A UDRP was filed against the Buttkicker.com domain name at the National Arbitration Forum, and the decision was published today. The sole panelist, Michael A. Albert, ruled in favor of the domain registrant and also decided this was an instance of Reverse Domain Name Hijacking (RDNH). The domain name will remain with the registrant.
The UDRP was filed by The Guitammer Company, which operates a business on TheButtkicker.com. The domain registrant and respondent in this UDRP is Herschel Thompson, and he was represented by Roberto Ledesma of Lewis & Lin, LLC.
There were two reasons why the domain registrant was able to defend its registration.
The first reason is the panel found that the respondent haw rights to the domain name because it bought the domain name for a “smoking cessation program.” Here’s an excerpt from the decision regarding the registrant’s rights and legitimate interests in the domain name:
“Respondent argues that it has rights and legitimate interests in the domain name. Under Policy ¶¶ 4(c)(i) and (iii), where words in a disputed domain name can have generic and/or multiple uses or meanings, past panels have found evidence of a bona fide offering of goods or services or legitimate noncommercial or fair use. See Russell & Miller, Inc. v. Dismar Corp., FA 353039 (Forum Dec. 20, 2004) (finding that the respondent used the domain name for a bona fide offering of goods or services, which was established by the respondent’s “longstanding involvement in the ‘sale sign’ market and its use of a descriptive domain name to further its competition in that market”). Furthermore, past panels have found that a Respondent need not be actively using a disputed domain name where it is registered and used pursuant to a right or legitimate interest. See Casual Corner Group, Inc. v. Young, FA 95112 (Forum Aug. 7, 2000) (finding that the respondent has rights and legitimate interests in the domain name even though he has made no use of the website at the time of the complaint); see also Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (finding rights and legitimate interests in the domain name where the respondent sought to develop a bona fide business use for the domain name). Here, Respondent argues that it registered and planned to use the domain name in connection with a smoking cessation program developed by Respondent’s father, and provides multiple documents as evidence, including an expired USPTO application and online description of the program/device. Respondent argues that the domain name aligns with this purpose, as the word “butt” can refer to a cigarette butt, while “kicker” refers to the common phrase of quitting smoking by “kicking” the habit. Therefore the Panel finds that Respondent has rights and legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).”
The other reason the domain registrant won was also the reason the panel ruled it RDNH. The registrant owned the domain name before the complainant existed. Here’s an excerpt from the discussion about this:
“ The Panel notes that Respondent’s registration of the domain name predates Complainant’s first claimed rights in the BUTTKICKER mark. In such circumstances, Complainant generally cannot prove registration in bad faith per Policy ¶ 4(a)(iii), 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.”); see also Faster Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) (“Respondent registered the domain name more than a decade before Complainant introduced the ALTA MOTORS mark in commerce. Respondent therefore could not have entertained bad faith intentions respecting the mark because it could not have contemplated Complainant’s then non-existent rights in [the mark] at the moment the domain name was registered.”).”
In the section about Reverse Domain Name Hijacking, the panel notes that the respondent owned the domain name before the complainant’s trademark:
“The Panel finds that Complainant knew or should have known that it was unable to prove either that Respondent lacks rights or legitimate interests in the domain name or that Respondent registered and is using the disputed domain name in bad faith. The most glaring evidence for this conclusion is that the Domain Name was registered a decade before Complainant’s trademark rights came into existence. It is logically impossible for the registration to have been made with the intent to infringe on trademark rights that did not yet exist. Accordingly, the Panel finds that reverse domain name hijacking has occurred. See Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Forum May 28, 2004) (finding that complainant engaged in reverse domain name hijacking where it used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy”).”
All in all, I think this was a good decision.