TwinLakes.com UDRP : Estoppel a plausible domain defense

The domain TwinLakes.com was hit by a UDRP, 12 years after its registration date in 2005.

The Complainant, Twin Lakes Telephone Cooperative Corporation, is in possession of the registered mark WIN LAKES COMMUNICATIONS.

According to the Complainant, Respondent offered to sell the domain name for $50,000, an amount in excess of the typical out-of-pocket costs for domain name registration and maintenance and a magnitude greater than the $10,000 offered by Complainant.

The Respondent, represented by Zak Muscovitch of Muscovitch Law P.C., Canada., outlined these key points in their defense:

• Complainant has registered the TWIN LAKES COMMUNICATIONS mark with the USPTO, while the TWIN LAKES mark application is currently pending. See Compl., at Attached Annex 1a–1c. Therefore, Complainant can only rely on the TWIN LAKES COMMUNICATIONS mark in this proceeding. Complainant has no common law rights in the TWIN LAKES mark as it has imparted no secondary meaning into it.
• Respondent has rights and legitimate interests in the disputed domain name. Respondent’s business of investing in descriptive terms to create and supply domain names imparts a legitimate interest in the disputed domain name.
• Respondent’s use of the domain name is not in bad faith, as Complainant’s asserted mark did not exist at the time of Respondent’s registration of the domain name. Respondent’s registration of twinlakes.com pre-dates Complainant’s filing and registration for the TWIN LAKES COMMUNICATIONS mark.

The 3 member panel at the National Arbitration Forum found that the domain name is a generic expression as well as a geographic one.  Respondent has never identified Complainant or tried to do it any harm.  There is no evidence of Respondent having targeted Complainant, or of even being aware of Complainant.

Additionally, there is a mention of estoppel:

“The principle that precludes a person from asserting something contrary to what is implied by a previous action or statement of that person or by a previous pertinent judicial determination.”

Moreover, the 12 year delay between Respondent’s registration of the domain name and the bringing of this action presents equitable grounds for invoking estoppel as a potential defense to this untimely Complaint.

We’ve seen the doctrine of laches being invoked before but not estoppel.

In the end, the panelists John J. Upchurch, Carolyn Marks Johnson and Neil Brown denied the Complainant’s request for a domain transfer.

There was no finding of Reverse Domain Name Hijacking, despite the Respondent’s request.

For the full text of the decision for TwinLakes.com click here.

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