Ednovo d/b/a Gooru of Palo Alto, just lost its attempt to grab the domain names Gooru.com; Gooru.net; Gooru.org; and Gooru.biz registered in 1999 on the basis of a trademark filed in 2012 with a UDRP Panel
Here are the relevant facts and findings from the one member panel
The Complainant is a non-profit organization established in 2011, and based in the United States of America, that operates a free search engine via its domain name <goorulearning.org>, for teachers and students to search for learning materials, such as multimedia resources, digital textbooks, videos, games and quizzes (“Complainant’s Website”).
The Complainant holds a trade mark registration for GOORU in the United States of America since March 27 2012.
The Respondent is based in Italy.
The Disputed Domain Names were registered as follows: <gooru.com> on December 9, 1999 and <gooru.biz>, <gooru.net> and <gooru.org> respectively on February 21, 2003.
The Disputed Domain Names <gooru.org> and <gooru.biz> currently resolve to parking pages that includes sponsored links, and <gooru.com> and <gooru.net> are currently inactive and resolve to a website that states that the site is under construction.
The Complainant alleges that the Disputes Domain Names have been inactive ever since they were registered, and the Disputed Domain Names <gooru.org> and <gooru.biz> currently resolve to parking pages that provide sponsored links.
The use of a domain name containing a well-known trade mark for the purpose of collecting referral fees from sponsored advertising links, has been consistently held not to be a legitimate offering of goods or services
However, the Respondent argues that he has been making preparations to use the Disputed Domain Names in connection with a bona fide offering of services, and has provided evidence in support.
In addition, the Complainant has provided copies of email correspondences with the Respondent dated January 18, 2011 and February 22, 2013, whereby the Complainant had asked the Respondent if he was interested in transferring the Disputed Domain Names to the Complainant.
The Panel notes that the Respondent informed the Complainant that he was unwilling to transfer the Disputed Domain Names to the Complainant, as he intended to use the Disputed Domain Names for his own business projects. Further, if the intent of the Respondent was to make a profit from the Disputed Domain Names, the Panel believes that it would have been logical for the Respondent to try to negotiate with the Complainant in order to sell the Disputed Domain Names to the Complainant for profit.…
