Archive for the ‘Reverse Domain Name Hijacking’ category

In a UDRP Case Think About the Evidence Before You Submit It

July 20th, 2010

WIPO ADMINISTRATIVE PANEL DECISION
Eneco BV v. Eneco
Case No. D2010-0548
Decided July 7, 2010
(Domain name in dispute: eneco.com)

Sometimes the other side shoots down your case with evidence they produce.  It happens, and that’s the legal process.

What’s worse, however, is when you, as Complainant submit evidence that you believe makes your case, and yet utterly disproves a necessary element of the UDRP, resulting in the loss of your action.  It’s even worse when the Respondent did not file a reply to the action!

Take as an example the UDRP case of Eneco BV v. Eneco, decided by the WIPO in July, 2010.  As you might guess, the case involves the trademark name “eneco” and the domain name eneco.com.

Complainant Eneco BV filed its trademarks as early at 1994.  Respondent Eneco was a corporation formed in 1991 in Utah, USA.  It appears that the Utah Eneco lost its corporate status for non-renewal in 2008.

Here’s where Eneco BV killed its own case: As said by the Administrative Panel,

“Complainant attached as an annex to the Complaint a copy of the Business Entity Search for Respondent, in which documents from the records of the Utah Department of Commerce disclosed that Respondent’s status had expired on June 6, 2008, for failure to file renewal.”

That gave the Panel a clear legal indication that Eneco (Utah) likely had some legal rights to the name “Eneco” so that was the first nail in Complainant’s coffin which it hammered in, itself.

Then, helpfully, Eneco BV hammered another nail in its coffin:

“Complainant filed as part of its evidence a copy of a Business Entity Search of the State of Utah, Department of Commerce dated April 12, 2010, relating to Respondent, Eneco, Inc. The Business Entity Search shows the Registration Date of Respondent as a corporation was March 6, 1991. The address of Respondent corporation is shown as Salt Lake City, UT. The Business Entity Search shows an individual having the same address as Respondent as the Registered Agent of Respondent. The Business Entity Search shows the status of Respondent corporation as “Expired” for “failure to File Renewal” on June 10, 2008.” (Emphasis added)

Helpfully, the Panel added a couple of nails of its own in Eneco BV’s coffin:

“A search of <eneco.com> on the Internet Archive Wayback Machine at “www.archive.org” provided copies of numerous webpages of Eneco in the period between 2002 and 2008 relating to high-efficiency semiconductor technology for heat-to-electricity converters and solid state heat pumps. Some webpages disclosed the United States Trademark Registration identifier comprised of the letter “R” in a circle. The entry of “eneco” as a search term in the United States Patent and Trademarks Office database disclosed Respondent as the registered owner of United States Trademark Registration Number 1963651 on the Principal Register for the trademark ENECO applied for on September 14, 1993 and registered on March 26, 1996 in relation to licensing of intellectual property rights respecting clean energy.”

So, without further ado, the Panel made its obvious findings:

“The Panel finds that Respondent Eneco, Inc. was registered as a corporation on March 6, 1991 based on the information of the State of Utah, Department of Commerce, Business Entity Search and part of the record in this case. The 1991 corporate registration date receives proximate time support from Respondent’s United States Trade Mark application for ENECO applied for in 1993 in the name of Eneco, Inc. and registered in 1996 in the name of Eneco, Inc.

Respondent having registered a corporation under the name Eneco, Inc. in 1991 and carried on business under that name prior to Complainant’s evidence of use of, application for and registration of its Benelux and other trademarks for or including ENECO was not involved in the abusive registration of the disputed domain name <eneco.com>.

The Panel finds that Complainant has failed to prove that Respondent registered the disputed domain name in bad faith.”

As the burden is on the Complainant to prove all of the elements of the UDRP, so its own evidence killed its case, and lead the Panel to find additional evidence to seal Eneco BV’s fate.

What was left unsaid by the Panel was whether they considered a Reverse Domain Name Hijacking charge against Eneco BV.   Because of the evidence submitted by Eneco BV, it knew or should have known that it could not prove in good faith all of the UDRP elements.  Some panels have taken it upon themselves to make the RDNH finding without prompting from the Respondent.

*   *   *

If you think you need assistance in a domain name UDRP case, whether as the Complainant or the Respondent, please contact us for a free initial consultation.  Even the call is free. 877-789-UDRP (877-789-8377).

No comments »

Posted in Reverse Domain Name Hijacking, UDRP

Are 4-Letter Words Intrinsically Attractive?

July 3rd, 2010

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

If you think you need assistance in a domain name UDRP case, whether as the Complainant or the Respondent, please contact us for a free initial consultation. Even the call is free. 877-789-UDRP (877-789-8377).

No comments »

Posted in Reverse Domain Name Hijacking, UDRP Decision