HOLA S.L. v. North Sound Names et al.
Claim Number: FA1407001570171
Complainant: HOLA S.L. of Madrid, Spain.
Respondent: North Sound Names of Grand Cayman, International, Cayman Islands, et al. .
Respondent Representative: John Berryhill of Ridley Park, Pennsylvania, United States of America.
REGISTRIES and REGISTRARS
Registries: Uniregistry, Corp.
Registrars: Uniregistrar Corp
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
Omar Haydar, as Examiner.
Complainant submitted: July 17, 2014
Commencment: July 21, 2014
Response Date: August 4, 2014
Having reviewed the communications records, the Examiner finds that the National Arbitration Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
The complaint and findings relate to one domain <hello.photo>. There is one Compainant and one or more Respondents, and no domain names were dismissed from this complaint.
The Respondent has registered the domain name <hello.photo>, and is the owner of many other domain names, many containing similar commonly used generic terms, purchased primarily for the purpose of resale.
Complainant, HOLA S.L. of Madrid, Spain, is the owner of trademark “HELLO!”, which has been registered in one or more countries.
Complainant has claimed that the domain name in question is identical to their protected word or mark; that the Respondent has no legitimate right or interests to the domain, and that the Respondent has registered the domain name in bad faith, for the purpose of selling it to the Complainant.
Respondent has challenged that Complainant has not shown that the protected mark is in current use. Respondent has also claimed that the protected mark includes an exclamation point, whereas the domain name does not. Further, Respondent claims the domain involves a commonly used generic term, and is consistent with their business of acquiring domain names including common terms for the purpose of resale. Lastly, the Respondent claims that Complainant has not proven bad faith in the purchase and use of the domain name, and claims the purchase was in good faith based on their business model.
URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended.
1. The registered domain name(s) is/are identical or confusingly similar to a word or mark for which the Complainant holds a valid national or regional registration and that is in current use.
2. Respondent has no legitimate right or interest to the domain name.
3. The domain name(s) was/were registered and are being used in bad faith.
The Examiner finds that Complainant has proven that the domain name is identical through evidence of the trademark registration. Notwithstanding that Complainant has failed to provide evidence of the current use of the trademark and that the trademark differs by including an exclamation point, Examiner finds that the domain name is identical to the protected mark.
The Examiner finds that the evidence fails to prove that Respondent has no legitimate right or interest to the domain name. The Complainant has provided no evidence of such, and without clear and convincing evidence, there is not a presumption of such.
The Examiner finds that the evidence fails to prove the domain names were registered and are being used in bad faith. Although the Complainant has established that the domain name is identical to their protected mark and that Respondent has purchased the domain name for the purpose of reselling it, this by itself does not necessitate bad faith on the part of the Respondent. Previous decisions involving domain names based on generic, commonly used terms are consistently denied, protecting the right of domain registrants to retain such domains against trademark owners. These include <hood.com> (FA0408000313566), <cotton.biz> (FA0205000114388), <deluxe.biz> (FA0204000112601), <stage.com> (FA1203001434227), <target.org> (FA0405000267475), <ace.com> (FA0802001143448), <shoppers.com> (FA0802001142605), ), <zero.net> (FA0712001118584), <acquire.com> (FA0604000671532), <tiger.com> (FA0311000214418),<boy.com> (FA0304000154646), and <cartoys.net (FA0002000093682) amongst others. In such cases, for the complainant to prevail, there must be some other proof to evidence bad faith, such as actual notice of trademark prior to registration (<ancestry.com> FA1405001560028) or evidence of a pattern of registering domains using protected marks (<despair.net> FA1203001435300). The Examiner also finds guidance for the general right to register domain names based on such generic terms that may be identical or relate to protected marks from the WIPO decision in Zero Int'l Holding v. Beyonet Servs. (WIPO May 12, 2000) which found “"Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis." Thus, holders of protected marks which are also commonly used, generic terms should ensure prompt registration of their desired domains, as their trademarks, on their own, will not suffice to succeed on claims against registrants of such domain names.
After reviewing the parties’ submissions, the Examiner determines that
the Complainant has NOT demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be RETURNED to the control of Respondent.
[hello.photo]
Omar Haydar, Examiner
Dated: August 09, 2014
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