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After Offering To Buy Domain For $15K, 6 Years Ago TM Holder Loses UDRP

Posted on the 28 March 2013 by Worldwide @thedomains

Zija International, Inc. of  Utah just lost its UDRP bid to get control of the domain name zija.com, a domain it repeatedly tried to buy from the domain holder for $15,000 since 2006.

Yes way back in 2006 after a series of letters back and forth, the domain holder refused to sell the domain name for $15,000 or even or counter with a selling price.

Fast forward 6 years later and the trademark holder files a UDRP and now loses the UDRP.

Here are the facts and findings by the three member panel:

The Complainant owns a United States trademark registration for the mark ZIJA in block letter form.

Registered: August 7, 2007; Filed: September 27, 2004

 

The Respondent is a for-profit California organization that has no connection or relationship with the Complainant.

 

At the time the Respondent registered the disputed domain name on August 1, 2002, it had no knowledge of the Complainant as the latter did not exist until two years later, i.e. during 2004.

The Respondent commercially used the disputed domain name from 2002 through 2006 to direct Internet users to “www.blueknight.com”, a website owned by the Respondent, at which the Respondent sold T-shirts.

 

The Respondent renewed its registration for the disputed domain name on October 12, 2007.

“During March 2006, the Complainant, through an e-mail letter, contacted the Respondent about purchasing the disputed domain name. During April 2006, the Respondent informed the Complainant that it did not want to sell the disputed domain name.

 

“Subsequently, on July 14, 2006, the Complainant’s counsel, by letter (Annex A to the Response) requested the Respondent to immediately cease and desist from all further use of the disputed domain name and to “voluntarily and immediately relinquish” the disputed domain name. He further stated that “costly legal-wranglings” could be avoided if the matter were resolved on the Complainant’s terms. Counsel further stated that the Complainant had previously offered to purchase the disputed domain name from the Respondent for USD 15,000, but had thus far received no response to the offer.”

 

“Shortly thereafter, through a letter dated July 21, 2006, (Annex B to the Response), the Respondent advised the Complainant’s counsel that it had acquired and used the disputed domain name before the Complainant commenced its business and would not transfer the disputed domain name to the Complainant. The Respondent further noted that it had never received a USD 15,000 offer from the Complainant.”

 

“Later, in a letter dated August 16, 2006, (Annex C to the Response), the Complainant’s counsel stated that in his “opinion the law distinguishes between ‘first use’ and ‘commercial use’” and repeated his client’s desire to purchase the disputed domain name for USD 15,000.”

 

“Subsequently, in a letter dated August 29, 2006, from the Respondent to the Complainant’s counsel (Annex D to the Response), the Respondent declined the Complainant’s repeated USD 15,000 offer to purchase the disputed domain name and made no counter-offer to sell.”

 

“Nearly six years later, in a letter dated July 13, 2012, (Annex E to the Response), the Complainant’s counsel stated that the Complainant had recently become aware that the Respondent was using the disputed domain name.”

Counsel also implied, without issuing an explicit threat, that the Complainant might institute a federal lawsuit against the Respondent for injunctive relief, damages, and attorney’s fees.…


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