Company filed cybersquatting complaint against domain name registered well before it had rights in corresponding trademark.
Clean Slate Credit Solutions has been found to have tried to reverse domain name hijack the domain name GotCredit.com.
The company owns the domain name GotCredit.biz and has a registered trademark for “Got Credit?”
But the owner of GotCredit.com registered the domain and started using it years before Clean Slate Credit Solutions had rights in the mark. Thus, he could not have registered it in bad faith, according to the UDRP.
Clean Slate Credit Solutions sent cease & desist letters to the domain owner. As a result, the owner took down a blog on the domain about credit, despite having used the term before the Complainant. He changed the use to a site for filling out surveys.
Clean Slate Credit Solutions pushed forward anyway. In finding reverse domain name hijacking, the three-member National Arbitration Forum panel wrote:
…Respondent argues that Complainant knew Respondent’s registration and use of the disputed domain name predated Complainant’s registration of the GOT CREDIT? mark. Complainant provides screenshots of a series of email exchanges with Complainant’s counsel, where Respondent lays out the timeline it details for the Panel. Respondent registered the disputed domain name in October 2011. See Resp. Ex. A2. Eight years later, Complainant registered the domain name gotcredit.biz domain name on Sep. 9, 2019, and submitted a trademark application for the GOT CREDIT? mark on Oct. 31, 2019, which was registered on May 5, 2020. Later that year, Complainant began sending Respondent cease-and-desist letters. In a good faith effort, Respondent removed all content from the disputed domain name’s resolving website that could be construed as infringing on Respondent’s mark. Complainant has refused to accept this action, and has continued to demand the disputed domain name from Respondent. Complainant offered Respondent $3500 for the disputed domain name, a price Respondent finds insultingly low. See Resp. Exs. E1 – E3. Thus, the Panel finds that Complainant knew or should have known that it was unable to prove that Respondent lacks rights or legitimate interests in the gotcredit.com domain name, nor could it prove that Respondent registered and is using the disputed domain name in bad faith.
The Panel finds that there is clear evidence that before any notice of a dispute about the disputed domain name, and indeed well before Complainant even began using its mark in commerce, Respondent was using the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Counsel should have known that she could not prove either the 4(a)(ii) or (iii) elements of Complainant’s case, yet proceeded to institute this dispute nonetheless…
Delisa N. Purchase represented the Complainant. The Respondent appears to have been self-represented.
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Author: Andrew Allemann