Domain investor shows that there are lots of uses for the domain and he has a legitimate interest in holding the domain as an investment.
A domain name investor has successfully defended his domain name SmartTiles.com in a UDRP. The case decision is notable for a couple of reasons:
1. It’s very brief.
2. It validates registering a domain name that’s a trademark in some circumstances, especially if lots of people use the term.
Ehren Schaiberger, who represented himself in the proceedings, argued that he had rights or legitimate interests in the domain name SmartTiles.com because he is in the business of registering, holding, and selling domain names, and there are many of uses for the disputed domain name unrelated to the Complainant, Quinco & Cie Inc.
Quinco & Cie Inc holds a trademark that predates Schaiberger’s registration.
The three-person National Arbitration Forum panel wrote:
Respondent argues that it uses the
domain name in connection with a bona fide offering of goods or services because Respondent is in the business of registering, holding, and selling domain names. Registration of a domain name for the purposes of resale may qualify as legitimate use of the domain name under Policy ¶ 4(a)(ii). See Platterz Inc. v. Andrew Melcher, FA 1729887 (Forum June 19, 2017) (holding that “investing in genuinely generic terms, for purpose of resale, is a legitimate business and that the acquisition of domain names consisting of common, dictionary terms for resale can confer rights and legitimate interests upon entrepreneurs who engage in this activity”). Respondent argues that it purchased the disputed domain name for resale because it had a variety of potential uses. Respondent provides examples of commercial uses of the term “smart tiles” to illustrate the wide scope of possible uses. See Resp. Annex B. The Panel finds that Respondent has rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Quinco & Cie inc uses the domain name TheSmartTiles.com.