Month: August 2014

Ritchey Design, Inc., the complainant in this week’s UDRP decision, sells bicycle components under the RITCHEY brand and holds registrations for the RITCHEY trademark in the US, Canada, and the European Community for bicycle components.

The domain name in dispute is ritchey.com, which was originally registered in 1996 but was only acquired by the respondent in 2007. Prior to the respondent’s ownership of the domain name, its website featured pay-per-click (PPC) links to the complainant and ads to sites of its competitors; however, after the respondent acquired the domain name, those PPC links were removed. Also, the respondent has a history of having “been involved in multiple UDRP proceedings alleging typosquatting”, and the domain name is up for sale.

The panel issued a request for the respondent to disclose any relationship or connection with the original owner of the domain name. The respondent denied any connection, and the panel did not accept the complainant’s argument that the respondent may be lying since it and the prior owner list addresses in Vancouver.

Ultimately, the panel stuck to UDRP precedent that says the facts must be examined as of the time the respondent acquired the domain unless there’s proof that it’s the same as or related to a prior owner of the domain.

The decision states “There are other businesses out there using the “Ritchey” name and many people called “Ritchey” who might be interested in purchasing <ritchey.com> if they started a business. Upon examining the evidence in this case, unfortunately, the Complainant has failed to show that on the balance of probabilities that it was a Ritchey business in the contemplation of the Respondent at the time of the registration or that the Respondent has any link with the bad faith use made of the Domain Name showing knowledge of the RITCHEY trade mark for bicycles before it was acquired by the Respondent.”

Had the complaint been brought before 2007 when the PPC site was clearly related to the complainant and its competitors, this would have been a very different outcome, as it would have been clear that the domain owner, at that time, did intend the domain to relate to the complainant and not some other Ritchey business or family name.

Just as they would to avoid a laches (delay) defense, brand owners should act quickly when they discover a clearly infringing domain since there’s no guarantee that the facts of the situation won’t change if they wait too long.

LYTRO digital camera maker in California goes after a respondent in Australia who claims he registered lytro.com.au for use in his business of manufacturing carbon fibre equipment for competitive rowing. The complainant first contacted the respondent to try and buy the domain name and there was some back-and-forth during which the respondent said it was just a few months away from the launch of its website but, if the complainant “were to make a motivating offer to acquire the domain” it might consider the matter. The complainant replied with more claims of its trademark rights and then asked the respondent to suggest a price. Eventually the respondent stopped replying since it wasn’t interested in selling. In its argument, the complainant pointed out that the respondent said it was 6 months away from launch but 16 months have now passed and the site still hasn’t launched.

The panelist found that the domain name is confusingly similar to the complainant’s LYTRO mark and, since its site still hasn’t launched and it hasn’t provided evidence to support its ongoing intention to launch, the respondent has no rights or legitimate interest in the domain name. However, he then found that the respondent didn’t register the domain name in bad faith since it really did intend to use the domain name for its rowing equipment business (the term LYTRO is supposed to be a play on the words “light” (“lyt”) and “row” (“ro”).

This is a very close case and I’m hard-pressed to say how the complainant’s counsel could have handled it better. Perhaps it could have further investigated the respondent and its business and then advised its client that a negotiated purchase would be the pragmatic way to go. Of course, investigations cost money and maybe that amount could have been added to a purchase offer. Ultimately, this may have been a case of the brand owner wanting to roll the UDRP dice to try and get the domain name at a lower cost than any price it could have negotiated with the respondent.

The disputed domain name in this week’s decision is emoney.com owned by a Mr. Will E. The complainant, Electronic Transaction Systems Corporation, claims to have used the EMONEY trademark for financial services since 1999. Unfortunately, its trademark registrations are in the name of someone else and weren’t filed until some years after respondent created its accused domain name.

The complainant also claims it had common-law rights to the mark but it didn’t submit any evidence beyond the “First Use” date listed in its trademark registrations. The panel found that the complainant failed to satisfy even this preliminary requirement of UDRP policy regarding ownership of prior trademark rights.

The panel also found that the complainant failed to show that the respondent has no rights to or legitimate interest in the domain name. Respondent made bona fide use of the domain name either as part of a business which resells generic domain names, and this was one such domain name, or as the host site for links to third parties offering goods or services linked in some way with electronic monetary matters.

As for bad faith, the three-member panel noted that the name has a dictionary meaning and is rather descriptive when used in relation to financial services. It then pointed out that “at the time of registration Respondent could not have done any meaningful due diligence on the term EMONEY and it would not have discovered Complainant’s USPTO filings.”

Finally, the panel hinted at a laches issue: “Even if Respondent was an astute cybersquatter who spotted the (unproven) public use of the Complainant’s trademark in 1999, fourteen years has since elapsed. In the absence of any compelling physical evidence, this passage of time makes the meaningful assessment of Respondent’s state of mind in 2000 difficult.”

Ultimately, the complaint was denied, but the complainant was spared a worse penalty when the panel said “although Complainant might have better tempered its submissions there has been no attempt at reverse domain name hijacking.”