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Ancien 21/06/2012, 08h34
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Exclamation Vanity.com Lost In A UDRP Despite Pending Federal Court Case: Asking $1M For A Domain

Vanity.com Lost In A UDRP Despite Pending Federal Court Case: Asking $1M For A Domain Is Bad Faith
by Michael H. Berkens

(emphasis is mine)

In a case that should be VERY troubling for all domain holders the a one member UDRP panel just awarded the domain name Vanity.com to a Vanity Shop of Grand Forks, Inc, a trademark holder, despite the fact that the domain holder already filed a case in Federal Court asking for a declaratory judgement that is was not infringing on the complainant's trademark.

So lets be clear here.

The UDRP panel could have, and in our opinion should have, not even ruled in this UDRP since the domain holder ALREADY filed a case in federal court. but decided to make a ruling anyway and decided to take the domain away.

Having read the decision the decisive factor seems to be the domain holder offered to sell the domain for $1,000,000.

Here are the relevant facts and finding by the one member panel:

"Complainant owns numerous federal trademark registrations for the VANITY mark, issued by the United States Patent and Trademark Office (“USPTO”)

"Complainant and Respondent’s marks are virtually identical; Respondent has not been commonly known by the disputed domain name; Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name; Respondent is using the disputed domain name to direct consumers to its own website offering information, blogs, chat groups, and social media links on beauty, fashion, health, and self topics"

"Respondent is targeting the same consumer group as Complainant with its website"

"It is inconceivable that Respondent was not aware of Complainant when it acquired the disputed domain name; Respondent’s disputed domain name is causing confusion among consumers as to whether or not Respondent’s site is affiliated with Complainant;

Respondent offered to sell the disputed domain name to Complainant for $1,000,000 after Complainant offered to purchase the domain name from Respondent"

"Respondent has attempted to attract Internet users to Respondent’s commercial website by creating a likelihood of confusion with Complainant’s marks."

"Respondent recently filed a civil action against Complainant in the United States District Court, Northern District of California for a declaratory judgment of non-infringement with respect to Respondent’s registration and use of the Vanity.com domain name; Respondent’s filing of a civil complaint in District Court takes precedent over this proceeding; Respondent registered the disputed domain name in 1995, over seventeen years ago"

"Respondent owns active and valid federal trademark registrations issued by the USPTO for the VANITY.COM mark (e.g., Reg. No. 3,720,766 registered December 8, 2009

"Respondent’s Vanity.com domain name is composed of a common English word, such that bad faith could not possibly have persisted; Respondent requests the Panel dismiss the Complaint without prejudice."

"In situations where concurrent court proceedings are pending, as is the situation with respect to the instant Complaint, some panels have chosen to proceed with the arbitration filing. "

"This administrative proceeding under the Policy concerns only control of the Domain Name, not any of the other remedies at issue in the federal litigation. It is not binding on the court, and it does not preclude the prosecution of any claims, defenses, or counterclaims in the federal litigation”

"The Panel chooses to proceed to a decision."

"Complainant asserts that it registered the VANITY mark with the USPTO (e.g., Reg. No. 1,780,669 registered July 6, 1993). Complainant submits a printout from the USPTO website , which indicates that the mark is registered and that Complainant is the owner of the registration."

"Complainant also asserts that its VANITY mark is virtually identical to Respondent’s mark. "

"Complainant argues that Respondent has never been commonly known by the disputed domain name. "

"The Panel notes that the WHOIS information identifies the registrant of the vanity.com domain name as “Vanity.com, Inc.”

" The Panel also notes that there is no other evidence on record addressing this issue. Therefore, even though the Panel finds that the WHOIS information appears to indicate that Respondent is commonly known by the disputed domain name, the Panel concludes that Respondent is not commonly known by the <vanity.com> domain name under Policy ¶ 4(c)(ii). "

"Complainant also argues that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <vanity.com> domain name. "

"Complainant states that Respondent resolves the <vanity.com> domain name to a commercial website offering information, blogs, chat groups, and social media links on beauty, fashion, health, and self topics. Nonetheless, the Panel finds that Respondent is not engaging in a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <vanity.com> domain name under Policy ¶ 4(c)(iii)."


"Complainant alleges that Respondent offered to sell the <vanity.com> domain name to Complainant for $1,000,000. "

"Complainant states that it initially offered to purchase the <vanity.com> domain name for $4,500-$10,000 dollars, based upon an appraisal of the domain name’s worth provided by GoDaddy. "

"Based upon the offer made by Respondent, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(i). "

"Complainant also alleges that Respondent’s disputed domain name is causing confusion among consumers as to whether or not Respondent’s site is affiliated with Complainant."

"Complainant states that Respondent has attempted to attract Internet users to Respondent’s commercial website by creating a likelihood of confusion with Complainant’s marks. "

"The Panel agrees with Complainant’s allegations and statements, the Panel finds that Respondent registered and uses the disputed domain name in bad faith according to Policy ¶ 4(b)(iv)."

"Complainant position is that it is inconceivable that Respondent was not aware of Complainant when it acquired the disputed domain name."

" The Panel finds that Respondent had actual knowledge of Complainant’s rights in the VANITY mark when it registered the disputed domain name, the Panel concludes that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii)."

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the Vanity.com domain name be TRANSFERRED from Respondent to Complainant."
Comments

IMO the critical bit is not:
Having read the decision the decisive factor seems to be the domain holder offered to sell the domain for $1,000,000.
but:
Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name; Respondent is using the disputed domain name to direct consumers to its own website offering information, blogs, chat groups, and social media links on beauty, fashion, health, and self topics"
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