Complainant previously owned the valuable domain name.
OEE Ltd and Because Music SAS have lost a cybersquatting dispute (pdf) over the domain name because.com.
The Complainant previously owned the domain name, which it bought at Sedo for $27,500 in 2007.
According to the Complainant, the domain name expired in 2021 after it neglected to renew it.
The current registrant, Matthew Klein, says he acquired the domain name through Sedo in 2022.
(Something doesn’t quite add up with the domain expiration. DomainTools shows a Whois record on October 29, 2021, with Network Solutions as the registrar and a registrar expiration date of December 3, 2021. The next record is on December 5, showing an update date of December 3, two years added to the registration, and the domain at GoDaddy. There’s no record of an expired domain sale, and it would be too fast for the domain to work its way through the normal Network Solutions expired domain auction cycle. The Whois record at GoDaddy shows the registrant’s country is France, where the Complainant is located. There’s one more public record on January 9, 2022, with the same Whois information. Later Whois records are privacy protected. However, the nameservers changed to Afternic in 2022, presumably when Klein bought the domain name at Sedo. Regardless of when and why the Complainant lost the domain name, the record shows that Klein bought the domain on Sedo in 2022.)
The panel found that Klein didn’t register and use the domain name in bad faith. The three-person World Intellectual Property Organization panel wrote:
The Respondent has acquired the disputed domain name for resale on the secondary market. There is evidence that the Respondent’s primary intent in acquiring the disputed domain name was to sell it, in a general offer for sale, for valuable consideration in excess of its out-of-pocket costs. However, there is no evidence, or at least, there is not sufficient evidence, that the Respondent acquired the disputed domain name due to its value in connection with a trademark, and consequently with the intent to sell it to the Complainant or a competitor of the Complainant. Given the nature of the disputed domain name, which consists of such a common dictionary term, without any further evidence provided, no inference can be made that it would e.g., have been implausible for the Respondent having registered the disputed domain name without knowing the Complainant and the Complainant’s rights.
There is insufficient evidence of the fame of the Complainant’s mark, and absolutely no evidence that any such fame has displaced the dictionary word usage in the minds of the public. There is evidence of multiple other parties selecting the word or mark “because” for numerous different uses (including the Respondent in its domain name acquisitions that predate the availability of the disputed domain name to purchase on the secondary market). The word “because” does not uniquely or even predominantly refer to the Complainant.
The Panel appreciates that it can be harsh for a domain name registrant as the Complainant to lose a domain name as a result of a non-timely renewal, but that in itself does not impact the assessment of whether the Respondent has been in bad faith when registering the disputed domain name.
The fact that the Complainant itself paid five figures to buy the dictionary word domain on the aftermarket makes it hard to argue that a later buyer of the domain name bought the domain to target the Complainant’s specific trademark.
The panel did not consider reverse domain name hijacking.
Cabinet Herrburger represented the Complainant, and John Berryhill represented the domain registrant.
C.H. says
Something doesn’t quite add up with the domain expiration. DomainTools shows a Whois record on October 29, 2021, with Network Solutions as the registrar and a registrar expiration date of December 3, 2021. The next record is on December 5, showing an update date of December 3, two years added to the registration, and the domain at GoDaddy
Good catch!
Historical MX (MailServer) Records show new entries on:
20 November 2021: mx.runbox.com | Blix Solutions AS | 15 days
07 December 2021: mx1-hosting.jellyfish.systems | Namecheap, Inc. | 9 months
…
Prior to that:
Since atleast 2008: (aspmx.l.google.com | Google LLC | apprx 10+ years)
23 September 2018: (p.webcom.ctmail.com | Commtouch Inc | apprx 1 year)
16 September 2019: (aspmx.l.google.com | Google LLC | apprx 1 year)
C.H. says
**Typo correction
16 September 2020**: (aspmx.l.google.com | Google LLC | apprx 1 year)