Director’s Choice, LLP just won is a UDRP for the domain name directorschoice.com
We read through the complaint the other day thought is was a no-brainier win for the domain holder, but as the opinion lays out it seems the three member panel thought it was a no-brainier win for the Trademark Holder.
It seems the domain holder acted as his own attorney to respond to the complaint.
Not a good idea people.
The domain holder already let us know he will be filing a Federal Suit to stop the transfer.
Here are the conclusions made by the panel:
You can read through our post and the decision and draw your own conclusions:
Complainant has been continuously using and promoting the Marks since at least as early as 1997 as the source of services for arranging travel tours for music organizations.
Complainant’s marks were in use in the U.S well before Respondent registered its domain name on March 7, 2000;
Complainant has pending applications for U.S. Trademark Registration for DIRECTOR’S CHOICE, filed July 14, 2014 (Ser. No. 86/336,351), for arranging travel tours for music organizations; organization of travel, in International Class 39; and DIRECTOR’S CHOICE TOUR AND TRAVEL, filed July 14, 2014 (Ser. No. 86/336,439), for arranging travel tours for music organizations; organization of travel in Class 39, which applications each claimed use in commerce at least as early as April 1997.
Complainant’s Mark Director’s Choice is comprised of terms which are suggestive of Complainant’s travel services for music organizations but not descriptive or generic.
Respondent and Complainant are both based in the United States and as such Respondent was aware of Complainant’s use of its common law Marks at least 3 years prior to Respondent’s registration of the disputed domain name.
Complainant has asserted facts establishing Complainant’s common law trademark rights in the Marks though Complaint Exhibits showing advertising, sponsorship and invoicing documents from 1998 using the Mark Director’s Choice, supporting over 17 years of continuous use, combined with substantial online advertising shown in specimens from its trademark applications as Exhibits annexed to the Complaint, sufficient to establish secondary meaning.
Respondent’s disputed domain name, <directorschoice.com> is substantially similar to Complainant’s Marks, because it incorporates Complainant’s DIRECTOR’S CHOICE mark in its entirety in the disputed domain name, and adds only the generic TLD “.com.” As such, this addition does not distinguish the disputed domain name from Complainant’s Mark Director’s Choice.
Respondent’s WHOIS information identifies Respondent HELP.org Domain Administrator as registrant of the disputed domain name and registrant’s organization as HELP.org, LLC.
Respondent is not commonly known by Complainant’s DIRECTOR’S CHOICE or DIRECTOR’S CHOICE TRAVEL AND TOURS Marks, nor is Respondent licensed by Complainant to use either of the Marks.
Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods or services.
Respondent has not used the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use.
Respondent has continuously offered the disputed domain name for sale at a premium above cost and not merely in response to an offer to purchase from Complainant.
Respondent has not been prejudiced by Complainant’s delay in filing this UDRP case because Respondent has known of Complainant’s business using the identical trade name DIRECTORS CHOICE for over a decade, since Complainant first emailed Respondent under such trade name in 2002, inquiring about purchasing the disputed domain name showing Complainant’s trade name in the e-mail header, as shown in Exhibits to Respondent’s Response.
Respondent should not now be permitted to avail itself of the defense of laches when the Respondent is in part responsible for the delay due to protracted negotiations with Complainant over the purchase price of the disputed domain name for over a decade.
Respondent uses the disputed domain name to offer hyperlinks to other businesses’ websites, including travel services that are in competition with
Respondent registered and is using the disputed domain name <directorschoice.com> in bad faith.
A finding of reverse domain name hijacking is not warranted as Complainant is not acting in bad faith.
Scott R. Austin, Esq., Chair of the Panel
Hon. Bruce E. Meyerson, (Ret.), Co-Panelist
