I want to share an excerpt from a concerning UDRP decision involving the Rufino.com domain name. The UDRP was filed at the National Arbitration Forum (NAF) by Constellation Brands, Inc. (which owns a subsidiary called Ruffino). The three-person panel ruled in favor of the complainant in this UDRP, and the domain name will be transferred unless the domain owner opts to litigate.
What stood out to me in the decision is the section covering Rights or Legitimate Interests in the domain name. From what I am reading, it looks like the complainant argues that domain name parking is passive usage of the domain name, and it seems like the panel agreed with that. Here are the two paragraphs that concern me most (via UDRPSearch.com):
“Complainant asserts that the parked resolving website is evidence that Respondent lacks rights and legitimate interests in the mark. Parking a website continuously is considered a passive use under the policy and is evidence of a lack of legitimate interests in the domain name. See Herbalife Int’l, Inc. v. Farmana, D2005-0765 (WIPO Oct. 3, 2005) (parking of the domain name for many years constitutes no more than a passive use or de facto activity, which activity can reinforce a finding of no legitimate interest). Here, Respondent admits that it has “continuously parked the domain name with a reputable aggregator, , which puts links up to related referenced sites. It is a parked page with links, as on all parked pages, to various other websites.” Complainant has provided screenshots of the resolving website which displays hyperlinks such as “Wine.com,” “Facebook Video App,” and “A Forex”. Furthermore, the website displays a notice that the webpage was “generated by the domain owner using Sedo Domain Parking.” Therefore, the Panel agrees that Respondent lacks a legitimate interest in the disputed domain name.
Next, Complainant argues that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use of the disputed domain name because Respondent has failed to make an active use of the resolving website. As stated above, a parked website constitutes passive use of a domain name. Herbalife Int’l, Inc. v. Farmana, D2005-0765 (WIPO Oct. 3, 2005). Such use cannot be construed as a bona fide offering of goods or services or legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶4(c)(iii).”). Complainant has provided a screenshot of Respondent’s inactive, parked webpage. The Panel agrees that this evidence supports a finding that Respondent has not made a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name under Policy ¶ ¶4(c)(i) or (iii).”
I have been under the impression that UDRP panels consider generating revenue via advertising on parked pages to be a legitimate business model. Sure, a parked domain name may not be used as a standalone business, but that doesn’t mean the owner is not using it legitimately. Even some Fortune 500 companies use domain name parking as a means of earning revenue on their undeveloped domain names.
Another concerning aspect of the Rufino.com UDRP is also found in the same section:
“Additionally, the website displays a message that the domain name may be for sale by its owner and entices Internet users to “BUY THIS DOMAIN”. Parked websites displaying messages that a domain name is for sale is evidence that a respondent lacks rights and legitimate interests in the name. See Twentieth Century Fox Film Corporation v. Diego Ossa, FA1501001602016 (Forum Feb. 26, 2015) (“The Resolving parked page advertises the sale of the domain name with the message ‘Would you like to buy this domain?’ The Panel accepts this offer as demonstrative of Respondent’s willingness to sell the disputed domain name, and finds that such behavior provides additional evidence that Respondent lacks rights or legitimate interests in the disputed domain name.”).”
My perspective is that brand owners should be happy that a desireable domain name is available for sale. There are plenty of massive companies (like Apple and Oracle) that own high value domain names that are not being used and are not available for sale. Isn’t it helpful for a company to see that a domain name can be acquired?
The main reason I could see why this UDRP was awarded to the complainant is this: “the resolving website displays pay-per-click links to Complainant’s competitors and unrelated third parties.” Yes, that is important to keep in mind, but I don’t like that the panel seems to take issue with domain parking in general.
The Rufino.com UDRP decision is concerning to me, and I would imagine we are going to see it cited in future UDRP proceedings.