BrooklynBeer.com UDRP was denied.
In recent weeks, the Brooklyn Brewery Corporation of Brooklyn, New York, launched a barrage of UDRP filings against several domain holders.
The UDRP cases for BrooklynLager.com, BrooklynPilsner.com and BrooklynBeers.com were terminated without further info, presumably after being settled.
BrooklynBrew.com is still pending a decision, and both BrooklynAle.com and BrooklynBrews.com were ordered to be transferred to the Complainant.
Meanwhile, the UDRP against BrooklynBeer.com was denied. The Respondent in this case was represented by ESQwire.com, a domainer-friendly law firm.
Three panelists were appointed in this case, in order to decide whether the 11 year old domain infringed on any rights held by the Complainant.
Part of the response was as follows:
“Respondent contends that there are other breweries in Brooklyn, besides Complainant’s Brooklyn Brewery, and that there have been for quite some time before Complainant ever used or registered its marks.
Respondent further contends that, as Complainant’s marks are registered with claims of acquired distinctiveness, and several have disclaimers of various terms, the term “Brooklyn” is merely descriptive of beer.
Respondent contends that the terms “Brooklyn” and “beer” are common, dictionary terms, which Respondent is using in a legitimate manner with his pay-per-click website, which links are auto-generated by Google.
[…] Respondent owns other domain names that consist of common, dictionary terms, Respondent states that he registered the disputed domain name without intent to profit from Complainant’s rights in Complainant’s marks.”
Surprisingly, the panel found that although the combined terms “Brooklyn” and “beer” in the disputed domain name are descriptive, Complainant has demonstrated Respondent’s lack of rights or legitimate interest.
The panel, however, found that registration of the domain BrooklyBeer.com did not occur in bad faith, as proven by the timeline of the trademark’s and the domain’s registrations:
“The Panel also notes that Complainants existing trademark registrations were all issued after Respondent’s registration of the disputed domain name in 2004.
Although Complainant formerly owned the disputed domain name from 1999 through 2002, Complainant did not object for over ten years after Respondent registered the disputed domain name in 2004.”
The decision on whether the domain should remain with the Respondent was indeed unanimous; however, one dissenting panelist stated that they believe this was a case of Reverse Domain Name Hijacking.
Complainant’s prior ownership of the disputed domain name was not revealed in the Complaint. Respondent put this squarely to Complainant by pleading in the Response that Complainant had “allowed the Disputed Domain to expire that yet took no action against Respondent for over 11 years.” The Response was supported by a Declaration from the principal owner of Respondent that it had acquired the disputed domain name when its owner allowed the registration to lapse and that the disputed domain name had been deleted and offered up for purchase. Complainant filed a supplementary submission, but its only apparent response on this issue was to say that it was “only one factor in the bad faith analysis.”
No doubt it is only one factor, but the absence of an explanation for the lapse in registration of the disputed domain name, allowing another party to buy it and then not to take any action to retrieve it for 11 years, shows that it was not bad faith on the part of Respondent that motivated Respondent to register the disputed domain name, but Complainant’s own actions in allowing the disputed domain name to be offered for sale to anyone who wanted to buy it. To allege bad faith against a respondent in those circumstances is not being frank and open with the panel and is itself an act of bad faith, the essential element in the definition of RDNH.
As this requires the unanimous decision of the panel, such finding of Reverse Domain Name Hijacking was denied.
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