RedFig.com UDRP is a Nice Win for Investor

A UDRP was filed against the RedFig.com domain name at the National Arbitration Forum (NAF). The complainant in the UDRP is a company called Redfig LLC, and the respondent is a domain investor who was represented by attorney John Berryhill. The decision was published this morning, and the registrant prevailed and will retain the domain name.

In its argument, the complainant tried to convince the panel the domain name was being used in bad faith because it was listed for sale for more than the registration cost of a domain name:

“Respondent registered and uses the domain name in bad faith. The Domain Name is listed for sale on a third-party site for a sum which is well in excess of the cost of purchasing a domain name from a registrar.”

That didn’t fly with the panel.

As a domain investor, I believe a domain name like RedFig.com is generic. A Google image search of the “red fig” phrase shows photos of red figs rather than a brand logo or other images related to the complainant. In fact, even the sponsored shopping images are related to products featuring red figs rather than being related to products or services from the complainant.

In its decision, the panel only discussed the fact that the domain registrant did not register and/or use the domain name in bad faith. The timing of the acquisition was explained by the fact that it was acquired in an expiry auction rather than due to any consideration involving the complainant. In addition, the panel discussed how the domain name was similar in nature to other domain names owned by the registrant. This was notable because it showed the registrant did not target the complainant specifically but acquires generic domain names like this one as a business.

Here’s an excerpt from the discussion about bad faith registration and usage:

“Respondent provides information and a clear explanation about when it acquired the Domain Name and the reason it acquired the Domain Name, i.e., based on it becoming available after a recent expiration. It also provides evidence supporting the claimed good faith reason, namely that the Domain Name is completely consistent with the other descriptive domain names held by the Respondent. The Panel is not satisfied that Respondent entertained bad faith intentions regarding the REDFIG mark at the time of acquisition because there is no evidence establishing that it was aware of Complainant or any rights in the REDFIG mark at the time and a clear and supported alternative explanation for the registration.

Complainant has thus failed to satisfy its burden to demonstrate, on a preponderance of the evidence, that the Domain Name was registered in bad faith by the Respondent; i.e. registered with awareness of the Complainant and mal intent instead of being registered because it consisted of a two-word descriptive term. There is no evidence that Respondent has violated any of the factors listed in Policy ¶ 4(b) or engaged in any conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii).

As Complainant cannot prove registration in bad faith per Policy ¶ 4(a)(iii), Respondent’s use of the Domain Name is immaterial, as the Policy requires a showing of bad faith registration and use. See Platterz v. Andrew Melcher, FA 1729887 (Forum June 19, 2017) (“Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.”). The fact that Respondent is seeking to sell the Domain Name does not change the fact that Complainant has failed to establish that the Domain Name was registered in bad faith, a requirement of the Policy.”

This UDRP was adjudicated by a three member panel with Steven M. Levy, Professor David E. Sorkin, and Nicholas J.T. Smith (Chair Panelist).