Domain investor Rick Schwartz has put in order this month a UDRP case against a domain registrar for the domain DomainKing.biz, which eventually lost it.
The domain registrar area of operations is mostly in Philippines and South Africa, selling domain names as .za, .co and .ph.
After establishing that the domain wasn’t recorded with bad intentions, the panelist agreed that the respondent was aware of Schwartz trademark in the U.S and Europe. Although he has visited
DomainKing.com before the .biz version, it seems that he wasn’t so aware of the trademark sense use.
For Nat Cohen, Schwartz’s loss appeared as a gift, saying that he might have done a favor for domainers.
“Further, even if the Complainant was able to demonstrate that the Respondent most likely knew that the term “Domain King” was being used in a trademark sense, that would not be the end of the matter. The question would still remain whether the Domain Name was registered to take some unfair advantage of the Complainant’s use of this term.
Panelist Matthew Harris is saying that even if you are aware that a term is being used as a trademark it may still be okay to register it as long as you are not taking unfair advantage of the trademark holder. This is exactly what domain owners have been arguing since the beginning of the UDRP”
It’s another case in which the domain name was used for a business by the respondent. In case this domain is transferred there will consequences such as a disruption to what is, a bona fide business.
When refuting the demands of showing cybersquatting in a UDRP case, remember that the general purpose of it is to manage cases of precise cybersquatting.
Domain name owners have now the possibility to emphasize this case every time they are on the receiving end of a UDRP claim. It could help the holder of a generic domain to defend its domain in the future.