A company called Tox Pressotechnik GmbH & Co. KG from Germany filed a UDRP against the valuable Tox.com domain name. The UDRP was filed at the World Intellectual Property Organization (case number D2022-3270). The three member panel published its decision today – a finding of Reverse Domain Name Hijacking (RDNH). In this case, the domain registrant was represented by Cylaw Solutions and the complainant was represented by Otten, Roth, Dobler & Partner GmbH.
Before filing the UDRP, the complainant apparently offered to buy Tox.com for $24,000 USD. The domain registrant reportedly sent a number of comparable three letter .com domain name sales with sale prices ranging from $140,000 to $1.5 million USD. In its decision, this panel once again backed a company’s right to invest in domain names. Here’s an excerpt from the discussion about rights or legitimate interests in the domain name:
“For a respondent to have rights or legitimate interests in a domain name comprising an acronym, the respondent’s evidence supporting its explanation for its registration (and any use) of the domain name should indicate a credible and legitimate intent which does not capitalize on the reputation and goodwill inherent in the complainant’s mark.”
The Panel finds the Declaration of Ms. Greenberg plausible concerning the Respondent’s business model and its practice of registering short domain names in 2001 based on dictionary terms or acronyms, including the Domain Name, for investment and potential website development. The Complainant has not offered evidence indicating the likelihood that the Respondent nevertheless would be aware of the Complainant or its mark for industrial machinery until the Complainant offered to purchase the Domain Name 20 years later. Thus, on balance, the Panel finds that the Respondent has established a legitimate interest in investing in a short domain name, one that also corresponds to a common prefix and suffix and abbreviation found in English dictionaries and used in the medical field.
When responding to this UDRP, the domain registrant made it clear that it invested in valuable domain names like dictionary word .com and 3 letter .com domain names. It shared that the company owns other 3 letter .com and dictionary .com domain names as investments. By doing so, it made it clear that it owns Tox.com because of its inherent value as a 3 letter one word .com domain name rather than because of the complainant’s trademarks. Here’s what the panel wrote about that:
“Here, the Complainant’s mark also corresponds to a dictionary term; the Complainant has not established its widespread reputation in 2001; the Respondent was not concealed and has filed a full Response supported by a Declaration from a person with contemporaneous knowledge; and the Respondent offers plausible, good-faith uses for the Domain Name consistent with its business model for similar short domain names. In the “totality of the circumstances” (id.), this is not a good record for applying the passive holding doctrine of Nuclear Marshmallows and its progeny.”
The panel went on to rule RDNH. Here’s an excerpt from the decision:
“The three-letter Domain Name corresponds to a dictionary term and was registered more than 21 years ago. The bare-bones Complaint does not establish that the Complainant’s mark had
achieved widespread recognition by that time and was uniquely associated with the Complainant. It does not come close to establishing the probability that the Respondent “must have been” aware that the mark was associated with a manufacturer of sheet-metal joining tools and chose to invest in the three-letter Domain Name – and hold onto it for more than two decades – in the hope that the manufacturer would pay a large sum for the Domain Name.
The Complaint makes no serious effort to confront these obvious issues, and it throws in a reference to the passive holding doctrine without addressing the conditions laid down in Nuclear Marshmallows and following decisions for finding bad faith under that doctrine, such as establishing the fame of the mark, the lack of a Response, or the absence of plausible, legitimate reasons for selecting the disputed domain name. The Complainant focuses on the fact that the Respondent declined an offer for the Domain Name for USD 24,000, but this is unsurprising for a three-letter “.com” domain name.”
This was a well-reasoned decision and the domain registrant will get to keep its valuable asset.