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Noteworthy Domain Name Decisions for 2018

Noteworthy Domain Name Decisions is a running collection of annual decisions that taken together provide insight into the jurisprudence applied in UDRP disputes. More detailed analytical discussions of decisions can be found in recent and archived essays posted on the website and republished on circleid.com. Noteworthy Domain Decisions for 2015 can be found here, 2016 can be found here, and 2017 can be found here.

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) and Supplement and Update (2017). Learn more about the treatise and Supplement at Legal Corner Press. Available from Amazon and Barnes & Noble.  Review and notices of the book here.  An Updated, Revised, and Enlarged Second Edition of the treatise with Index is scheduled for publication August/September 2018.  Important Note: If you purchased the First Edition of the treatise you can obtain a copy of the Second Edition 50% off the retail price by contacting Legal Corner Press or Mr. Levine.

Voys B.V., Voys United B.V. v. Thomas Zou, D2017-2136 (WIPO January 9, 2018) (<voys.com>)
Complainant based in claim for cybersquatting on the following:
(a) The Domain Name has never been used and the webpage to which it has been connected since 2007 indicates that it is for sale;
(b) The Respondent is the registered proprietor of over 2000 domain name registrations and all of them are offered for sale;
(c) It is clear that the Domain Name was registered with a view to selling it at a profit;
(d) The Respondent has refused the Complainant’s offer of USD 3000 for the Domain Name and has indicated that he is looking for a much larger sum.
Concluding with the following statement: “Respondent’s registration of the domain name <voys.com> can therefore be regarded as ‘registration and use in bad faith’ as referred to under Article 4 of the UDRP – ICANN and WIPO Case No. D2001-0903 [Oki Data case].”
It then states: “The domain name voys.com has never been used by Respondent after its registration. Since 2007, this domain name is even offered for sale…. From this, it is evident that Respondent does not have a legitimate interest in the domain name voys.com” to which the Panel (3-member) states:

This is an extraordinary statement. It incorrectly assumes that (1) non-use of a domain name of itself prevents the registrant from acquiring a right or legitimate interest and (2) registration of a domain name for no reason other than to sell it necessarily deprives the registrant of a right or legitimate interest.

The Panel cites Informa Business Information, Inc. v. Privacydotlink Customer 640040 / Domain Manager, Web D.G. Ltd., 2017-1756 (WIPO December 11, 2017) in holding RDNH: “With the benefit of experienced intellectual property advisors, the Complainant should have been aware that, in these circumstances, its Complaint could not succeed.”  Music to the ears of “experienced intellectual property advisors”!

Jana Partners LLC v Zhang Si, FA1712001760820 (Forum January 2, 2018) (<janaparters.com>)
What is expected of complainant? Complainant was represented by counsel in what should have been a shoe-in for cybersquatting, but fluffed the assignment. The Panel (over severely?) held that while “Complainant asserts that Respondent uses the disputed domain name with the intent for commercial gain, to defraud Internet users, to obtain goods at Complainant’s expense, or to tarnish Complainant’s marks … it provides no evidence of these assertions and no evidence whatsoever of Respondent’s use of the disputed domain name.” The result? The Panel concludes:

Failure by a complainant to provide evidence of a respondent’s failure to make a bona fide offering or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii) is insufficient to support a finding that said respondent lacks rights or legitimate interests in the disputed domain name.  See O.C. Seacrets, Inc. v. S. TradeWINs, Inc., FA 328042 (Forum Oct. 29, 2004) (“Complainant has provided no evidence as to the use of the <jamaicausa.com> domain name and has merely asserted that Respondent has no rights or legitimate interests, which is not sufficient to support a finding that Respondent lacks rights or legitimate interests.”)

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