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UDRP Panel Rejects “Renewal Of A Domain Resets Bad Faith Clock”: BabyBanana.com Saved

Posted on the 17 July 2015 by Worldwide @thedomains

Live-Right, LLC has just lost its attempt to grab the domain name BabyBanana.com which is owned by Vertical Axis Inc. which was represented as usual by represented by Esqwire.com.

I believe is a particularly important win for domain owners.

The decision affirms the business of investing and reselling domain names is legitimate use under the policy/

More importantly, the panel emphatically rejected the Playland Decision which, found quite dangerously and incorrectly for every domain holder, under Paragraph 2 of the policy, a renewal is a “new registration” which restarts the bad faith clock.

This three member Panel of Diane Thilly Cabell, Beatrice Onica Jarka, and Hon. Karl V. Fink (Ret.) squarely considered and rejected the “renewal is a new registration” line of reasoning stating that:

“”Complainant cites the following case… Playworld Systems, Inc. v. Domain Manager/Giant Distributors Inc., which found Respondent was aware of the Complainant’s trademark and found that the “renewal of a domain name is, by reference to paragraph 2 of the Policy, equivalent to a new registration in certain circumstances…The Policy provides clearly that there is a responsibility that a domain name registrant has, namely to determine whether the domain name registration infringes or violates someone else’s right.”

“”The Panel rejects this argument and finds that renewal of a disputed domain name by the original owner of the domain name is irrelevant to a Policy ¶ 4(a)(iii) analysis.

There is no evidence that the renewal of the domain name was anything more than protecting an existing investment.”

Here are the highlights of the rest of the decision:

“”Complainant owns the United States Patent and Trademark Office registration for the BABY BANANA mark (Reg. No. 3,747,206, first use Oct. 26, 2007, filed May 30, 2007, registered Feb. 9, 2010), demonstrating its rights in the mark.

Respondent registered babybanana.com domain name in February 2006, prior to Complainant’s alleged first use of the BABY BANANA mark, after the prior owner allowed the registration to lapse (the disputed domain was originally registered in 1999).

Complainant argues that Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known by the disputed domain name as per the relevant WHOIS information, and other information on the record. Complainant contends that Respondent has not utilized the domain name in connection with any bona fide offering of goods or services or for any legitimate noncommercial or fair use as the resolving page merely displays click-through advertisements. Complainant also states that Respondent has attempted to sell the disputed domain name.

The Panel finds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).

Respondent registered the domain name in February 2006, prior to Complainant’s trademark filing date of May 20, 2007.

Respondent states that it is a generic domain-name reseller which owns thousands of common word domain names, and that it registered the disputed domain name as part of its legitimate business. Respondent alleges that it uses the disputed domain name to provide advertising services, and as it provides these services it profits from pay-per-click revenue as a business model.

Past panels have found that generic domain-name reselling is a legitimate business model.

The Panel finds that Respondent’s business of creating and subsequently selling generic domain names is a legitimate business endeavor, and finds that Respondent has established its rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii).

Respondent argues that the terms of baby banana.com are common and generic/descriptive, and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet. The Panel agrees and finds that Respondent has established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).

Respondent argues that its offer to sell the disputed domain name as part of its business model is a bona fide offering of goods or services as per Policy ¶ 4(c)(i).

There is precedent which holds an offer for sale demonstrates a bona fide offering of goods or services per Policy ¶ 4(c)(i). See Allocation Network GmbH v. Gregory, D2000-0016 (WIPO Mar. 24, 2000) (holding that under appropriate circumstances the offering for sale of a domain name can itself constitute a bona fide offering of goods or services for purposes of paragraph 4(c)(i) of the ICANN policy).

The Panel finds that Respondent’s offer to sell the domain name is a bona fide offering of goods or services under Policy ¶ 4(c)(i).

Complainant has not proved this element.

Registration and Use in Bad Faith

The Panel has found that Respondent’s offer to sell the domain name is a bona fide offering of goods or services per Policy ¶ 4(c)(i), and therefore finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).

The Panel further finds that Respondent has not registered or used the domain name in bad faith as Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii).

Respondent argues that the domain name is comprised entirely of common terms that have many meanings apart from use in Complainant’s BABY BANANA mark.

Respondent contends that the registration and use of domain name comprising such common terms is not necessarily done in bad faith.

The Panel finds that a respondent is free to register a domain name consisting of common terms and that the domain name currently in dispute contains such common terms, and therefore finds that Respondent did not register or use the domain name in bad faith under Policy ¶ 4(a)(iii).

The panel did reject the legal doctrine of laches and rejected Reverse Domain Name Hijacking


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