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Excessive Offers to Sell Domain Names: Evidence of Bad Faith or Bona Fide Business Practice?

Not infrequently heard in domain name disputes are cries of shock and gnashing of teeth that domain name holders may lawfully offer their inventory at excessive prices. Take for example TOBAM v. M. Thestrup / Best Identity, D2016-1990 (WIPO November 21, 2016) (<tobam.com>). Respondent accused Complainant of bullying which Complainant denied: “On the contrary, the Respondent abusively fixed a high price for the disputed domain name based on the Complainant’s reputation and not in relation to added value supplied by the Respondent.” Since the trademark postdated the domain name registration by several years there could have been no reputation for Respondent to have taken advantage of. Current reputation is not relevant to a cybersquatting claim.

The rule is that “a person who legitimately owns a domain name is entitled to sell it for as little or as much as he like or thinks he can get away with.” Robin Food B.V. v. Bogdan Mykhaylets, D2016-0264 (WIPO April 1, 2016). The April 1 decision date is no “April fools” joke. Here, the trademark predated the domain name but the mark is on the weak end of the classification scale. As in Tobam, the Panel lucidly explains why in Robin Food Respondent prevails, although the Panel also clarifies the limits: “Nevertheless, high offers of this sort are often telling.” For instance,

If the price sought by a domain name trader for a domain name appears to be way beyond that which appears to be its intrinsic value in the absence of the trade mark rights of others, then a trader should not be surprised if a panel concludes that the real reason why such a high price is being sought is because of that domain name’s potential association with the trade mark rights of others.”

But the issue is not simply that the price “appears to be [way beyond] its intrinsic value.” There must be something else that persuades the Panel that “the real reason” for the high price “is because of that domain name’s potential association with [Complainant’s] trade mark rights.” In the case of Robin Food, there was no “something else” and the complaint was dismissed, in part because “Robin” is a common name and in other part because the parties reside in different jurisdictions (which carries more weight for weak marks than strong) and Complainant offered no proof that Respondent registered the domain name intentionally to take advantage of Complainant’s mark.

What the “something else” can be is illustrated in another case decided by the Robin Panel, Club Jolly Turizm ve Ticaret A.Ş. v. Whois Agent, Whois Privacy Protection Service, Inc. / Fred Millwood, D2016-1256 (WIPO August 12, 2016) (JOLLY INTERNATIONAL TOURS and <jollytour.com>). In this case, Respondent acquired the domain name after Complainant failed to renew it. Earlier cases, one in particular not cited is Red Nacional De Los Ferrocarriles Espanoles v Ox90, D2001-0981 (WIPO November 21, 2001) (“Intentional registration of a domain name by one with obvious reason to believe that it might be the trademarked name of another, combined with an intentional or reckless failure to verify whether that is the case and without making even the most basic inquiry, constitutes registration of that domain name in bad faith.”).

So too in Club Jolly:

The Respondent does not explain exactly how he acquired the Domain Name, but in the absence of any such explanation it is reasonable to infer that the Respondent acquired the Domain Name through some mechanism whereby he knowingly took advantage of that failure to renew and is likely to have undertaken some form of due-diligence as to who had previously owned that Domain Name, how it had been used and the attractive force of the same.

The “something else,” then, includes respondent’s conduct in its post-acquisition dance with complainant. Following the <jollytour.com> registration Respondent thought to himself (my reconstruction of his thought process, “hmmm why don’t I offer this newly minted domain name to potential buyers.” What Respondent actually said was: “The reason i tried to reach to potential buyers [he had a list of buyers with ‘Jolly’ in their business names] is after i start using domain name if someone come and make me an offer for the name then it puts me on a hard situation, so to avoid this i always try to reach out to potential buyers before starting my new projects.”

To the Panel the Respondent’s “explanation makes little sense.” It found that “in the absence of evidence to the contrary” it accepted Complainant’s characterization that

the USD 139,000 price suggested by the Respondent was, in the words of the Complainant, “excessive”. In the absence of any evidence from the Respondent on this point it appears to the Panel to go way beyond its value in the absence of the trade mark rights of others. Accordingly, it is evidence that supports the allegation that the Respondent both registered and held the Domain Name with a view to its sale to the Complainant.

