UDRP denied.
BathDepot.com is an aged, generic domain registered in 2004.
A dozen years later, it was challenged by 9170-4205 Quebec Inc. of Blainville, Quebec, Canada that stated it infringes on their mark BATH DEPOT.
The latter was granted registration in Canada and the US in 2008.
The Respondent is an Indian company that called the Complainant’s marks “common and descriptive.”
According to the UDRP:
“The Respondent represents that it had activities in association with its corporate partner Magick Woods Ltd. in the business of furniture and bath fittings since about 1996, registered the disputed domain name in 2004, two years before the Complainant was incorporated in 2006, and four years prior to their BATH DEPOT Trademark registration in 2008, and had even registered a few related domain names with a clear intention of using them for the creation of an online ecommerce portal which eventually did not take place.”
The WIPO panelist stated:
“The registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then none existent right. The Panel adopts this position which clearly applies to the present circumstances of the case […] the Panel finds that the registration of the disputed domain name on February 12, 2004 was not in bad faith.”
Subsequently, J. Nelson Landry, sole panelist, ordered the domain to remain with its owner. The panelist refused to issue a finding of Reverse Domain Name Hijacking, as requested by the Respondent.
For the full text of this UDRP decision for BathDepot.com, click here.
J. Nelson Land sole panelist: Upon considering the Respondent’s submissions on this point and the evidence of the Complainant’s rights, the Panel does not consider this a case of Reverse Domain Name Hijacking, but J. Nelson Land doesn’t say WHY NOT.
The complainant was represented by attorneys Kaufman Laramée LLP, Canada with specialism in Intellectual Property so would have perfectly known that they could not prove the vital element that the domain name was registered in bad faith but they still proceeded with this UDRP.
WHY no Reverse Domain Name Hijacking? Panelists need to state reasons.
J-J : Most likely because the existence of a registered trademark satisfied one of the three elements of the UDRP. If it were e.g. a pending tm then things might have been different.