Ari Goldberger, Esq of ESQwire.com just beat back a UDRP on the domain name LiveOne.com brought by LiveOne Group, Ltd
The three member panel ruled in favor of the domain holders who registered the domain in September 2007, against the trademark holder who just registered it trademark on May 15, 2010 which was granted on Sept. 6, 2011.
However the panel did not make a finding of Reverse Domain Name Hijacking (RDNH) on the basis that the domain was going to a parked page and the domain holder turned down an offer of $50,000 to sell the domain.
Respondent’s resolving website is a parked website containing pay-per-click advertisements.
Respondent has offered to sell the domain name for $50,000.
Here what the trademark holder argued:
Respondent is not merely a professional business name registrant, it is a Cybersquatter, engaged in the business of commercially benefiting from the goodwill of others trademarks.
Respondent’s defenses hinge on the fact that it registered the disputed domain name prior to Complainant establishing U.S. trademark rights in the LIVEONE mark. However, past panelists have held that if such a rule were adopted it would allow a Respondent that originally registered a domain name in good faith to continuously and flagrantly exploit a Complainant’s mark.
Respondent renewed the disputed domain name after Complainant had established a large Internet presence and received a registration for the LIVEONE mark in 2010.
After Complainant registered its mark with the USPTO Respondent changed the type of click-through advertisements that appeared on the disputed domain name.
Complainant’s trademark registration need not predate the registration of the domain name.
Bad faith is not limited solely to the date of registration of the disputed domain name.
Panels have held that a registrant has an ongoing duty to make sure that it is not violating others’ rights in trademark or copyright where the domain name was registered prior to a complainant owning a trademark.
Still other panels have held that the date of Respondent’s last renewal is the date on which to measure whether the disputed domain name was registered and used in bad fait
Respondent’s use of the disputed domain name shifted in 2011 to offer directly competing advertising links through the website. Even if the links were auto-generated, Respondent bears the ultimate responsibility for the content of its websites.
Respondent has willfully ignored the trademark rights of Complainant in bad faith.
Respondent’s allegations of reverse domain name hijacking are baseless and without merit.…
