Michael Evans and Chord Consulting Inc. d/b/a XAG (“Complainant”), represented by John Berryhill,just got the stolen domain name xag.com returned in a one member panel UDRP decision:
John J. Upchurch found the Complainant has common law rights in the XAG mark through dating back to 2009 and found the domain holder registered and used the domain name in bad faith because it obtained the domain name through theft.
“Complainant has provided evidence of previously owning the domain name in dispute, xag.com.
Complainant has provided evidence of use in business related documents and in obtaining insurance in Exhibits D, E and C.
Complainant has also provided evidence of its use of the mark in Exhibits F and G. In addition, Complainant has provided documentation of having a trade name registered in the State of Washington, in Exhibit B. While past panels have held that a trade name does not establish rights, on its own, a combination of a trade name and secondary meaning may suffice to show rights under Policy ¶ 4(a)(i).
Complainant alleges that Respondent is not commonly known by the domain name, as the listed Registrant, “Philipp Dreyer,” is allegedly fictitious. Complainant has provided evidence of correspondence with the business located at the address listed in the WHOIS information, in Exhibit J, in which the business denied ownership of the domain name. Further, Complainant asserts that the listed telephone number has too many digits to be a valid Seattle phone number.
Past panels have found discrepancies between WHOIS information and domain names sufficient to show that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii) because it was originally registered by Complainant and Respondent acquired it through theft.
Complainant has provided time stamped WHOIS information, in Exhibit I, to show that the domain’s registrant was changed in March, 2015.
Complainant asserts that this change came about by Respondent’s having compromised Complainant’s administrative e-mail address in order to authorize a change of registration. Panels have found that in situations exactly as Complainant purports to have occurred, respondents have failed to demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(a)(i) and Policy ¶ 4(a)(iii).
Complainant also alleges that Respondent fails to use the domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website constitutes an inactive holding.
While Complainant has not provided documentation of this use, the Panel notes that the domain name does appear to resolve to an inactive website. Past panels have found that a failure to use a disputed domain name is sufficient to show a failure to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Complainant alleges that it previously owned the registration for the domain name, and that Respondent only acquired the domain name through theft by compromising Complainant’s administrative e-mail address in order to authorize a registration transfer. While past panels have not seen many instances of similar domain name theft, they have found that there is a likelihood of bad faith when a complainant previously owned a domain name and no longer does, unless there is evidence to suggest a lack of bad faith.
