Panel gets decision right, but misses mark on RDNH.
Burn World-Wide, Ltd. d/b/a BGT Partners of Miami, Florida, has lost a UDRP case to get the domain name BGT.com from Banta Global Turnkey Ltd, which is now part of RR Donnelly.
The facts of the case are pretty egregious. Banta was founded well before BGT Partners and even registered the domain name before BGT Partners was formed. The three person arbitration panel found that the domain name wasn’t registered and used in bad faith. But shockingly, it did not find that BGT Partners attempted reverse domain name hijacking by bringing the case.
Up front, the panel wrote that the circumstances of the case would normally constitute RDNH:
Such a finding would normally follow having regard to the longevity of the Respondent’s registration of the disputed domain name, commencing many years before the Complainant adopted its trademark.
But then it tries to rationalize why that isn’t the case here:
A number of considerations, however, lead to the conclusion that such a finding is not warranted in the present case.
First, in addition to its use for the portal, web mail and ftp server services historically provided by the Respondent, the disputed domain name has resolved since 2007 to the website which mirrors RR Donnelly’s general website which promotes a range of goods and services much wider than the activities historically conducted by the Respondent. This change was consequent on RR Donnelly acquiring Banta Corporation. It is arguable, as the Complainant contends, that the usage in relation to at least some aspects of that website may infringe the Complainant’s rights. The Panel, however, expresses no concluded view on that question in view of its findings above. Nonetheless, the Respondent has not adequately explained why the disputed domain name resolves to such a general website rather than one related to the specific services comprised in the Respondent’s business.
Moreover, the Complainant was not in a position to ascertain that the Respondent was continuing to provide its services through the disputed domain name as it would appear that knowledge of the specific subdomains being used by the Respondent, and possibly appropriate passwords, was required.
Thirdly, the Octogen and Mummygold cases could be seen as at least opening the door to the Complainant’s claim.
That’s pretty weak. Note the mention of the Octogen cases that the complainant brought up. This is the newly popular theory amongst some panelists that a domain name doesn’t have to be registered in bad faith; only used in bad faith.