Sunday, March 26, 2017

The early bird gets the worm

In Greenvelope, LLC v. Virtual Services Corp., Wipo Case No. D2017-0006 (Christopher Gibson, February 25, 2017), the Panel denied Greenvelope’s Complaint requesting transfer of, despite Greenvelope’s ownership of the federally registered trademark GREENVELOPE and the fact that the Respondent entered no response to the Complaint.
As a reminder, to prevail in a UDRP dispute, a complainant must demonstrate three elements:
  1. The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
  2. The respondent has no rights or legitimate interests in respect of the domain name; and
  3. The respondent has registered and is using the domain name in bad faith.
Examining each of these factors in turn, the Panel first concluded that Complainant’s trademark, GREENVELOPE is confusingly similar to the domain, as Complainant’s mark “evokes the terms ‘green’ and ‘envelope,’” despite the fact that Complainant’s mark was a telescoped or conjoined mark that combined those terms into one unique term. It further found that the trademark and domain share a similar “general impression, look, sound, and meaning.” Thus, the first element was satisfied.

As to the second factor, the Panel found that, because (1) the Respondent made no use of the domain beyond using it as a landing page with links to advertisements, (2) the Respondent is not known by the name Green Envelope, and (3) the domain has not been used for any fair use or noncommercial purposes, coupled with Respondent’s failure to submit a response to the Complaint, the second element was satisfied.

But where the case fell apart for Complainant was the third factor, bad faith use and registration. Dispositive here was the fact that Respondent registered its domain in 2006, whereas Complainant commenced use of its GREENVELOPE trademark in 2009 and didn’t register such mark until 2012. In finding no bad faith registration under these circumstances, the Panel quoted the WIPO Overview 2.0, paragraph 3.1, which provides:

[W]hen a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right.
That’s a fairly straightforward and understandable rule of which Complainant likely was aware of when filing its Complaint. So why did Complainant pursue a transfer of the domain? Complainant was hoping that misinformation provided by Respondent in its Whois registration information, such as its phone number and address, would demonstrate bad faith. The Panel found that, while these failures by Respondent are relevant to bad faith, without a specific “targeting of a complainant’s trademark” at the time of registration, bad faith registration cannot be found. Accordingly, the Complaint was dismissed.

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