John Berryhill has won his second UDRP of the day this time beating back the Complaint was brought Intelligentsia Coffee & Tea, Inc. of Chicago, Illinois, against the domain holder, Ashantiplc Ltd of New York, New York, who was represented by John Berryhill, PhD Esq and NamingRights.Com, LLC of Hong Kong, China.
The three member panel found that the complainant did not prove its case and one of the three panelists filed a Concurring Opinion saying he would have made a finding of Reverse Domain Name Hijacking (RDNH)
Here are the relevant facts and findings by the panel:
“Complainant is owner of the INTELLIGENTSIA trademark registration, United States Reg. No. 2,599,643, filed April 26, 2001 and registered on July 23, 2002.”
The Panel finds that the Domain Name is identical to Complainant’s mark, because the gTLD “.com” is typically irrelevant for the purposes of a Policy paragraph 4(a)(i) analysis and insufficient to distinguish the domain name from a trademark.
“Here, Complainant alleges that (a) Respondent is not authorized to use Complainant’s INTELLIGENTSIA trademark; (b) there is no evidence that Respondent used or made preparations to use the Domain Name in connection with bona fide offering of goods and services; (c) Respondent registered the Domain Name to mislead and divert consumers by attracting them through the confusingly similar domain name; (d) the Domain Name is not the name, business name, or common name of Respondent, and thus Respondent had no legitimate basis to register the Domain Name; and (e) that “upon information and belief”, Respondent obtained the Domain Name with the full knowledge of Complainant’s prior use and ownership of its INTELLIGENTSIA mark.
“While the evidentiary burden on Complainant has been recognized as generally light to establish its prima facie case,1 we note that here Complainant provides little or no cognizable evidence beyond these bare assertions”.
“We also note that a prior UDRP panel, considering a similar set of operative facts (and similar arguments from this same Respondent), acknowledged that “a respondent may have a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive term, even when the domain name is confusingly similar to a complainant’s registered mark”.
“While we are doubtful that Complainant meets its burden, as did the panel in Masai Clothing Company, we refrain from ruling on whether the Complaint has established a prima facie case or whether Respondent has proven the existence of rights or legitimate interests in the Domain Name.…
