Two interesting UDRP decisions were handed down today but two different UDRP panelist both involving the trademark holder of “Rocket Pay”
In the first case Rocketgate PR LLC went after the direct match domain name rocketpay.com, which was registered in 2002, some ten years before the trademark was filed the sole Panelist Nathalie Dreyfus found for the domain holder in denying the UDRP, however refused to find Reverse Domain Name Hijacking making a troubling statement that “Presently, given Respondent’s lack of argumentation, the Panel considers that a case of Reverse Domain Name Hijacking has not been proven. Besides, the Disputed Domain Name is identical to Complainant’s trademark. Thus, it is not “blatantly obvious,” as stated by Respondent, that Complainant acted in bad faith.
Not sure about that one since the trademark didn’t exist until 10 years after the trademark was filed
The panel went on to say:
“Complainant waited over thirteen years after the registration of the domain name to initiate these proceedings;
Respondent has not engaged in activities that could induce one to believe that he registered the Disputed Domain Name without rights or for a non-legitimate purpose. Indeed, Complainant only states that the Disputed Domain Name is inactive without any further argumentation.
In light of these elements and given the poor argumentation provided by Complainant, the Panel considers that Complainant has failed to prove a prima facie case that the Respondent lacks legitimate interest or rights in the Disputed Domain Name rocketpay.com.
Therefore, the Panel finds that Complainant has failed to fulfill the requirements of Paragraph 4(a)(ii) of the Policy.”
In the second UDRP the same company owning the same mark, Rocket Pay, obtained the domain name RocketPays.com from the domain holder.
The difference?
Rocketpays.com was registered on October 9, 2014 which is after the trademark was filed and the domain holder who was different than the domain holder in the first case did not file a response.
The sole panel of Honourable Neil Anthony Brown found:
Respondent registered the disputed domain name on October 9, 2014, only a few days after Complainant applied for its trademark and after Complainant first used the expression ROCKETPAY in commerce;
The domain name does not resolve to an active website;
Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
Complainant submits 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. The Panel notes, however, that Complainant has not provided evidence of this allegation. As the Panel finds the allegation sufficient and more likely to be correct than not, it finds that Respondent has failed to use the domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
The Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
Complainant alleges that Respondent uses the domain name in bad faith because the resolving website constitutes an inactive holding. Complainant asserts that the domain name is “not in use for business or any other purpose.” The Panel notes that Complainant has not provided evidence of this allegation. But as the Panel finds the allegation sufficient and more likely to be correct than not, it finds that Respondent uses the domain name in bad faith under Policy
Secondly, Complainant argues that Respondent’s registration of the domain name constitutes opportunistic bad faith. Complainant claims that it began using the ROCKETPAY mark on October 1, 2014 and that Respondent registered the domain name on October 9, 2014.
The Panel notes that Complainant has not provided any evidence to suggest use of the ROCKETPAY mark prior to the filing date with the USPTO, October 27, 2014.
Nevertheless, the Panel finds there is some strength in this submission as it can scarcely be a coincidence that Complainant began using the ROCKETPAY mark on October 1, 2014 and Respondent registered the domain name on October 9, 2014. It appears therefore that Complainant’s common law trademark was on foot before Respondent registered the domain name, albeit only a few days before the registration.
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed , domain name using the ROCKETPAY mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Accordingly, it is Ordered that the domain name be TRANSFERRED from Respondent to Complainant.
