In the recent decision of Amy’s Orchids v. EIC (WIPO D2009-0466, June 8, 2009) a single member Panel was faced with a dispute over four domains, www.amysorchids.com, www.amyorchid.com, www.amyorchids.com, and www.amysorchid.com. Complainant provides fresh orchids from Thailand and utilizes a main web site located at www.amysorchids.com. Respondent, EIC, is a web development company with a web site located at www.eic.net.
Paragraph 4(a) of the ICANN UDRP Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (2) 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 explained some general background facts which proved to be very relevant to the decision. Complainant noted that they hired Respondent for web site design and that they transferred the registration of the domain to Respondent. Respondent noted that Complainant had an outstanding balance from work completed on the web site design and hosting services. Complainant claims to have terminated the agreement and Respondent refused to transfer the domains back.
The Panel reviewed the first element, whether the domain was identical or confusingly similar to Complainant’s mark. The Complainant has a federal trademark registration for AMY’S ORCHIDS since December 2008. The Panel found there was a presumption of ownership and validity in light of the registration and that the domains were either identical or were variations that were confusingly similar.
The Panel moved onto the second prong, whether Respondent had any rights or legitimate interests in the domains. Since Respondent claimed an unpaid balance and refused to re-convey the domains the Panel made the following observations and findings:
The Panel finds the dicta of Map Supply v. On-line Colour Graphics, FA0096332 persuasive: “The Respondent[‘s] argument does raise the interesting question whether an unpaid web designer once given control over a domain name by the client can retain it as a security for payment. In my view, this may be so. The law may recognize some sort of lien or charge against a domain name. To assert such a claim is to assert a legitimate interest. On that assumption, this could be a dispute to be decided by traditional means – as it would fall outside the scope of this tribunal.”
As a result the Panel further explained “To conclusively decide whether Respondent has a legitimate interest, the question of whether a lien or charge against a domain name can be made in this circumstance must be answered. That determination is beyond the scope of this tribunal.”
Moving to the final prong, bad faith, the Panel noted that Complainant acknowledged giving permission to Respondent to become record owner and had not provided contrary evidence or arguments that the domains were being held in as a lien. Therefore the Panel found that Complainant failed to establish the second and third prong. Ultimately, the Panel DENIED transfer of the disputed domains.
