Company asks panel for domain registered in 1999 based on a generic mark it first used in commerce in 2003.
The owner of DancePartner.com has failed to find a dancing mate in DancePartners.com through a UDRP.
DancePartner.com owner Dancesoft filed the complaint on the basis of a trademark it filed in 2003, many years after the respondent’s 1999 registration of the DancePartners.com domain name.
Beyond the fact that DancePartners.com is perfectly generic and can be used by anyone, there were some other problems with Dancesoft’s case. In fact, based on the panelist’s write-up it appears it tried to mislead the panel.
The decision states that the complainant says it registered the domain name DancePartner.com in 1998. According to historical whois records, it was not the original registrant of the domain name in 1998. It obtained the domain name sometime later, and the trademark application Dancesoft filed said the DancePartner.com mark wasn’t used in commerce until 2003.
In fact, founder Ken Greer’s former software company page says he founded Dancesoft on January 1, 2003.
That’s misleading at best.
The respondent may not have been aware of the registration date discrepancy, as it was not mentioned in the decision.
Also, it appears Dancesoft left out some important parts of the story, at least based on the panelist’s writing.
Dancesoft says it communicated with the respondent about the domain in 2010 to resolve the trademark issue. But apparently it didn’t mention that it first corresponded with the owner back in 2004, when it “sent a letter suggesting he had no right to retain ownership of the Domain Name based upon the trademark Complainant had just obtained.”
After responding to the initial letter, the domain owner didn’t hear back for many years and assumed the matter was closed. If there’s ever an argument for considering laches in a domain dispute, this would be it.
There are many other parts of this case that should have led the panel to at least considered finding reverse domain name hijacking. You can read the full decision here.
The panel found that the owner, who used the site off and on for his dance-related ventures, had rights or legitimate interests in the domain and didn’t register it in bad faith.
In case you’re wondering about the financials, Dancesoft offered to pay the “generous amount” of $1,000 for the domain name in 2009. After asking for $25,000, the respondent later lowered his price to $7,000.
My guess is it will cost Dancesoft a lot more than $7,000 if it wishes to buy the domain name now.