Respondent compounded his credibility problem by sending an email to Complainant that showed him “in a very poor light.” This was so because

[h]e was threatening to attempt to frustrate the operation of the Policy and to act directly contrary to paragraph 8(a) of the Policy by transferring the Domain Name to another person, unless the Complainant agreed within 16 hours to pay him USD 10,000 for the Domain Name…. This is conduct that one would not expect of a legitimate business or legitimate trader in domain names. It suggests that the Respondent is someone who is prepared to act without regard to the rights of others. As such, it is supportive of a finding of bad faith registration and use.

Ordinarily, who approaches whom is a determinative factor in assessing bad faith but even if it were the other way around in Club Jolly (that the Respondent did not approach Complainant) Respondent’s explanations that he would use the domain name for an unexplained project if there were no buyers lacked credibility.

Credibility’s role is significant in these case. It is illustrated with another weak mark but this time it’s positive in Respondent’s favor. In Centroamerica Comercial, Sociedad Anonima de Capital Variable (CAMCO) v. Michael Mann, D2016-1709 (WIPO October 3, 2016) (<dollarcity.com>). the Panel found that “the offer of the disputed domain name for sale in accordance with the Respondent’s general business activities does give rise to a legitimate interest in this case.” Since there is “no targeting of the Complainant’s trademark, the price sought by the Respondent is not of relevance.” In other words, “excessive” or “high price” is not a relevant factor where the proof supports a right or legitimate interest or lack of bad faith proof. If the trademark owner wants the domain name it must pay the sticker price.

Dictionary words as trademarks are on the lower end of protectability and accordingly the evidentiary demands for proof of abusive registration is significantly greater than it would be for well-known or famous marks. While “jolly” on its own is would be weak if claimed as a trademark, “jolly tours” is not.  “Dollar city” is weak; and because there was no evidence of targeting the Panel left the domain name with Respondent.

Some dictionary words that have become associated with goods or services on a world-wide basis (Virgin, Amazon, Easy for example) are transformed into connotative expressions, that is they surmount their common origins. We can think of protectability as extending over a continuum. The low-end is Robin and Dollar City; this could also include Virgin with an appropriately added word, “care” for example as in Virgin Enterprises Limited v. Domain Administrator, D2013-1678 (WIPO December 2, 2013) (<virgincare.com>).

An illustration for trademarks on the high-end, and coincidently showing a truly “excessive” price, is Amazon in Amazon Technologies, Inc. v. Robert Nichols, FA1609001693499 (Forum October 20, 2016) (<amazoncarsandtrucks.com> and <amazonvehicles.com>. Under the right circumstances, here the inclusion of a well-known, even famous mark, “Panels have considered exorbitant offers to sell disputed domain names as a further indication of a lack of a bona fide purpose.”)

The Respondent insisted it had rights and legitimate interests in the domain name on the theory it was in the business of selling automobiles and Amazon wasn’t but the facts told a different story:

Respondent registered the disputed domains within days of widespread auto industry and mainstream press regarding Complainant’s vehicle-related services, just two days after Complainant’s Amazon Vehicles car research destination and automotive community site was first publically [sic] visible, and just hours before the service was officially announced.

Respondent argued in an attempt to avoid disclosure that it had offered to sell the domain names that “[n]egotiations in the litigation context are generally inadmissible.” This is not the consensus of Panels for the UDRP.

Domain names incorporating trademarks that weren’t in existence when registered can price their inventory to reflect market values. Trademarks on the lower end of the classification scale have a more difficult task of establishing their preemptive rights. This sometimes requires proof of reputation in respondent’s jurisdiction or content of respondent’s website; it has to be some proof of intention. Trademarks on the higher end of the classification scale come with established reputations and are in the best position to prevail, although in these disputes respondents are likely to default

Mr. Levine is the author of a treatise on trademarks, domain names, and cybersquatting, Domain Name Arbitration, A Practical Guide to Asserting and Defending Claims of Cybersquatting under the Uniform Domain Name Dispute Resolution Policy. (Legal Corner Press, 2015). Learn more about the book at Legal Corner Press. Available from Amazon and Barnes & Noble.  Ongoing Supplement and Update here.  Supplement and Update through August 2016 will be available in e-book format on October 1, 2016; the print format will be published on December 1, 2016. The Supplement and Update is also available in pdf format free on the publisher’s website, www.legalcornerpress.com/dna-supplement.

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