Going back to the future, if only it could happen.
DeLorean Motor Company filed a UDRP to reclaim the domain DeLoreanParts.com, which was registered in 1999. The registrant and Respondent in this case is a manufacturer of parts for DeLorean cars.
At the time, the Respondent ran a fundraiser benefiting people with Parkinson’s, due to Michael J. Fox of BTTF fame being diagnosed with the disease. The Respondent reportedly used the domain name as a promo while touring the US in a DeLorean car to raise funds. According to the UDRP, the domain was not used again since at least 2004-2006.
Fast forward to the future, in 2022, when the Complainant inquired about the domain, only to receive a quote of $31,000 dollars. That’s when they filed the UDRP. We’re not sure if the sole panelist is a fan of the movie series as he noted that despite the price sought by the Respondent, it was within their rights to do so.
Final decision: deny transfer of the domain DeLoreanParts.com to the Complainant.
DeLorean Motor Company v. Netcom
Claim Number: FA2203001989283
Complainant is DeLorean Motor Company (“Complainant”), represented by Yuo-Fong C. Amato of Gordon & Rees, LLP, California, USA. Respondent is Netcom (“Respondent”), South Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is , registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Jeffrey J. Neuman as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 22, 2022; the Forum received payment on March 22, 2022.
On March 23, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 24, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 13, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to [email protected] Also on March 24, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on April 12, 2022.
On April 18, 2022, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Jeffrey J. Neuman as Panelist.
On April 19, 2022, Complainant submitted an additional declaration in support of its original arguments and to reply to Respondent’s assertions. Subsequently on April 26, Respondent replied to the Complainant’s supplemental declaration.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE 1: SUPPLEMENTAL FILINGS
Under the Forum’s Supplemental Rules, it is within the discretion of the Panel to accept or consider additional unsolicited submission(s). See Supplemental Rule 7.
Panels are generally reluctant to accept additional unsolicited submissions especially when those submissions contain arguments that could have been foreseen and should have been included in the original Complaint. However, Panels can accept additional submissions with respect to new allegations or evidence presented by the Respondent which may not have been able to have been foreseen.
In this case, the Panel views will accept both Complainant’s and Respondent’s additional submissions. Complainant contends that when it filed its Complaint it did not know that the Registrant (“Netcom”) was affiliated with Zilla products manufactured for DeLorean vehicles and presents additional arguments as to why nonetheless the disputed domain name was registered and used in bad faith. As a matter of fairness, therefore, the Panel also accepts Respondent’s submission which counter’s the additional arguments made by the Complainant.
PRELIMINARY ISSUE 2: NON-UDRP LEGAL ARGUMENTS
Respondent argues various legal points relating to the trademark rights of Complainant to the DELOREAN trademark under US Trademark law. For example, Respondent argues that the Complainant’s trademark rights in the DELOREAN mark was in its view abandoned under US Trademark Law for a number of reasons. The Panel notes however, that Respondent’s arguments are not applicable to this arbitration under the UDRP. The Panel notes that this case was brought under the UDRP and therefore is governed by that policy as opposed to U.S. Trademark law. This will be discussed in more detail in the Discussion section below. Suffice it to say that although parties are free to litigate these issues under Policy ¶ 4(k) in a national court system, those arguments are not applicable to this arbitration proceeding within the scope of the UDRP and its elements.
Accordingly, the following analysis is strictly confined to an analysis under the UDRP and does not address any arguments made by either party with respect to U.S. trademark law.
Complainant, DeLorean Motor Company, is the owner of the DeLorean automobile brand which gained popularity in the 1980s for its renowned use as the time machine in the Back to the Future movies. Here, Complainant alleges that is has been using its DELOREAN® marks since at least as early as 1995, and is the assignee and successor in interest to the original DeLorean Motor Company and DeLorean automobile founded in 1975. Complainant alleges it has invested a substantial amount of time and resources to promote, advertise, and protect the Delorean Trademarks. As a result, consumers associate the DeLorean Trademarks exclusively with Complainant and their products.
Complainant asserts rights in the DELOREAN mark through its registration of the mark with the United States Patent and Trademark Office (USPTO) (e.g., Reg. No. 3,715,283, registered Nov. 24, 2009). See Compl. Ex. A. Complainant alleges that Respondent’s domain name is identical or confusingly similar to Complainant’s DELOREAN mark, as it incorporates the mark in its entirety, only adding the generic term “parts” and the “.com” generic top-level domain (gTLD).
