A company filed a UDRP against Enpowered.com at the National Arbitration Forum (NAF), and the three member panel ruled in favor of the registrant. The domain name has been owned by a domain investor, and the investor was represented in the UDRP by attorney Zak Muscovitch.
Although the panel did not rule that the filing was a case of Reverse Domain Name Hijacking (RDNH), I think there is a notable excerpt from the UDRP that may be helpful to domain investors responding to future UDRP filings:
“Respondent is in the business of registering, holding, and selling domain names. The Panel finds that this constitutes a bona fide offering of goods or services. Moreover, Respondent is correct that his registration of the domain name pre-dates the U.S. trademark rights on which Complainant bases its Complaint.”
The panel could have simply ruled that the registrant had the domain name prior to the US trademark rights being established by the complainant, and that could have been sufficient. However, the panel went further and acknowedlged that the registrant’s business of domain investing “bona fide offering of goods or services.” UDRP panels do not always give a nod to registrants who hold domain names as investments, so this decision is good to read.
The three panelists who presided over this UDRP were Michael A. Albert, Nicholas J.T. Smith, and Nathalie Dreyfus.
Thanks for that Elliot! I like that excerpt. They got it right. Wish there had been a finding of reverse domain hijacking. They should have known simply based on the trademark date being some time after the registration date.
This dictum has in the case law for years, Eliot.
I wish all UDRP panels relied on case law because the UDRP would be less of a threat to domain investors.
I think it is important to call out the “good” decisions though.
A VERY good read Elliot. Thanks.
Also, I’d be interested, if anything does come up, in hearing anything about legitimately held Domains being sold after someone else in the mean time trademarked same. Pretty sure I know the precedent but you just never know.
As long as the mark is not famous and there is no competing usage of the sold domain, then it couldn’t be considered cybersquatting.