Thursday , June 8 2023 UDRP: Complaint Rejected |

A UDRP was filed against the valuable domain name at the ADR Center of the Czech Arbitration Court (CAC). The three member panel unanimously ruled in favor of the domain registrant, and the complaint was rejected. The domain registrant was represented by attorney Zak Muscovitch of Muscovitch Law P.C. Zak also serves as General Counsel of the ICA trade organization.

The complainant in this UDRP was Oystershell Consumer Health, Inc. This company acquired the RID lice treatment brand from Bayer Health in July of 2020. The domain registrant acquired at auction in 2008. Not only is valuable because it is a 3 letter .com domain name, but it is also a one word .com domain name. In my view, is easily worth six figures retail.

One reason the complainant filed the UDRP to get the domain name is because it believes it is “essential to the further development of the brand outside of the US.” I think the domain registrant’s rebuttal to this was stellar: “merely being covetous of a Domain Name does not warrant transfer pursuant to the UDRP.”

In ruling in favor of the domain registrant, the panel reaffirmed the rights of domain registrants to acquire and own domain names as investments. I thought this excerpt is particularly noteworthy:

Respondent has presented a strong rebuttal. It contends that it acquired the disputed domain name at auction due to its inherent value as a dictionary word and a short domain name. It notes that the term “rid” has proved attractive to many other traders and manufacturers over the years and that they too would have a strong interest in owning <>. Moreover, many different traders have managed to register the word internationally. Respondent also rightly says that no party can have exclusive rights in an ordinary dictionary word.

Acquiring attractive domain names that may by happenstance correspond to current marks and holding them in inventory for future sale on the secondary market has long been held to constitute a right or legitimate interest. And so it is here. Common words are just that and no-one can have a monopoly or any exclusivity in them –as many traders will want to use them for their informational value. Small differences will avoid infringement and confusion must be tolerated by traders who select highly descriptive terms for trademarks. This is reflected in trademark norms internationally and also in this case in the state of the Registers.

This view is also reflected in the Policy and it has been long held in UDRP disputes that where a domain name is descriptive or a generic dictionary word, the first person to register it in good faith is entitled to the domain name and has a legitimate interest in it, regardless of whether or not the Respondent has a trademark (See for example: CRS Technology Corporation v. CondeNet (Forum FA0002000093547) ( and see also, Target Brands, Inc. v. Eastwind Group (Forum FA0405000267475) regarding the domain name,; “The first person to register it in good faith is entitled to the domain name and this is considered a legitimate interest. That person was not the Complainant.”

I think they Oystershell is right about the .com domain name being a critical aspect to international brand development. Owning would certainly boost the company’s brand presence, particularly in the US market. However, the company should have made a serious effort to acquire the domain name rather than file a UDRP.

Kudos to the three UDRP panelists, Gerald M. Levine, Ph.D, Esq. , Flip Petillion, and Victoria McEvedy, for ruling against the complainant in this UDRP.

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