic, descriptive, common word names, without targeting a specific trademark, and without commercial gain from the reputation and goodwill associated with the trademark of another. Metro Sportswear Limited v. Vertical Axis, WIPO Case No. 2008-0754, Baccus Gate Corp. v. CKV et al., WIPO Case No. 2008-0321. In this case there is no evidence whatever that Respondent intended to benefit commercially from the reputation and goodwill of Complainant when it registered the Domain Name. Indeed, Respondent registered it some seven years before Complainant even began using its MAGICPLAN mark in commerce, so it could not possibly have done so.”
In the “Registration and Use in Bad Faith” section of the UDRP, there is another excerpt that I think could be helpful to domain investors whose domain names are being threatened:
“As to bad faith use, the resale of descriptive, generic domain names does not prove bad faith. So long as there is no intended targeting of the mark owner, or some level of abuse directed specifically toward that victim, bad faith cannot be found from an offer to sell such a domain name. HP Hood LLC v. hood.com, FA 313566 (Forum Nov 9, 2004).”
In the section after the decision is made in favor of the domain owner, the panel discussed RDNH and concluded that RDNH occurred. The panel made this decision because the domain name was registered seven years before the complainant was using its brand, and the complainant should have known that “it could not possibly prove bad faith registration.” Additionally, the panel wrote “[I]t knew or should have known that its renewal/re-registration argument was universally discredited and would not be accepted by any Panel.” The panel also concluded that the complainant may have tried to buy the domain name previously and the UDRP may have been “an alternative acquisition strategy.”
Although there is no penalty for RDNH, it is still good to see a UDRP panel acknowledge an abusive filing. Because of the UDRP win, the domain name owner will be able to retain the domain name.