By: www.DefendMyDomain.com
In the recent domain name dispute decision of C. Crane Company Inc. v. Robbie Crossley (WIPO D2009-0815, August 10, 2009), a single member Panel was faced with a dispute over the domain www.geobulbs.com. Complainant sells radios and LED lighting products branded as GEOBULB and maintains web sites at www.geobulb.com and www.ccrane.com. Respondent had some prior relationship with Complainant, which the Panel was unable to surmise, but which became relevant later in determining the knowledge of Respondent at the time of registration. Complainant has a federal trademark registration and the disputed domain was registered before Complainant’s federal trademark application.
Paragraph 4(a) of the 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; and (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.
In addressing the first element, the Panel quickly found that the disputed domain was confusingly similar to Complainant’s mark, in that it merely was a plural form of the mark. Moving to the second prong, the Panel spent more time reviewing the facts presented by each side. The Panel found Complainant presented a prima facie case and shifted the burden of proof to Respondent. The Panel explained that Respondent’s use of the domain was done in two ways. First the domain was redirected to Complainant’s web site. The Panel found Respondent intended this use to be temporary and thus not legitimate.
Respondent’s second use of the domain was that of a comparison site. Respondent argued the site was entirely non commercial with no products being offered for sale. However, in emails exchanged between the parties, Respondent offered to sell the domain to Complainant and noted that the decrease in recent sales by Complainant should help Complainant to determine how much the domain is worth. The Panel used this information and found as follows:
In this context, even if no products were actually sold through the disputed domain name, the “comparison site” was commercial – a means to get a higher price from sale of the disputed domain name or otherwise acquire (to use Respondent’s phrase) “something beneficial for . . . myself” – and not legitimate for purposes of paragraph 4(a)(ii) of the Policy.
Ultimately, the Panel found that Respondent lacked any rights or legitimate interests. Moving to the last element, bad faith, the Panel addressed Respondent’s argument that a domain registered prior to acquisition of trademark rights could not be in bad faith. The Panel explained however, the WIPO consensus view on an exception to that general concept.
“However: In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This often occurs after a merger between two companies, before the new trademark rights can arise, or when the respondent is aware of the complainant’s potential rights, and registers the domain name to take advantage of any rights that may arise from the complainant’s enterprises.” (WIPO Overview Paragraph 3.1)
The Panel found that since Respondent knew about Complainant’s mark prior to registration, this was sufficient to find bad faith. Ultimately, the Panel found that Complainant satisfied all three elements and ordered the domain be TRANSFERRED.
