Decision includes a lot of good defenses if you’re hit by a UDRP.
The case was brought by Sweden’s Rusta AB over the domain name Rusta.com.
Rusta actually owned Rusta.com before it let the domain name expire in 2001 and the current registrant picked it up. Now, you tell me: if you believe you have trademark rights in a domain and you accidentally let it expire, are you going to wait over a decade to stake a claim to it?
Also interesting in this case is that Rusta said the domain owner should have known about the company and its mark because Rusta owns Rusta.se. But the panel discovered that Rusta.se wasn’t registered until 2005!
Now back to the lead…
Here are the reasons the panel found that the domain owner had legitimate interests in the domain. It’s a good laundry list of possible defenses:
a) The Respondent registered the Disputed Domain Name as long ago as 2001;
b) The Disputed Domain Name has both a dictionary meaning and refers to a geographic location;
c) “Rustaâ€ appears to be a relatively common word used for descriptive and commercial purposes, as demonstrated by the results delivered by any search engine for this word. It is not associated exclusively with any single party;
d) None of the sponsored links which appear on the website attached to the Disputed Domain Name are in direct competition with the products offered by the Complainant, which would be an important consideration in determining whether the Respondent’s conduct may be considered fair. In this respect, the Panel accepts the Respondent’s explanation that the combination of the word “rustaâ€ with the name of a location for one of the Complainant’s warehouses appeared on the website under discussion as an automated link based on user search behaviour;
e) The Respondent has not made any attempt to sell the Disputed Domain Name to the Complainant over the past eleven years in which it held ownership of it, which may be consistent with the conduct of a domain name owner who has a legitimate interest in its domain name; and
f) The Respondent has registered other descriptive domain names, not only in Swedish, but also in French, Spanish, Chinese, Japanese, Italian and English languages.
g) The Respondent could not be expected to have known of the Complainant when it registered the Disputed Domain Name. At the time, only the one Swedish registration for RUSTA was in place (and did not have the Complainant recorded as its owner) and, on investigation by the Panel, it found that the Complainant’s own domain name rusta.se was only registered in 2005, about four years after the registration of the Disputed Domain Name by the Respondent.