Friday, May 26, 2017

Cybersquatter gets taken to school

In Bartram Academy, Inc. v. Al Perkins, WIPO Case No. D2017-0584 (Benoit Van Asbroeck, May 18, 2017), the Panel transferred the domain to Complainant. This is a rare case of old-fashioned cybersquatting, where a respondent registers a domain name that exactly matches a complainant's trademark. Most of those domains are now in the hands of their rightful owners, and indeed such was the case here. In that sense, the case also serves as a reminder of the importance of renewing domain name registrations, as it was the failure to renew such registration that resulted in the domain being snatched up by a cybersquatter.

In this UDRP case, Complainant owns and operates a preschool and child care facility in Florida, and has done so since 2012. It obtained a Florida state trademark registration for BARTRAM ACADEMY in January 2017. In March 2017, however, it allowed its domain registration for to lapse. Enter Respondent, who scooped up the domain upon expiration and redirected the domain to a website featuring adult-oriented content. I bet there were some angry parents!

The opinion, as you can imagine, was routine and predictable as to its outcome. Examining the three factors necessary for Complainant to prevail, the Panel had no problem readily finding for Complainant, especially since Respondent filed no formal response, other than advising the Panel "Shame they chose this route I was gonna give it them free lol but they chose to waste Money." Yeah, somehow I doubt it-- props to the school for not giving in and encouraging cybersquatting behavior.

Examining the first factor, whether the domain is identical of confusingly similar to a mark in which Complainant has rights, the above-referenced state trademark registration, thought just recently obtained, was sufficient to meet the requirement.

As to the second factor, whether Respondent has rights or legitimate interests in the disputed domain, the Panel noted Respondent has no affiliation with Complainant and is not known by the name BARTRAM ACADEMY. But dispositively, the Panel emphasized "that the Respondent registered the disputed domain name with the intention of selling it for an amount in considerable excess of its out-of-pocket expenses or, alternatively, of making a profit by redirecting the website to a pornographic website." Under the UDRP, nothing legitimate there.

As to the final factor, whether the domain was registered and used in bad faith by Respondent, the Panel emphasized that "Respondent intended to sell the disputed domain name for valuable consideration in excess of its out-of-pocket expenses related to the disputed domain name." It then noted that such action "constitutes compelling evidence of registration and use in bad faith." Further, the Panel emphasized that "Respondent also appears to have made use of the disputed domain name to redirect visitors towards a website with pornographic content," holding that "the diversion of domain names to a pornographic site is consistent with a finding that the disputed domain name is being used in bad faith." And such, the domain was transferred back to its rightful owner.

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