TeleSign Corporation, of California was just found guilty of Reverse Domain Name Hijacking (RDNH) on the domain name PhoneId.com which is owned by Vertical Axis Inc, which was represented as usual by Esqwire.com
According to my records its the 11th win in row for Esqwire.com and the 5th finding of Reverse Domain Name Hijacking this year.
The three member panel of Paul M. DeCicco, Esq., Diane Thilly Cabell, Esq., and the Honorable Charles K. McCotter, Jr. (Ret.)
found while the complainant owned the very recently registered trademark for the term Phone ID registered in the USPTO on Feb. 19, 2013, such registration had no effect on the domain holder Vertical Axis, which registered the domain name 7 years ago on September 7, 2005.
As to the issue of RDNH the panel said:
“Complainant has engaged in reverse domain name hijacking by initiating this dispute.
Complainant is attempting to deprive Respondent, the registered holder of the phoneid.com domain name, of its rights to use the disputed domain name. Complainant knew or should have known that it would be unable to prove at least two of the elements needed to prevail. Thus, the Panel finds that reverse domain name hijacking has occurred.”
As for the rest of the complaint the panel found:
“although the complainant contends that its rights in the mark date back as early as June 30, 2005, when it first began using the mark it did not submitted evidence of secondary meaning in the PHONEID mark prior to September 7, 2005, the date of Respondent’s registration of the phoneid.com domain name.
Registration and use of a common word domain name establishes Respondent’s legitimate interest.
The registration of the domain name, that incorporates common descriptive terms, establishes Respondent’s legitimate interest, since there is no evidence Respondent targeted Complainant’s trademark.
The registration of domain names that contain common words are permissible on a first-come, first served basis, and such registration establishes the Respondent’s legitimate interest, provided the domain was not registered with a trademark in mind.
The Respondent registered the phoneid.com domain name based on its common meaning — and not because of Complainant’s trademark — is the fact that Respondent has registered numerous other common word domain names that incorporate the word “Phone”. Likewise, Respondent has registered many domain names that incorporate the suffix “Id”.
Respondent’s use of the phoneid.com domain name in connection with its descriptive meaning is a legitimate interest. Respondent’s legitimate interest is bolstered by the fact that it uses the disputed domain name to display descriptive advertising links to items related to “phones.” Respondent’s use of the disputed domain name in connection with posting of descriptive links is a bona fide offering of goods or services.
The Complainant has not shown that the disputed domain name was registered and is being used in bad faith.
The fact that Complainant’s trademark post-dates Respondent’s registration of the disputed domain name by seven (7) years precludes a finding of bad faith registration.
It is not bad faith to offer a descriptive domain name for sale where the domain name is registered for its inherent value as a common word and not for the purpose of targeting a trademark.
Congrats to the team at Esqwire.com
