Edward B. Hamrick dba Hamrick Software lost its bid to grab the domain name vuescan.com in a UDRP from Frank Schilling’s Name Administration Inc. who was as always represented by John Berryhill, Esq.
However the panel refused to make Reverse Domain Name Hijacking (RDNH) ruling despite finding the domain holder did not register or use the domain name in bad faith, made legitimate use of the domain and that 9 years had passed since the Complainant first sent a C & D letter to the domain holder.
Here are the relevant facts and findings by the three member panel:
Complainant has rights in the VUESCAN mark based upon trademark registration dating back to December 15, 2008 pursuant to Policy ¶ 4(a)(i).
Complainant claims it began using its VUESCAN mark well before it filed for registration of its mark, beginning in April 1999. Complainant claims its software quickly was accepted as the leading scanner software because of its flexibility, ease of use, and compatibility with hundreds of scanners.
The USPTO Registration for the VUESCAN mark lists a date of March 3, 1998 as the mark’s First Use In Commerce. The Panel could find that Complainant has common law rights in the VUESCAN mark dating back to March 3, 1998 pursuant to Policy ¶ 4(a)(i).
The Panel holds that Complainant has not established a prima facie case in that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).
Respondent asserts that it has rights or legitimate interests in the disputed domain name. Respondent argues that it maintains a sizable portfolio of domain names comprising simple words, short phrases, and other descriptive or common terms for the purpose of providing keyword advertising in relation to the words in the domain name, and Respondent notes that it is also the registrant and operator of the domain name to which the disputed domain name is phonetically equivalent, .
Further, Respondent points out that the links displayed do not relate to scanner software, as they are listed under headings such as “Digital Televisions,” “LCD Television,” “Plasma Televisions,” “Projection Televisions,” and so on.
As such, the Panel finds that Respondent has demonstrated that it uses the disputed domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii) and thus that Respondent has rights or legitimate interests in the domain name.
Therefore, Complainant has failed to meet its burden of proof on this prong.…
