In October, a UDRP was filed against Lumos.com at the National Arbitration Forum (NAF). Lumos.com had sold in a NameJet expiry auction the prior year for $22,722. The three member panel ruled on the UDRP today, and not only did the panel rule in favor of the domain registrant, but the panel ruled that it was a case of Reverse Domain Name Hijacking (RDNH). You can read the decision on the NAF website.
The complainant in the UDRP is a company called Lumos Telephone LLC, which does business as Lumos Networks. The company uses the LumosNetworks.com and Lumos.net domain names for its business. Obviously, Lumos.com would be an upgrade for the complainant.
The domain registrant of Lumos.com is a domain name investor. Jason Schaeffer of ESQwire.com represented the domain registrant in this proceeding and picked up the win. In its defense of the domain name, the registrant cited the generic nature of the domain name and the vast number of trademarks:
“The term “lumos” is generic because it has been widely used by third-parties. In addition to the previous owners of the Domain Name, the USPTO has on record 100+ registrations for LUMOS. Further, a Google search returns many hundreds of uses for the term without any connection to Complainant.”
In the discussion about Rights and/or Legitimate Interests, the panel discussed the complainant’s contention about the Lumos term and its trademark application:
“Complainant contends that the term “lumos” is not generic or descriptive. It points out that during “the registration process the USPTO never issued an office action or other refusal to register the Lumos Mark on the ground that ‘Lumos’ was descriptive or generic.” It contends that this silence makes perfect sense given that the term is not found in the dictionary. Further, Complaint’s Mark has become incontestable, and under US trademark law (both parties being US residents) the issue of descriptiveness cannot now be raised.
Neither argument is persuasive. The USPTO application process occurs in a wholly different environment with its own set of rules, requirements, goals, and incentives. Whereas it is impossible to say that events occurring during the prosecution process or determinations therein made could never be relevant, the Panel does not believe the purported silence of the USPTO on this issue is relevant to this case. The same is true about incontestability. The incontestability of any particular mark does not address its distinctiveness or wide-spread use by others in the market. The greater the number of users of a particular sign, the lesser its strength. It is in this environment that a respondent’s acquisition in connection with its domain name business is to be considered.
As many UDRP panels have done recently, this panel again reaffirmed the business model of domain investing:
Respondent has demonstrated that she acquired the Disputed Domain Name ‘in connection with a bona fide offering of goods or service”, paragraph 4(c)(i) of the Policy. Under these facts the Panel finds that Respondent has a legitimate interest in respect to the Disputed Domain Name. See Platterz Inc. v. Andrew Melcher, FA 1729887 (Forum June 19, 2017) (holding that “investing in genuinely generic terms, for purpose of resale, is a legitimate business and that the acquisition of domain names consisting of common, dictionary terms for resale can confer rights and legitimate interests upon entrepreneurs who engage in this activity.”). See X6D Limited v. Telepathy, Inc., Case No. D2010-1519 (Nov. 16, 2010) (given “the commercial value of descriptive or generic domain names it has become a business model to register and sell such domain names to the highest potential bidder.”); also Audiopoint, Inc. v. eCorp, D2001-0509 (WIPO June 14, 2001)(“speculation in domain names . . . may itself constitute a bona fide activity under paragraph 4(c)(i)”); see also Incorp Services, Inc. v. RareNames, WebReg, 559911 (Forum Nov. 10, 2005)(“selling domain names consisting of generic or descriptive terms is a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)”). See also General Machine Products Company, Inc. v. Prime Domains (a/k/a Telepathy, Inc.), FA92531 (Forum Mar. 16, 2000)(finding that Respondent established legitimate interests in selling generic and descriptive domain names).
I think this was the right decision and a good call on RDNH.
