True Religion can’t get TrueReligion.com domain name through UDRP.
In July I wrote about how True Religion (NASDAQ: TRLG), maker of premium denim products, had filed a UDRP against the owner of TrueReligion.com to try to get the domain name.
Pretty much everything I predicted in my post was correct: The owner owned the domain since well before True Religion’s brand existed, he registered and used it for legitimate purposes (to discuss religion), and later started using it in a way to take advantage of the jeans company.
Based on the UDRP, this complaint must fail. The majority agreed because the domain owner had rights or legitimate interests in the domain and didn’t register it in bad faith.
But one panelist, Scott Donahey, disagreed.
Some panelists believe that a complainant should “win” the third prong of a UDRP – that it is registered and used in bad faith – if it is either registered in bad faith or used in bad faith.
In this case, the domain has clearly been used in bad faith. The registrant admits that he changed the site to take advantage of the jeans company:
In 2009 the Respondent says that he noticed that the disputed domain name was receiving up to 1000 hits per day but that it appeared that these visitors were seeking the Complainant’s clothing brand. This factor negatively affected the statistics of page visits on his Islam based sites so he says that he stopped directing its traffic to his Islamic websites and started making use of it through Google’s Adsense program. He submits that the current “for sale” price of the disputed domain name at USD 380,000 is a reasonable price for a domain name that is attracting 1000 hits per day.
Yet it’s also clear that he didn’t register the domain in bad faith. He registered it to create a site about religion, and did so well before True Religion jeans were sold.
Donahey believes this should suffice for finding that the domain was registered and used in bad faith:
In the present case, when the Respondent registered the disputed domain name, the trademark did not exist. Respondent was therefore entitled to continue using the domain name truereligion.com as he had been using it, or to use it for any purpose whatsoever, so long as he did not intentionally use it to profit from the goodwill associated with Complainant’s later created trademark. However, as the Respondent candidly admitted, he is now using the disputed domain name to profit from the good will the Complainant created in the mark. I defy any panelist to show me evidence from any portion of the legislative history or from any other provision of the Policy that would indicate that the drafts persons or the provisions of the Policy as drafted intended that a registrant could use a domain name to target a trademark and profit from its goodwill, so long as at the time that the domain name was registered, the registrant had no intention of doing so.
The jeans company may have other legal avenues to pursue this domain name or to change how it is used. But the UDRP is not the appropriate policy for this.