The panelist handling the UDRP against OpenTime.com, delivered a shocking decision, handing over the 17 year old domain to the Complainant.
In this case brought at the WIPO, the Complainant is Connecting Open Time, LLC of Lewisville, Texas, that adopted and first started using the OPENTIME trademark in or about November 2014, when it launched its opentimeapp.com web site.
The actual registration of the OPENTIME mark with the USPTO, occurred on January 3, 2017.
Meanwhile, the Respondent acquired OpenTime.com from Afternic, on May 2016, and subsequently registered a Japanese trademark for OPENTIME on October 21, 2016.
During the UDRP process, supplemental filings were made by both the Complainant and the Respondent; the latter, asserted that when they acquired the domain on Afternic, they also acquired any prior rights to the mark:
“Respondent further asserts that its rights in the disputed domain name date back to September 26, 2000 because Respondent is a successor-in-interest to the use of the disputed domain name made by his predecessors-in-interest by virtue of the “Afternic Membership Agreement” (pursuant to which Respondent acquired the disputed domain name in or about May 2016).”
Georges Nahitchevansky, sole panelist at the WIPO, pretty much crushed that argument, stating:
“A review of that claimed Afternic Legal Agreement, however, only provides that a selling party represents that it does not hold any trademark rights in the domain name being sold and that if any rights exist the selling party will transfer such upon request to the purchasing party without charge.
Consequently, Respondent, at best, could have only acquired the trademark rights, if any, of the party from whom Respondent purchased the disputed domain name. That being said, Respondent provided no actual agreement transferring trademark rights—if any could even be said to exist—from the party from whom Respondent purchased the disputed domain name in or about May 2016 and provided no evidence, despite being requested to do so in Procedural Order No. 1, on how trademark rights, if any, in the disputed domain name would have flowed to Respondent through at least five prior different owners since September 2000 – parties that Respondent had no privity of contract with.
Thus, the Panel concludes that Respondent’s rights in the disputed domain name do not flow back to September 2000, as Respondent misleadingly claimed in its Response, but arose in May 2016, when Respondent acquired the disputed domain name.”
Practically, this means that the section of the Afternic agreement transferring trademark rights via a domain sale, is of no value, if such rights do not exist in the first place.
The panelist ordered OpenTime.com to be transferred to the Complainant; read the full text of this UDRP decision.
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