Here’s an interesting UDRP decision that may ‘evoq’ a response in you…

In 2004, Dynamo.com (a branding company in New York) registered the domain ‘evoq.com’ for a client who was considering branding it’s clients medical and archaeological illustration with the name ‘Evoq.’  Once registered, the domain pointed to a parking page at the registrar, Enom.

evoq Communications AG is a branding company established in Switzerland 2007, and registered the name “evoq” in Class 35 in Switzerland and some other European countries.

evoq Communications attempted to by the domain from Dynamo, but could not reach terms (Dynamo wanted USD$95,000 for the name)

evoq then filed a UDRP action against Dynamo, claiming that Dynamo registered “Evoq” after General Motors announcement that it would call its new concept car “Evoq” and that since Dynamo doesn’t  offer any products or services under the ‘Evoq’ name, Dynamo must have registered the primarily for the purpose of selling, renting or otherwise transferring it to Evoq Communications or others for valuable con$ideration (the $95,000 selling price).

Dynamo pointed out to the panel that GM abandoned its trademark claim (Serial Number 75539604) for the word ‘evoq’ on June 8, 2002.  This is both well before Dynamo registered the domain name for a future in a completely different category. Note, also that Dynamo’s registration of the name came well before evoq communications AG came into existence.

The 3-member Panel found, not surprisingly, that evoq had legitimate interest in the name by virtue of its trademarks. But now we turn to the really interesting parts of the Panel’s decision:

“Some members of the Panel are inclined to conclude that, to prove bad faith registration, the Respondent must have had a bad faith intention with respect to the Complainant’s mark. However, the Panel does not need to reach a definitive conclusion on that issue because, even if bad faith directed at third parties could constitute bad faith for the purpose of this requirement, the Panel does not find the existence of any such bad faith on the evidence in this case. By the time the Domain Name was registered, General Motors had abandoned its interest in the name “Evoq”, at least in the USA; and, even if it had not done so, the Domain Name could have been registered and used in good faith in relation to unconnected products or services (which, Respondent persuasively shows, was its intention at the time it registered the Domain Name). The Panel sees no reason to disbelieve the Respondent’s certified explanation that it registered the Domain Name in good faith in connection with a proposal for a client in the business of medical and archaeological illustration.

“Nor has use of the Domain Name in bad faith been established. It is not disputed that the Domain Name has merely been directed to a holding page with no attempt to profit from or damage the Complainant’s reputation under the name “Evoq”. The Complainant has not shown that its mark is so well-known that passive holding could, in this circumstance, constitute bad faith use. Cf. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Respondent’s willingness to sell the Domain Name for a substantial price to a purchaser who confirmed its intention “to build a new and bona fide trademark in good faith” does not substantiate bad faith. This four-letter “.com” Domain Name may well be sufficiently attractive intrinsically to have justified this price without reference to General Motors’ long-abandoned mark or the Complainant’s newly-formed company.

“The third requirement of the UDRP is not satisfied. The Complaint must therefore be rejected.”

(Emphasis added)

So what we know from this decision is that:

1. There is an open question as to whether a complainant can graft (or bootstrap) some other mark into its own claim for the purposes of showing registration in bad faith, and
2. A four letter name may have an intrinsic value on its own (not connected with some other mark) as to justify a significant selling price.

I note that the decision does not indicate whether Dynamo asked for a finding of Reverse Domain Name Hijacking.  Paragraph 15(e) of the UDRP defines reverse domain name hijacking as the filing of a complaint in bad faith, resulting in the abuse of the UDRP administrative process.

Too bad if Dynamo.com didn’t ask for the RDNH finding, because it would not have been out the realm of possibilities for the panel to make the finding.  Had they, it likely would have been on the timing of the critical events:

1999: Cadillac Evoq mark filed.
2002: Cadillac Evoq mark abandoned.
2004: Dynamo.com registers evoq.com
2007: evoq Communications AG is formed
2007: evoq Communications AG approaches Dynamo.com to buy evoq.com (deal never reached).
2010: evoq Communications AG files UDRP action against Dynamo.com.
2010: WIPO Panel declines to order the requested transfer.

evoq communications AG v. Dynamo.com LLC
Case No. D2010-0538

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