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Interesting Rdnh On Complainant Did Not Have A Trademark

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Nov 27, 2013
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The Asian Domain Name Dispute Resolution Centre (Kuala Lumpur Office) has given out a ruling of Reverse Domain Name Hijacking ruling on the domain name
The domain name was registered 4 years before the Complainant was even formed.
The opinion has some of the best and strongest Reverse Domain Name Hijacking language that we have ever read and I am sure, this is a must read.

The domain name was registered in 2002.
The Complaintant was first incorporated in June 1, 2006.

Respondent registered the domain name on April 9, 2002 and has continually maintained ownership until the present.
Between 2002 and 2006, Respondent used the Disputed Domain name in connection with Neuronet Systems to promote its “end-of-day” data services.
In June, 2006 Complainant approached Respondent with an interest in using the Disputed Domain.
One of the Complainant’s founders, Benny Yeo entered into an agreement where Respondent would be the exclusive EOD Services Provider to Complainant. In exchange for access to the Domain, Complainant agreed to allow Respondent to be its exclusive EOD Services provider and the parties used the Disputed Domain to promote their mutual business interests.

In November, 2013 the deal failed.

At no time did Respondent agree to sell the Disputed Domain to Complainant, and Complainant did not offer to purchase the Disputed Domain from Respondent.

At no time did Complainant ever have any ownership of the Disputed Domain. Respondent did not register the Disputed Domain with Complainant’s trademark in mind and had no knowledge of Complainant, its web site, its business name or trademark when it registered the Disputed Domain.

Complainant did not exist and its trademark did not exist when Respondent registered the Disputed Domain in 2002.

Indeed, Complainant was not formed until four (4) years after Respondent registered and began using the Disputed Domain.
At all times Respondent has used and will continue to use the Disputed Domain in good faith and in connection with its common descriptive meaning.

Here is the decision that was made by the three member panel:

The registration of domain names, like, that incorporate common descriptive dictionary words, subject to third party use, ipso facto establishes the Respondent’s legitimate interest, provided there is no evidence the respondent targeted the complainant’s trademark.

Indeed, it is settled that the registration of domain names that contain common words are permissible on a first- come, first served basis, and such registration establishes the Respondent’s legitimate interest, provided the domain was not registered with a trademark in mind

The principle of “first come first served” still applies to adjudicate the conflict between a domain name and a later registered trademark and there is simply no evidence here that would provide Complainant with superior rights to the Disputed Domain.

In the instant matter, there is no evidence that the Disputed Domain was registered with Complainant’s trademark in mind because of three (3) undisputed facts, inter-alia,

1)Complainant did not exist in 2002 when Respondent registered the disputed Domain

2)Complainant has never owned or had ownership rights to the disputed Domain;

3)Complainant holds no trademark for generic ASIA CHARTS.

Accordingly, there is no evidence that respondent targeted Complainant in any manner. To the contrary, it is simple implausible that respondent targeted Complainant rather than consciously decided to profit off of a combination of common words used in the English language.

Reverse Domain Name Hijacking

(a) There is absolutely no basis for this claim and Complainant should have known that before filing its Complaint.

It certainly had an obligation to understand the rules and present a valid claim.
Complainant and its counsel are sophisticated and certainly understand the importance of knowing the law and facts before proceeding.
The Complaint is woefully devoid of any facts or information.
Indeed, Complainant has not presented any trademark registration because none exists.
Under the first prong of the Policy, the Complainant cannot show trademark rights just because its corporate name includes “Asia Charts.”

Moreover, the fact that the parties once had an “agreement” to partner on the use of the disputed Domain and for Respondent to point the DNS in exchange for Complainant’s use of Respondent as the exclusive EOD Services provider hardly establishes Complainant’s “rights” to the disputed Domain.
Absent agreement to transfer ownership of the disputed Domain, there is simply no merit to this claim.

On the second two prongs of the Policy the Complainant is also completely devoid of merit on its face, and warrants a finding of reverse domain name hijacking to deter future claims and abuses of the system.
Complainant knew when it filed the Complaint that it could not prove at least 2, if not all 3 of the elements to prevail.

Complainant undoubtedly filed this UDRP to hijack the disputed Domain from its rightful owner and gain exclusive use of an inherently valuable common term and combination of two English words.

Source: thedomains

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