An offer to sell for high $ may not be evidence of bad faith
Nothing, and I mean nothing, makes trademark owners angrier than telling them they can buy your domain for $100,000, or more, particularly if the correlation between their mark and the domain name that you own is very high. This anger can often blind them to the legal issues in question in a UDRP proceeding, as they become so incensed about what they perceive as a demand that amounts to extortion, and may file a UDRP without good evidence to support their argument of bad faith registration and use.
Here’s a case precisely on point: the recent denial of a UDRP filed at WIPO over the domain gea.com. The owner of the trademark, GEA Group Aktiengesellschaft of Dusseldorf, Germany, apparently admitted in their complaint that they tried to purchase the domain, but the owner said he wouldn’t sell for anything less than some multiple of $20,000-$40,0000.
… the Respondent’s refusal to accept the Complainant’s various offers to purchase the Disputed Domain Name [gave] the impression that the Respondent [would sell] the Disputed Domain Name for considerably more than the USD 20,000 – 40,000 offers that it had turned down from other parties. As a consequence the Complainant says that the remaining impression is that the Respondent registered and used the Disputed Domain Name in bad faith.
But, wait just a second.
[The Complainant] says that the Disputed Domain Name was registered long after the Complainant first used the GEA mark as early as the 1920s and that the Respondent appears to use the Disputed Domain Name both for non-commercial and for commercial services in relation to its G. E. A. Design services business. (emphasis added)
It’s entirely possible to engage in legitimate noncommercial or fair use of a domain name containing a trademark. Indeed, it’s even possible, under the UDRP, to engage in commercial use of a domain name that contains a trademark or a term that’s potentially confusingly similar to a trademark provided the registrant has some legitimate rights or interests in the domain name. As we’ve seen before, that’s not a very high bar. And it looks like the Complainant even acknowledged this fact, perhaps unintentionally, in its Complaint.
If so, oops.
And here’s why that’s not a good idea, if you’re a Complainant (and great if you’re a Respondent in a similar situation as this guy):
… the Panel notes that GEA reflects the Respondent’s initials and that he historically and currently uses the Disputed Domain Name for his personal email address. Although it appears that the Respondent initially used the website for his database entry and design business under the “G.E.A.” Design name which would also explain his choice of registering a domain name in the “. com” domain space, it also appears that he has not used the website for this purpose for many years and that he has not used the Disputed Domain Name for any ulterior or illegitimate purpose. (ed. those uses alone would almost certainly be legitimate.)
…
The Respondent has a legitimate explanation for its use of GEA in the Disputed Domain Name based on the use of initials and the Respondent’s original business name and the Panel accepts the Respondent’s explanation that he was not aware of the Complainant’s mark at the date of registration of the Disputed Domain Name.
The Panel notes that at the time of registration and while the Respondent’s business was still operational, it is highly unlikely that the Respondent sought to trade off the Complainant’s reputation by attracting Internet users seeking the Complainant’s services. There is nothing before the Panel to contradict the Respondent’s explanation that he was operating a largely personal site even while providing files off the site which clients could download. Further considering the respective business sizes it seems unlikely to the Panel that the Respondent was ever in real competition with the Complainant.
So the complaint must fail, even though the registrant apparently indicated that he’d sell the domain name for an amount far in excess of its registration costs, which is one of the pieces of evidence specifically described by the UDRP under the bad faith registration and use requirement. Why is that?
Because there were rights or legitimate interests to rely on here.
… the Panel notes that the Respondent has apparently refused numerous offers for sale of the Disputed Domain Name from various organizations, including from the Complainant, on the legitimate basis that it has used its email address from this website for many years and that to sell it and to have to change email addresses would cause the Respondent considerable disruption and inconvenience. In these circumstances the suggestion by the Complainant of its impression, based on its lawyers’ communications with the Respondent in 2009, that the Respondent would be prepared to sell the Disputed Domain Name for a substantial multiple of the USD 2,000 sum offered by the Complainant, carries little weight. (emphasis added)
This is a good example of how the various prongs of the UDRP intertwine upon and inform one another. But, as always, as a potential complainant, you should be wary of trying to solicit the sale of a domain name you’re intending to file against, as you may end up looking like you’re trying to skirt around your inability to prove bad faith or lack of rights or legitimate interests. And, as a potential respondent, be aware that making a large offer to sell won’t necessarily be used against you later, but you should be absolutely sure about your position with respect to bad faith registration and use, or rights or legitimate interests!
There was also a bit of language in this case about the Complainant’s delay, in that they are an international company that’s been around since the 1920s, and apparently didn’t contact the Respondent until 2009, quite a few years after the domain was registered in 1995.
Tagged bad faith registration and use, denied, evidence, fair use, gtld, laches or statute of limitations, registered trademarks, rights or legitimate interests, WIPO