In August of this year, I reported that a UDRP had been filed against the Picture.com domain name at the World Intellectual Property Organization (WIPO). It is always surprising to see an attempt to take a descriptive one word .com domain name via the UDRP. What was not surprising was when attorney Stevan Lieberman shared that his firm won the UDRP on behalf of the registrant, and the panel ruled that “the Complainant has abused the administrative proceeding and engaged in reverse domain name hijacking.”
In my opinion, as a domain investor who manages a portfolio of one word dictionary .com domain names, it should be nearly impossible to take a one word .com domain name from a registrant via the UDRP. In looking at the case of Picture.com, the panel made the right call here. There was a panelist who dissented to the RDNH decision in the UDRP, but the majority believed it was an abusive filing.
From what I understand, an unnamed domain broker was hired by the former registrant of Picture.com to sell the domain name when the company was closing. The broker contacted the complainant, Picture Organic Clothing, as well as the respondent, James Booth from Booth.com. It would appear that the complainant may have claimed there was some sort of bad faith because the domain name was offered for sale, but in fact, the domain name, at that time, had not been offered to sale by the current registrant who was actually the buyer of the domain name. While this played a role in the decision, the fact that it is such a generic term is what doomed the case.
There are a few sections from the decision I would like to highlight, particularly because the language can be cited in future UDRP cases involving valuable dictionary .com domain names.
From the “Rights or Legitimate Interests” section of the decision:
“Given that “picture” is a common dictionary word and there is evidence in the record that “picture” is used by numerous unrelated parties in connection with a variety of goods and services, the fact that Respondent has listed the disputed domain name for sale without more does not in and of itself prove a lack of legitimate interest. Complainant, here, has failed to provide any evidence that would establish or suggest that Respondent registered the disputed domain name in order to profit from the disputed domain name at the expense of Complainant as opposed to registering and attempting to sell a generic domain name as a valuable asset.”
From the “Registered and Used in Bad Faith” section of the decision:
“As already noted above, the evidence before the Panel shows that the domain name broker was acting on behalf of a prior owner of the disputed domain name in August 2019. Moreover, there is no evidence in the record, and none has been provided by Complainant, that the domain name broker and Respondent are somehow connected or acting in concert. Consequently, whatever happened in August 2019 is irrelevant in determining whether Respondent registered and has used the disputed domain name in bad faith.”
“Complainant’s contention of bad faith registration and use is based solely on a current attempt by Respondent to sell the disputed domain name and Respondent’s lack of use of the disputed domain name for anything else. Such contention, though, ignores the fact that the disputed domain name fully and solely consists of the dictionary term “picture.” The mere act of buying and selling a domain name that fully and solely consists of a dictionary word that may also function as a trademark in connection with certain goods and services does not in and of itself establish bad faith. A domain name that solely and fully consists of a dictionary word likely has an inherent value as a generic domain name that potentially can be exploited legitimately by a registrant as long as it is not done to take advantage of, or to exploit, the trademark rights of another party in the same term. It is thus incumbent on Complainant to provide evidence showing that Respondent registered and is using the disputed domain name not because Respondent did so on account of its generic value, but did so to take advantage of Complainant’s rights in the PICTURE name and mark. Complainant, however, has failed to meet this burden on two grounds.”
First, Complainant has not submitted any evidence regarding its use of the PICTURE mark, the extent of such use, and/or the status, reputation or fame of Complainant’s PICTURE mark. Complainant’s entire Complaint is based on the fact that Complainant owns some registrations for PICTURE in Europe in connection with clothing. While such registrations establish that Complainant enjoys some rights in PICTURE in connection with clothing, they do not in and of themselves say anything regarding the extent of use, status, reputation or fame of Complainant’s claimed PICTURE mark. This failure of evidentiary support is telling given that the word “picture” is a common term and there is evidence that “picture” is likely used by many other parties for a wide variety of good and services. Because Complainant is not everything “picture,” Complainant, at the very least, needed to provide evidence establishing its use of PICTURE and the reputation and fame it enjoys in PICTURE that would make it plausible that Respondent registered the disputed domain name based on such reputation or fame (or its trademark value), and not for its generic nature and value.
Second, Complainant has not established with evidence that Respondent specifically sought to target and exploit Complainant’s rights in the PICTURE mark. Indeed, the record is devoid of any evidence that would show that Respondent acquired the disputed domain name in October 2019 to explicitly target rights Complainant owns in the PICTURE mark for clothing or that Respondent has made use of the disputed domain name with a website that is aimed at goods and services associated with Complainant. See generally WIPO Overview 3.0 at section 2.10 and Domain Name Arbitration, Gerald Levine (2nd Edition) at Section 5.01-D.1.a, pages 326 and 327. Such failure further undermines Complainant’s contention of bad faith registration and use on the basis that Respondent is attempting to sell a generic domain name that likely has a value separate and apart from any trademark value associated with the disputed domain name.
In addition to this, the RDNH section was also interesting. The domain broker’s attorney, who I have learned is John Berryhill, provided evidence proving the domain name had been sold in October of 2019 and that the domain broker and registrant are not related. Based on some contentions, I would think the complaint should have been scrapped, but it was not. Here’s an excerpt from the discussion about RDNH.
“Complainant filed a case regarding a domain name that fully consists of a common dictionary word, and did so without providing any evidence that Respondent registered or used the disputed domain name to target Complainant or to take advantage of Complainant’s claimed rights in PICTURE in connection with Complainant’s clothing products. Indeed, Complainant provided no evidence regarding its use of the PICTURE mark or of the reputation or fame of the PICTURE mark. Instead, Complainant instead relied entirely on the fact that because Respondent is currently offering the disputed domain name for sale, Respondent has no legitimate interest in the disputed domain name and is acting in bad faith. To put it bluntly, Complainant, who was represented by counsel, had ample reason to know its case would fail in a situation in which the disputed domain name consists of a generic term, and where Complainant submitted no evidence regarding the extent of use, reputation or fame of Complainant’s claimed PICTURE mark, and/or showing that Respondent registered and used the disputed domain name to expressly take advantage of Complainant’s claimed rights in PICTURE in connection with clothing products or related accessories.
But what makes this case even more egregious here is that after Complainant filed the Complaint, the Respondent’s identity was disclosed, and the domain name broker named by Complainant objected to being named as a respondent and provided substantial evidence in support of its contention, Complainant continued with a Complaint that still suggested that the domain name broker who had contacted Complainant in August 2019 “could also be” the Respondent. Notably, Complainant provided no evidence that supported that contention or which arguably would show a connection between the broker and the current registrant. Moreover, when the broker, through an attorney, submitted documentary evidence showing that the broker had been acting on behalf of a prior owner, which had owned the disputed domain name since at least 2009, and that the disputed domain name had been sold to Respondent in October 2019, Complainant nevertheless maintained its Complaint with its baseless contentions of bad faith based on the actions of the former owner’s broker. At that point, Complainant knew, or ought to have known, its case was doomed to fail given the underlying facts and, in particular, the generic nature of the disputed domain name and the lack of evidence that Respondent had targeted Complainant or done anything to capitalize on Complainant’s trademark interests in PICTURE in connection with clothing.”
The three member panel that denied the UDRP was Georges Nahitchevansky (Presiding Panelist), Marie-Emmanuelle Haas, and The Hon Neil Brown Q.C. Haas was the panelist who dissented to the RDNH finding.