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Noteworthy Domain Names for 2020

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 this website and republished on circleid.com. Noteworthy Domain Decisions for 2015 can be found here, 2016 can be found here, 2017 can be found here, 2018 can be found here, and 2019 here.

Insider, Inc. v. DNS Admin / Contact Privacy Service, FA1912001874834 (Forum February 3, 2020) (<businessinsider.tv) Complaint filed in 2019
“Business insider” is a simple two word term registered as a domain name earlier than the trademark, yet the mark owner prevails on common law grounds. The decision may be viewed critically as giving Complainant the benefit of the doubt on the bad faith requirement. The Panel reasoned that “while it is true that functioning as a domain name reseller may not alone be indicative of bad faith in the registration and use of domain names, it is also true that what a reseller does with a domain name while it is awaiting resale matters.  That is why Respondent finds it necessary to include the phrase ‘by itself’ in its Response to the Complaint. As a consequence, where it is found, as here, that a respondent’s modus operandi can be summarized as registration of a domain name that is confusingly similar to the mark of another followed by exploitation of the domain name for profit while awaiting its eventual sale, the ‘reseller’ label will not serve to avoid a finding of bad faith in the registration and use of the domain name.” This is close to suggesting that holding the domain name for future sale is a factor in deciding bad faith.

Scalpers Fashion, S.L. v. Dreamissary Hostmaster, D2019-2937 (WIPO January 30, 2020) (<scalpers.com>)
“In light of the above,” the “above” being the following:

(i) the disputed domain name was registered by the Respondent long before the Complainant obtained relevant rights in the Trade Mark;
(ii) the Complainant’s legal representatives have unreasonably ignored established UDRP panel positions set out in WIPO Overview 3.0  (Para. 4.16)
(iii) the Complaint was filed after two unsuccessful attempts to purchase the disputed domain name, the first initiated by the Complainant in August 2017, and the second by the Complainant’s legal representatives in June 2019; and
(iv) the Respondent’s legal representatives wrote to the Complainant’s legal representatives after the filing of the Complaint, on December 16, 2019, pointing out that, in light of the undisputed facts, a finding of bad faith registration and use was impossible, and inviting the Complainant to withdraw the Complaint.

“the Panel agrees with the Respondent that the Complainant has filed the Complaint after an unsuccessful attempt to acquire the disputed domain name from the Respondent, and where the legally represented Complainant filed the Complaint without having any plausible basis for establishing, in particular, bad faith registration and use.”

Media Bridge Inc. v. Mediabridge Infosystems Inc., FA1912001873710 (Forum January 22, 2020) (<mediabridge.com>.
RDNH does not have to be expressly requested for the Panel to saction Complainant. “Respondent has not specifically requested that the Panel issue a finding of reverse domain name hijacking (“RDNH”) in this case but, given the egregious nature of this filing, the Panel believes that the subject must be addressed.  In order to rule that RDNH has occurred, the Panel must find that Complainant brought the case in bad faith and engaged in an abuse of this administrative proceeding.  See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 4.16.

Scribe Opco, Inc. d/b/a BIC Graphic v. Ryan Ramsey, D2019-2543 (WIPO December 26, 2019) (<koozies.com>. 21 years. Dictionary-word domain name. Complaint denied not on laches grounds, which was never raised, but on lapse of time: “As Complainant has provided no evidence regarding the use of the KOOZIE mark and/or the extent of such use or notoriety of the KOOZIE name and mark prior to December 1998, it is difficult to assess 21 years after the fact whether Respondent was trying to take advantage of rights Complainant might have had in KOOZIE or was merely registering a common term, as Respondent contends it did, as part of its business of registering domain names based on acronyms, dictionary terms and common phrases.”)

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