A registered trademark does not give automatic rights to a domain.
Bigfoot Ventures LLC of New York, attempted to grab a recently registered domain, Slized.com via the UDRP process, at the WIPO.
Its French registrant managed to not only fight back and keep the domain, but also to convince the panel to deliver a finding of Reverse Domain Name Hijacking.
Slized.com was registered in January of this year, after the Respondent in this UDRP found it as available on the ExpiredDomains.net web site.
When contacted by the Complainant to acquire the domain, the Respondent sought a sum of “around xxxx US Dollars”.
According to the UDRP, the Complainant is the owner of registered Benelux trade mark No. 0809251 for the word mark SLIZED, filed on October 10, 2006 and subsequently registered on January 5, 2007 in classes 9, 25 and 41.
Matthew S. Harris, sole panelist, challenged the Complainant’s use of the alleged mark:
“However, this is not just a case where a complainant has failed to file an adequate complainant. First, the Complainant’s contentions are of themselves commercially implausible.
Why would a business based in New York that had (if the Complainant is to be believed) since 2007 continuously used the term “Slized” as a mark in “global commerce”, only seek to register that mark as a trade mark in the Benelux states?
Second, the Respondent has brought forward evidence, by reference to websites and social media pages controlled by the Complainant or associated companies, which suggests that this mark has not been used by the Complainant at all.”
The panelist proceeded with denying the Complainant’s request to transfer the domain, and slapped them with a RDNH finding.
For the full text of the UDRP decision on Slized.com, click here.
