Raise Labs, Inc (“Complainant”), just won control of the domain name RaisemMe.com in a UDRP/
The US-based company did not have an US federally registered trademark.
The one member panel of The Honourable Neil Anthony Brown QC found the company had common law rights to the name in part based on the fact that the Complainant owned the domain but let it lapse in 2013.
The decision also highlights the downside of a domain holder losing several UDRP’s and being labelled a serial cybersquatter.
The domain holder did not respond to this UDRP which again didn’t help.
Still giving a domain back to a company that registered it, let it lapse which doesn’t have a registered trademark is disturbing for those that catch a lot of dropping domains
Here are the highlights:
Complainant is a United States company engaged in the business of expanding access to higher education, especially among low income and first generation students.
Complainant has used and promoted the RAISE ME mark to assist students and colleges for nearly four years, has garnered substantial publicity by its use of the mark dating back to September of 2012 and has established common law rights in the RAISE ME mark from that time.
The disputed raiseme.com domain name was originally registered by an unknown party on December 27, 2005 and was subsequently registered by Complainant on or about September 20, 2013. The registration was inadvertently allowed to lapse and was registered by Respondent at a subsequent date.
Respondent is a serial cybersquatter and the disputed domain name resolves to a parked webpage providing links to third parties that compete with Complainant.
Complainant argues that because the RAISE ME mark has been continuously and exclusively used by Complainant in connection with its informational materials since at least 2012, it has demonstrated common law rights in the mark for purposes of Policy ¶ 4(a)(i).
The Panel agrees with Complainant, the Panel finds that Complainant has demonstrated common law rights in the RAISE ME mark, pursuant to Policy ¶ 4(a)(i). Those rights date back to September 2012.
The disputed domain name was originally registered by an unknown party on December 27, 2005 and was subsequently registered by Complainant on or about September 20, 2013. The registration was inadvertently allowed to lapse and was registered by Respondent at a subsequent date.
The domain name resolves to a parked webpage providing links to third parties that compete with Complainant.
The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Therefore, the Panel finds that Respondent does not have rights or legitimate interests under Policy ¶¶ 4(c)(i) or (c)(iii);
Complainant argues that it was the owner of the disputed domain name from or about September 20, 2013 and ending in December, 2013, and that this further highlights Respondent’s lack of rights or legitimate interests.
Thus, the Panel relies on Complainant’s prior registration for the disputed domain name as evidence that Respondent lacks rights or legitimate interests under Policy ¶ 4(a)(ii).
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.
Complainant has thus made out the second of the three elements that it must establish.
The Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent registered and used the disputed domain name in bad faith because Respondent’s primary purpose was to sell the domain back to Complainant in excess of out-of-pocket costs.
Secondly, Complainant argues that Respondent has been the subject of prior adverse UDRP rulings, thereby demonstrating a pattern of bad faith. In support of its argument,
As the Panel agrees with Complainant’s argument, it finds that Respondent registered and is using the domain name in bad faith per Policy ¶ 4(b)(ii).
Thirdly, Complainant claims that Respondent’s use of the domain name to host competing hyperlinks is evidence of bad faith registration and use under Policy ¶ 4(b)(iii).
Accordingly, the Panel finds that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
Fourthly, Complainant submits that it previously owned the registration for the domain name, and that Respondent only acquired it when Complainant inadvertently allowed its registration to lapse. Complainant submits that it held the registration until its expiration in December 2013, at which point Respondent purchased it.
Past panels have found that when a complainant has previously used a disputed domain name, subsequent use by anyone else indicates bad faith, unless there is evidence to the contrary.
Accordingly, the Panel finds that Respondent registered and uses the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Next, 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 RAISE ME 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.
In the above consideration, an issue arises as to when the disputed domain name was registered by Respondent and whether that occurred after Complainant acquired its common law trademark rights to the RAISE ME mark. The Panel has held on the evidence contained in and annexed to the Complaint that Complainant acquired its rights from September 2012. Complainant has also submitted that:
“According to the WHOIS records, it is unclear the exact date that Respondent registered the Disputed Domain Name. Nevertheless, it is clear that Respondent’s registration of the Disputed Domain Name occurred after Complainant began offering services under the Raise.Me Marks and after Complainant’s ownership of the Disputed Domain Name.” Complainant has also certified that the information contained in the Complaint is to the best of Complainant’s knowledge complete and accurate.
On that basis the Panel finds that Respondent registered the disputed domain name after Complainant acquired its common law trademark rights to the RAISE ME mark.
Complainant has thus made out the third of the three elements that it must establish.
Accordingly, it is Ordered that the domain name be TRANSFERRED from Respondent to Complainant.
