A registered trademark does not give automatic rights to a domain.
Amazing.
Despite not responding to the UDRP against the domain, Candi.com, its registrant managed to retain control of it.
The Complainant is Candi Controls, Inc. of Oakland, California, United States of America (“U.S.”), represented by Paradigm Counsel LLP, U.S.
Note: Candi.com is parked with a zero click lander that often displays fake malware warnings. We advise you not to visit it.
According to the UDRP, they claimed that CANDI is an acronym; they own several trademarks that contain the word CANDI, but not solely for CANDI.
For the latter, they claimed common law rights.
Complainant asserts that in or about 2009 it coined the phrase “Cloud-Assisted Network-Device Integration”, or CANDI for short, to describe its technology. Complainant also asserts that it has, since 2009, continuously used the mark CANDI in connection with its services, either as part of the mark CANDI CONTROLS or standing alone (since at least 2011), and that it owns common law rights in CANDI as well as a trademark registration for CANDI CONTROLS. Complainant has also licensed the mark WORKS WITH CANDI in association with Complainant’s proprietary platform and application program interface for networking solutions.
Complainant contends that the disputed domain name is identical to the non-generic or descriptive portion of Complainant’s trade name and Complainant’s CANDI CONTROLS, CANDI and WORKS WITH CANDI marks.
Georges Nahitchevansky, sole panelist, opposed the Complainant’s claims, stating:
The fact that Respondent has been found to have registered and used domain names in bad faith in the past is certainly evidence of a pattern of bad faith and certainly would be more potent here if there were some evidence that Respondent was seeking to exploit the trademark value of CANDI as a trademark of Complainant. Such evidence, however, was not submitted, and links to items unrelated to Complainant and based on other uses of “candi” (such as the food item candy, or a geographic location) simply does not establish a lack of rights, legitimate interests or bona fide use in this instance.
In this regard, it should be noted that Respondent appears to have obtained the disputed domain name through a February 2014 U.S. District Court order that turned over control of multiple domain names, including the disputed domain name, to Katz who then moved the disputed domain name to Respondent. See Section 4 supra. In the Panel’s view, had the use of the disputed domain name prior to or after the turn over been done to exploit a trademark association with CANDI as a trademark, then Respondent’s lack of legitimate interests would likely be apparent.
Here, the evidence provided by Complainant shows use of the disputed domain name in connection with PPC links related to “candy” or “female names” from 2005 until late 2012, and a February 2016 landing page with links to promotions for “candy”, “weddings” or “geographic locations”. There is simply no evidence of any use of the disputed domain name to take advantage of Complainant’s trademark rights in CANDI CONTROLS or CANDI.
For the full text of the UDRP decision, click here.
