VDG.com UDRP: Complaint Denied

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A Canadian company called Van der Graaf Inc. filed a UDRP against the three letter VDG.com domain name at the World Intellectual Property Organization. The registrant of the domain name, a domain investment company represented by Wiley Rein LLP, won the UDRP. The panel considered Reverse Domain Name Hijacking (RDNH), but that was denied. The registrant will retain the domain name.

The decision seems to be the right one, especially considering it is a valuable LLL.com domain name and also considering there are quite a few businesses and organizations that use the VDG acronym/initials in their branding. I wish the decision had stronger language about the ability for an investor to rightfully own a three letter .com domain name, but I suppose a win is a win and it doesn’t really matter all that much at the end of the day.

Here’s an excerpt from the decision containing the discussion about why the registrant prevails in the UDRP, particularly focused on the aspect of the domain name being registered and used in bad faith:

“The Complainant contends that the Respondent acquired the disputed domain name on April 10, 2018 targeting the Complainant’s VDG trademark and for the purpose of selling the disputed domain name to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name. According to the Complainant, the Respondent acquired the disputed domain name only after the Complainant’s trademark applications for VDG were filed in Canada, the United States, and the European Union, and after these applications were all published by February 5, 2018.

The Respondent maintains that it is Lowcrest Marketing Ltd. d/b/a Dubai Domains, and that it paid 14,600 US dollars to acquire the disputed domain name on December 22, 2017. The Respondent further submits that it acquired the disputed domain name for its value as a three letter “.com” domain name for possible resale. It also points out that it could not have registered the disputed domain name with knowledge that it corresponded to the Complainant’s VDG trademark and with the intent to sell it to the Complainant, because the Complainant did not have rights in the VDG trademark when the Respondent registered the disputed domain name. The Respondent also denies that it has used the disputed domain name to target the Complainant.

The Panel has reviewed the evidence in the case file and has reached the conclusions that follow. The Respondent has submitted evidence that Mr. Robert Kalfayan has paid to Afternic an amount equal to the purchase price for the disputed domain name, reflected in the Afternic purchase receipt dated December 22, 2017. The Respondent has also submitted a printout of an email control panel, which shows that one and the same entity controls the email addresses that are reflected in the Afternic purchase receipt for the disputed domain name dated December 22, 2017, the January 7, 2018 WhoIs record for the disputed domain name, and the current WhoIs record for it provided by the Registrar. This common control over the email addresses related to the registrant of the disputed domain name at various points in time after December 22, 2017 supports a finding that the entity controlling these email addresses has also maintained its control over the disputed domain name for the whole period from that date until now. This conclusion is supported by the statement of the Registrar that the Respondent was already the owner of the disputed domain name when on April 10, 2018 it transferred its registration from the former registrar, GoDaddy.

As summarized in section 3.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where the respondent provides satisfactory evidence of an unbroken chain of possession of the disputed domain name, panels typically would not treat formal changes or updates to registrant contact information as a new registration. In view of this, the Panel is prepared to accept that the disputed domain name came under the control of the Respondent or of the entity controlling the Respondent on December 22, 2017, and that the changes in the registrant contact information in respect of the disputed domain name that were made after that date did not reflect a transfer of control to an unrelated entity and should not be regarded as a new registration.

The Complainant’s European Union trademark application for VDG was filed on January 12, 2018 and published on February 5, 2018, and the trademark was registered on May 14, 2018. The Complainant’s trademark applications for VDG in Canada and in the United States were filed on January 10, 2018.

As summarized in section 3.8.1 of the WIPO Overview 3.0, where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent. As an exception to this general proposition, in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s unregistered or trademark rights, panels have been prepared to find that the respondent acted in bad faith. Such scenarios include registration of a domain name shortly before or after announcement of a corporate merger, further to the respondent’s insider knowledge, further to significant media attention, or following the complainant’s filing of a trademark application.

The Panel does not find any of these exceptions to be present in this dispute. The Complainant does not allege that the Respondent had insider knowledge of the Complainant, and has not provided evidence that the adoption by the Complainant of the VDG trademark was publicized in the media prior to December 22, 2017. The two photos from a trade exhibition in January 2018 submitted by the Complainant do not demonstrate that the VDG trademark has achieved a secondary meaning associated with the Complainant before December 22, 2017, and the Complainant has not provided evidence that the Respondent had knowledge of the Complainant prior to the same date. The Complainant itself states that it commenced using its VDG trademark in the United States only on January 30, 2018.

In view of the above, the Panel sees no reasons to accept that the Respondent had knowledge of the Complainant as of December 22, 2017, and that it registered the disputed domain name targeting the Complainant’s VDG trademark. The Respondent’s allegation that the disputed domain name is attractive and has a significant value is not denied by the Complainant, and in the circumstances of this case this appears as a credible explanation for the acquisition of the disputed domain name by the Respondent. The Complainant does not contend that the communications between the Parties in respect of the possible sale of the disputed domain name were initiated by the Respondent, and the webpage to which the disputed domain name redirects contains only an invitation to the general public to submit offers for the purchase of the disputed domain name. The case file contains no evidence that the Respondent has somehow targeted the Complainant with its actions after the registration of the disputed domain name.”

You can have a look at the full decision on the WIPO website to read more about the UDRP filing and learn about why the panel decided to not rule RDNH in this proceeding.

1 COMMENT

  1. Trademark law is very confusing. If VDG was offered in Afternic and the owner of the trademark was intend to use VDG as a brand, so why didn’t they tried to buy the domain from Afternic? It seem that feeling UDRP is already known as a cheaper way to get a valuable domain. I see the trademark law has a hole for RDNH. If you want a domain name but the budget is not available, just wait some one else buying the domain and you can fill an UDRP, so you will get it for a cheap price. That could be filling UDRP in a bad intention.

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