In the recent decision of FBomb Clothing c/o Joel Jordan v. Domainly.com (Nat. Arb. Forum 1245522, March 16, 2009), a single member Panel was faced with a dispute over www.fbomb.com. Complainant has operated a sportswear clothing company for extreme outdoor sports since late 2002. Complainant claimed to mistakenly let the domain registration lapse after forgetting to pay the renewal fees. Complainant contends that Respondent immediately registered the disputed domain upon its lapse and parked the page with an offer for sale. Complainant and Respondent then entered into some negotiations to purchase the domain back. Those negotiations fell apart after Respondent demanded additional funds.
UDRP Panels are required to analyze each case by reviewing a three prong element test which includes proving that (1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. The Panel first made some initial findings, which included the following:
Complainant has submitted as evidence of its use of the FBOMB mark the following: its registration of its fictitious business name with the San Diego County Recorder; its California State Seller’s Permit; a sample manufacturer’s invoice; and screenshots of its website resolving from the <fbomb.com> domain name as they appeared in 2002 and 2008. (These screenshots were provided by using the Way Back Maching from InternetArchive.org.) Based upon this evidence of Complainant’s Internet-based business, the Panel concludes that Complainant has established sufficient secondary meaning the FBOMB mark to establish common law rights in the mark pursuant to Policy ¶ 4(a)(i).
Based upon an establishment of trademark rights, the Panel reviewed the first prong and made a quick finding that Complainant had satisfied this element. The Panel Next addressed the second prong, whether the Respondent had any rights or legitimate interests in the domain and made the following observations:
Though Complainant does not argue such, the Panel finds that Respondent is not commonly known by the <fbomb.com> domain name pursuant to Policy ¶ 4(c)(ii) because the WHOIS information identifies Respondent as “Domainly.com,” and Respondent has not asserted otherwise…. According to Complainant, Respondent has used the <fbomb.com> domain name solely to offer it for sale, first generally and later through an auction. The Panel finds that Respondent has not used the <fbomb.com> domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)….Respondent allegedly registered the <fbomb.com> domain name on that same day, and immediately began offering it for sale. The Panel finds that this further evidences Respondent’s lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).
Determining that Respondent did not have any rights or legitimate interests in the domain, the Panel moved onto the last prong, whether Respondent registered the domain in bad faith. The Panel found that “Since Respondent has allegedly not used the <fbomb.com> domain name for any reason other than to offer it for sale, the Panel concludes that Respondent registered the <fbomb.com> domain name primarily for the purpose of selling it.” The Panel also noted that since the domain was immediately registered after it lapsed, this was further evidence that Respondent’s registration was in bad faith.
Ultimately, the Panel found that Complainant satisfied all three elements, and ordered the domain to be TRANSFERRED.
