Get a free XYZ – Per Network Solutions in 2014.
A Swiss company filed a UDRP for the domains Regofix.com and Regofix.xyz, claiming it infringed on their REGO-FIX mark.
The trademark was registered in Switzerland in 1997. Meanwhile, a former partner of the company, residing in Singapore, registered the .COM in 1996.
Once their partnership ended several years ago, they offered the .com for sale to the Complainant.
Last year, the Respondent registered the matching .XYZ domain as well. According to the Respondent’s statement:
“First, it says it registered the first disputed domain name when it was a reseller of the Complainant’s products and they made up a substantial part of its business. Secondly, as noted above, it says it is selling Zurn products which incorporate the Complainant’s products. Thirdly, it says it has not used either disputed domain name to advertise or suggest it is selling the Complainant’s products and no-one going to its site would be misled into thinking it was the Complainant’s website or that it was offering for sale the Complainant’s products. The Respondent does not claim to be commonly known by the disputed domain names.”
The matching .XYZ was most likely a free domain “robo-registration” that Network Solutions offered at the time, to owners of .com domains.
That second domain, was registered in bad faith, according to the panelist:
“Accordingly, while the Panel finds that the second disputed domain name was both registered and is being used in bad faith, the Panel finds that the Complainant has not established that the first disputed domain name was registered in bad faith and so fails against that disputed domain name on this issue.”
Warwick A. Rothnie, sole panelist, thus decided to order that Regofix.com remains with the Respondent, while Regofix.xyz is to be transferred to the Complainant. Quite humorous!
For the full text of the UDRP decision, click here.
How can the Registrant registered the domain name in bad faith when it was registered automatically? Is it just me who does not get it?
Marek – That’s one of the issues raised last year about freebies without the registrant’s consent.