OnOff.com - example of the case where the speculator is too greedy!

[dkny]

http://arbiter.wipo.int/domains/decisions/html/2002/d2002-0925.html

The Respondent has known that its registration would infringe upon the rights of ONOFF AB, being the largest retail chain in consumer electronics in Sweden with 83 retail stores (all displaying the ONOFF name) with an aggregate ONOFF group turnover of SEK 3.300 million in 2001. Since the domain name registration, the Respondent has repeatedly offered to sell the domain name <onoff.com> to the Complainant for excessive sums. The offers have been declined by the Complainant. On March 27, 2002, having been offered by a representative for the Complainant USD 1.500 (i. e. equal to the cost of an administrative proceeding). The Respondent rejected this offer, answering with an unreasonable counter-offer of SEK 60,000 (about USD 6,500). This implies that the Respondent does not have any legitimate interests in respect of the domain names.

 

[dtobias]

It's pretty generic-looking, but apparently it's a famous brand in Sweden, and the respondent lives there himself, so it doesn't look very good for him unless he has a clear noninfringing use.

 

[jberryhilljberryhill is verified member.]

"Regardless, this is a generic term."

While the words "on off" might have a lot of uses, it sometimes is helpful to consider the specific facts of the case. The TM was for the largest electronics retail chain in Sweden. The domain registrant, you'll note, is also Swedish.

Do you think a computer jock in Sweden might have known the name of the largest electronics retail chain in Sweden? Probably. The Panelist does a decent job of pointing out those facts, since maybe someone elsewhere might use "on off" for other things. For example, in Pennsylvania, you'll sometimes see the term "on off" on bar signs, as bars can be licensed for both "on" and "off" premises sales. However, "generic" words in Sweden tend to be in Swedish.

What was he using the domain for, or what had he planned to use it for? Dunno. He never used it, and he didn't respond to the complaint. The only thing the Panelist had to go on was whatever evidence showed the Respondent to have repeatedly tried to sell the domain name to the trademark holder. The context suggests that these were repeated offers directed specifically at the Complainant.

On those facts, the decision does not seem surprising.

 

[Ari GoldbergerAri Goldberger is verified member.]

Perhaps, the better critique is that the registrant's actions were too brazen and risky. I agree with John B. that this is not a bad decision. Registrants should always have a use, or planned use, of a domain name and be careful when approaching potential buyers -- particular when the buyer has a trademark. It is only the sale of common word domains that decisions have held establish the respondent's legitimate interest.

But I am not convinced "on off" is a particularly common or descriptive term. Because the chain is in the electronics business, my opinion is that their use of the term "on off" is suggestive. "On off" is not what the sell (so it's not generic) and I don't think it describes what they sell (so it's not descriptive). It simply creates a mental impression of what they sell (things that turn on and turn off).

When considering whether a respondent has a clear cut right to a domain, I think the fair question is whether or not the domain contains i) a word in the dictionary or one in common usage, ii) a common term, iii) a common industry term; or iv) a descriptive term.

Had the domain name been on.com or off.com, I think the respondent should have prevailed under virtually all circumstances.

.

 

[pljones]

Substitute "ON OFF" with BEST BUY or CIRCUIT CITY. How would it be any different? The decision is not surprising at all, and it shows that registrants risk being found in bad faith by asking for too much.

Another interesting decision released today involves Chateau Mouton Rothschild and 4 domain names. The registrant repeatedly asked for cases of wine (a single case of wine in the end) in exchange for transfer of the domain names to Rothschild. While the offer may have been creative, the Panel found bad faith just the same.

 

[mike]

Originally posted by pljones
Substitute "ON OFF" with BEST BUY or CIRCUIT CITY. How would it be any different? The decision is not surprising at all, and it shows that registrants risk being found in bad faith by asking for too much.

*** Good analogy. I think this Swedish person had unrealistic expectations considering that we know that he knew of the pre-existing trademark of 'On Off' in Sweden. In this case, the domain owner probably would've been well advised to have had a lawyer make the initial and followup contacts to negotiate a price on his behalf with 'on off corp.' for onoff.com.



Another interesting decision released today involves Chateau Mouton Rothschild and 4 domain names. The registrant repeatedly asked for cases of wine (a single case of wine in the end) in exchange for transfer of the domain names to Rothschild. While the offer may have been creative, the Panel found bad faith just the same.

*** Unfortunately, this case feeds the stereotyping of domain owners as cybersquatting pirates. The story will probably morph into 'Pirates Ransom Rothschilds For Rum' or some such nonsense. Oh well, that is what one get's when one devalues their domains to be worth 'a case' of this or that.