DiamondTrust.com was hit with a UDRP just after selling on NameJet.
A domain name investor has successfully defended the domain name DiamondTrust.com in a UDRP filed just after he won the domain name on NameJet.
James Kim of South Korea won an auction for DiamondTrust.com for $1,319 at NameJet in October last year. Diamond Trust Consultancy (UK) Limited filed a UDRP against the domain name the following month.
Kim said that he registered the domain name for its descriptive value and was unaware of the complainant. He pointed out that he owns a number of other domain names with “diamond” or “trust” in them. DiamondTrust.com had just expired after being owned by the same registrant for 17 years, and Kim noted that the complainant could have also participated in the auction.
A three-member panel agreed with Kim and provided some good material for similar UDRPs in the future.
In the Panel’s view the fact that a Respondent may be a domain name broker and acquired the disputed domain name to hold in its portfolio for potential re-sale does not necessarily imply that the Respondent had no rights or legitimate interests in the disputed domain name at the time of acquisition provided that it had no intention to target the Complainant (X6D Limited v. Telepathy, Inc., WIPO Case No. D2010-1519). The question is whether there is evidence that the Respondent knew of, or was wilfully blind to, the Complainant’s rights at the time of acquisition and nevertheless sought to acquire the disputed domain name, possibly for re-sale to the Complainant, or possibly for use in bad faith in an illegitimate manner contrary to the Complainant’s interests…
…there is very little, if any, evidence before the Panel to suggest that such a degree of renown attached to the Complainant’s mark that the Respondent, based in the Republic of Korea, should have been aware of the Complainant’s registrations or of its business under the DIAMOND TRUST mark….
…Previous UDRP panels have gone so far as to suggest that where a party registers a lapsed domain name, and it is not attempting to use the name to compete with the mark holder or disrupt its business, then ordinarily the trade mark holder should be denied relief, whether the mark is a common law or a registered mark, whether the mark is ‘strong’ or ‘weak.’ (CB Publishing, LLC v. Akway Int’l et al., No. 926506 (NAF Apr. 18, 2007)). While this Panel considers that every case must be considered on its individual facts and that it is not necessary or appropriate to endorse this approach here, it is indicative of a general consistency of approach between panels in similar circumstances…
…In short there is insufficient evidence before the Panel to infer that the disputed domain name was acquired by the Respondent in order to sell it to the Complainant and other than for the purposes of holding as part of its domain name portfolio for eventual resale in the course of its usual domain name broking activity.
It also helped that Kim had a parking page with keywords related to the descriptive nature of the domain name.
Kim was represented by ESQwire.com.