UDRP was denied.
The UDRP against the domain PawLuxury.com failed, despite a lack of response by its registrant.
Complainant is TDBBS, Inc. of Henrico, Virginia, who utilized the services of Threshold Counsel, PC.
The Complainant asserted the following:
Complainant is the owner of registration for the word service mark PAWLUXURY on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 3,698,575, registration dated October 20, 2009, in international class 35, covering “online retail store services in the field of pet supplies”. In its application for registration, Complainant asserted a date of first use and first use in commerce of April 8, 2008.
Complainant operates a commercial website at “www.pawlux.com”, where it hosts an online retail store in the field of pet supplies.
According to the Registrar’s verification, Respondent is registrant of the disputed domain name. According to that verification, the date of creation of the record of registration is December 7, 2003, and Respondent has been the registrant since that date.
According to Complainant, “the website has been inactive since at least as early as 2005”.
The sole panelist at the WIPO, Mr. Frederick M. Abbott, examined the case’s particulars, and delivered two out of the three points in favor of the Complainant:
The Panel determines that Complainant has rights in the service mark PAWLUXURY and that the disputed domain name is identical to that service mark.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
The final determination of a refusal to transfer the domain, was based on the following finding:
Respondent registered the disputed domain name approximately five years prior to Complainant’s asserted first use of its service mark. Respondent has maintained its registration of the disputed domain name since then.
Complainant appears to be aware that it does not have a valid basis for arguing that Respondent’s initial or creation registration was undertaken in bad faith because such registration substantially precedes Complainant’s acquisition of service mark rights.
It is important to point out that ownership did not change since the original registration predating the Complainant’s mark, therefore there was no bad faith in the original registration.
For the full text of this UDRP for the domain PawLuxury.com, click here.
So panelist didn’t even consider RDNH? Even though the complainant was represented by lawyers who would have known that the domain name couldn’t have been registered in bad faith having been registered before complainant had any registered trademark rights.
Sergio – To get a finding of RDNH the Respondent would have to a) actually respond and b) ask for such a finding to be delivered.