The law is the law.
Here’s some news, now: If you agreed to buy a domain at a price, and had a change of heart, filing a UDRP 14 years later, that might come back and sting you in the butt.
In a UDRP filed for the domain name NewsNow.com, the Complainant, NewsNow Publishing Limited of the UK, attempted to wrestle the domain away, using a 2012 trademark.
NewsNow.com was registered in 1997.
That attempt didn’t sit too well with John Berryhill, the Respondent’s attorney, who successfully delivered a barrage of a response:
- Respondent’s registration of the disputed domain name predates Complainant’s alleged first-use date of the NEWSNOW mark. Also, Complainant presents no evidence of common law service mark rights that might have existed prior to Complainant’s USPTO registration for that mark in 2012. Moreover, the language in that registration does not provide definitive evidence of said first-use date.
- The generic nature of the term, news now, was undoubtedly the reason that Complainant’s application for its USPTO registration was so protracted and explains why Complainant failed to register its mark in its home country, the United Kingdom.
- Complainant’s registration of other domain names that include the “news now” term does not confer upon Complainant trademark rights that might affect another’s registration of the disputed domain name. Also, Complainant obtained the <newsnow.net> domain name only because the original registrant, Respondent, allowed his registration effort to lapse in favor of Complainant.
- Respondent is a Canadian journalist who, since the mid-1980’s, has written for and been published by many noteworthy publications in Canada, the United States and the United Kingdom. Respondent registered the disputed domain name because the terms, news and now, relate directly to the publication of news and to his career as a freelance journalist.
- Respondent’s initial plans to develop a website for the disputed domain name were interrupted in 2000 by his agreement to sell the name to Complainant for £30,000. Following Complainant’s failure to pay and breach of that agreement, Respondent has used the domain name in association with a directory of news sites, and paid advertising links, relating to the descriptive meaning of the phrase, “news now.”
- Under the policy, bad faith registration of a domain name must be aimed specifically at a complainant and, since Complainant was nonexistent at the time of registration, Respondent could not have registered the disputed domain name in bad faith. Moreover, Respondent’s offer to sell the disputed domain for various prices at various times is no indication of bad faith, as Complainant had earlier entered into an agreement to buy the name based on Respondent’s senior rights in that name.
- Because Complainant has allowed Respondent to own and use the disputed domain name for seventeen years without challenge, the doctrine of laches should apply to preclude a finding in Complainant’s favor.
The three member panel, consisting of Carolyn M. Johnson, James A. Carmody and Dennis A. Foster delivered a decision of dismissal in this case, essentially granting the Respondent full use of the domain.
For the full text of the UDRP on NewsNow.com, click here.
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