A registered trademark does not give automatic rights to a domain.
We recently covered the outcome of the UDRP against the aged domain, KidsAndUs.com.
In that case, the WIPO panelist mentioned that the domain’s registration predates that of a claimed mark by several years.
It seems that a trio of WIPO panelists are also taking the same approach, in the UDRP against the domain SnoreFix.com.
The beauty of this decision: there was no official response by the Respondent.
The UDRP was filed by Snore Fix Inc. of Arcadia, California who holds a trademark for SNORE FIX since 2014.
The domain SnoreFix.com was registered in 2006, predating the earliest claim of use of the mark by the Complainant (2012,) by 6 years.
Furthermore, the Complainant asserted that because the Respondent owns a lot of “undeveloped” domains, that somehow indicates bad intentions:
“According to the Complainant’s searches on Google, the Respondent owns over 3,633 domain names, most of which are characterized as pointed to “undeveloped” websites.
The Complainant also asserts that the Respondent does not appear to be known as anything other than “Top Business Names” and that the Respondent is not using the disputed domain name for a legitimate noncommercial or fair use given that it is intentionally using the disputed domain name to redirect to another website, misleading consumers and tarnishing the Complainant’s trademark SNORE FIX.”
That’s some ballsy and inaccurate assertion, and one that was tossed out by the trio of WIPO panelists, that stated:
“[…] the Complainant’s further assertions as to the Respondent’s use of the disputed domain name, the other UDRP cases in which the Respondent was involved – one of which was in fact decided in favor of the Respondent there, contrary to the indications of the Complainant – and the Respondent’s alleged ownership of a relevant number of domain names, are not sufficient by themselves to establish the Respondent’s bad faith under paragraph 4(a)(iii) of the Policy.
However that may be, in view of the above, the Panel finds that the Complainant failed to prove that the Respondent registered the disputed domain name in bad faith having the Complainant’s trademark in mind and with the intention to target the Complainant’s trademark.”
The domain SnoreFix.com was thus ordered to remain with its owner.
For the full text of the UDRP decision, click here.
