eWomenNetwork, Inc. lost its bid to grab the 18 year old domain eWomen.com in a UDRP
The three member panel of the Honorable Richard DiSalle, the Honorable Karl V. Fink, (Ret.) and The Honourable Neil Anthony Brown found the 18 year old domain was registered in good faith by the registrant but refused to find Reverse Domain Name Hijacking (RDNH)
Here are the highlights:
Complainant has registered the EWOMEN mark in stylized form with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,257,345, first use in commerce Dec. 30, 2000, filed Apr. 24, 2012, registered Dec. 11, 2012)
Complainant also asserts unregistered common law rights in the EWOMEN stylized mark dating back to at least December 30, 2000.
Complainant is a United States company engaged in the provision of marketing services for promoting the goods and services of women-owned businesses via the Internet.
Complainant has trademark rights in the EWOMEN mark in stylized form registered by Complainant with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,257,345, first use in commerce Dec. 30, 2000, filed Apr. 24, 2012, registered Dec. 11, 2012)( “the EWOMEN mark”).
The disputed domain name was first registered on April 18,1997 and was acquired by Respondent in May 2009 after the original registration had lapsed
The domain name has been used by Respondent to display pay-per-click hyperlinks to subjects relating to women, such as “women” and “ older women” and to other links of a more generalized nature, such as “school” and “ career”.
DISCUSSION
Rights or Legitimate Interests
Complainant relies on several grounds to show bad faith registration and use of the domain name. The Panel has given careful consideration to all of those grounds and the submissions and evidence said to be in their support.
The Panel readily acknowledges that they raise some serious questions.
In particular, there are the submissions that Respondent has displayed bad faith under Policy ¶ 4(b)(ii) by engaging in a pattern of bad faith registrations, that Respondent’s use of the domain name is diverting Internet users away who were originally seeking Complainant’s website, that Respondent has attempted to profit in bad faith from the confusing similarity associated with the domain name and Complainant’s EWOMEN mark and that Respondent must have had constructive and/or actual notice of Complainant’s rights in the “eWomen” design mark prior to registration of the domain name because of Complainant’s widespread use of the mark and its trademark registrations with the USPTO.
However, Respondent makes some cogent arguments to the effect that it did not and, in effect, could not have registered the domain name in bad faith because it acquired the domain name before Complainant registered its EWOMEN trademark. It is here that the major problem with Complainant’s case arises, which like other aspects of this jurisdiction, comes about because of the terms of the UDRP itself and the fact that panels are bound by those terms and the proof they require. In that regard it is clear and has been stated many times that to succeed in the summary proceedings provided by the UDRP a complainant trademark owner must show that the domain name was registered in bad faith and used in bad faith.
Respondent argues that it did not register the domain name in bad faith because it could not have had any animus directed at a trademark that had not been registered or filed for. The substance of Respondent’s case on this issue is put in the following way in its summary of argument: “Moreover, Complainant did not file its trademark until April, 2012 and did not receive its trademark until December, 2012 – over three (3) years after Respondent purchased the Disputed Domain.” Respondent verified those matters in its Attached Ex. 1 (declaration of Kurt Richter affirming the May 2009 registration). It will be recalled that the domain name was actually registered in 1997 and that Respondent bought it in 2009 after the registration had expired. Neither party gave in evidence the precise date when Respondent acquired the domain name, but it seems to be common ground that it was in May 2009. What is also clear beyond doubt is that three years later Complainant applied for its trademark for EWOMEN on April 24, 2012 and that it was registered on December 11, 2012.
The Panel notes that it makes no judgment on whether, at any time after the registration of the domain name, Respondent engaged in bad faith use.
Nor is it necessary to make a specific ruling on Respondent’s further argument under this heading, namely that as EWOMEN is clearly a trademark made up of an essentially generic expression, it was entitled to register the domain name and did so in good faith.
LACHES
Respondent argues that Complainant was aware of Respondent and the domain name for at least six (6) years and failed to initiate an action under the UDRP. Respondent therefore maintains that the Complaint is barred by the doctrine of laches. Complainant argues that laches is inappropriate in UDRP proceedings and other opinions have been expressed that support Complainant’s view. Still other opinions have been expressed to the effect that delay in instituting proceedings may be taken into account as are all other facts established by evidence.
The issue may be somewhat academic in the present case, as Complainant has not succeeded on the merits.
Accordingly, the Panel feels that it is not necessary to say any more than to adopt the observations of the three person panel in the recent decision in E-Renter USA Ltd. v. Domain Hostmaster, Customer lD. 55391430909834, Whols Privacy Services Pty. Ltd. / Domain Administrator, Vertical Axis lnc, D2015-0784 (WIPO July 10, 2015), as the circumstances were similar to those in the present case. The panel said:
“The Respondent, in its Response also raises the question of laches. The Panel notes that the Domain Name has been registered for 12 years and for 11 of those years the Complainant has been an active business. This Panel’s view is that delay in filing a complaint is not an automatic bar to a complaint, but nor can it be ignored, for all the facts must be taken into account in all UDRP proceedings and a decision made in the light of all the circumstances of the individual case. ln the present case, the Panel has found that the Respondent has not registered the Domain Name in bad faith and the Complainant therefore cannot succeed on the merits. ln these circumstances it is not necessary to make a finding as to whether the Complainant is barred from commencing or succeeding in the proceeding under the ground of Laches.”.