It contends Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not authorized Respondent to use the DELOREAN mark, nor is Respondent commonly known by the disputed domain name. Further, Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as the resolving website is a parked website, with miscellaneous hyperlinks.
Respondent registered and uses the domain name in bad faith. Respondent registered the disputed domain name only to offer the domain name for sale. Additionally, the resolving website presents users with hyperlinks related and unrelated to Complainant’s business.
The Respondent in this matter is Netcom. Respondent’s CEO, Bob Buono (known “in the trade [as] Bob Zilla”) contends that Netcom entered into a partnership in 1989 with PJ Grady, America’s first DeLorean car dealership, to design and manufacture electronic control systems for the DeLorean car. According to the Respondent, sales of its’ Zilla branded controller systems for the DeLorean cars began in 1992. Respondent argues that it has had the right to use the mark since that date.
In 1999 Respondent began fund raising for Michael J. Fox’s Parkinson’s charitable organization through DeLorean “owner donations.” Mr. Fox was the lead actor in all three of the Back to Future movies in the 1980s. He was subsequently diagnosed with Parkinson’s Disease and started a fund to help those like himself that suffered from that disease. In 2000, Respondent sponsored Ollie and Terry Hollar who travelled country-wide in their “Back to the Future” DeLorean car to raise funds for Parkinson’s awareness.
On December 8, 1999, Netcom registered the domain name , It believes it has legitimate rights and interests in the domain name because it describes what the company has done since 1992, namely, sell DeLorean controller systems. Respondent provides evidence that it has displayed the disputed domain name at various trade shows between 2000 and 2006. Respondent argues that Complainant knew about Respondent’s use of the disputed domain name since at least as early as 2004 when Complainant’s CEO won a Zilla branded toolkit during the “trade show” in Dallas. Respondent provides a picture of the Zilla toolkit which appears to contain a large sticker containing the word “ZILLA” appearing just above the string “DELOREANPARTS.COM”.
Respondent admits that the disputed domain name’s website is currently parked and will be until “the current phase of design and manufacturing of new products is completed.” On February 28, 2022, Respondent received an e-mail from a domain name broker working at GoDaddy stating the it had a client that was interested in purchasing the disputed domain name. Without naming the client, it then stated “If you are interested in selling this domain, can you please provide me with an asking price or ball-park range that you would be willing to sell it for?” Respondent states that it did not know who the client was that wanted to purchase the domain name but told the domain broker that it would sell the domain name for $31,000.
Respondent states that although it has purchased numerous domain names in the past, it had never sold or offered to sell a domain name prior to making this offer. It had every right to make this offer for the domain name and making such an offer to a party that approached it was not bad faith.
Respondent argues that this case should be dismissed under the equitable doctrine of laches for Complainant’s failure to police its mark and for not bringing this case for more than 22 years. In addition, it argues that the DELOREAN trademark was abandoned under US Trademark law when the original owner of the DELOREAN marks passed away. Furthermore, even if the mark was not abandoned, it argues that under the laws of the United States he has a right to use the DELOREAN mark under the doctrine of fair use.
Respondent argues the domain name was used prior to Complainant’s registration of the DELOREAN mark. Further, the disputed domain name has been used in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as Respondent because he formerly used the domain name to offer parts for DELOREAN vehicles. Further, Respondent asserts the website is parked until the new line of products are ready for users.
B. Additional Submissions
On April 19, 2022, Complainant filed a supplemental declaration of Complainant’s CEO stating that he knows of the Respondent as “someone behind the ‘Zilla’ -branded products,” but was not aware that Respondent “going by the ‘Netcom’ name and did not know that he was the registrant of the disputed domain name.
Nonetheless, Complainant contends that it never authorized Respondent to sell any official “Delorean® -branded parts.” Complainant argues that it was not aware of the disputed domain name until early 2022. It then goes on to state that Respondent:
admitted himself that he has not used the domain name since at least 2006, which currently sits ‘parked.’ This comports with my understanding that Mr. Buono has long since retired from doing any business related to the ‘Zilla’ products. If anything has been abandoned, it is the ‘Zilla’ marks, not the Delorean® marks.
In addition to disputing Respondent’s claims about the fact that Complainant has not abandoned its trademark rights, Complainant also contends that despite the fact that GoDaddy did not reveal the name of its client that wanted to purchase the domain name, Respondent must have known it was the Complainant given the price that was quoted for the domain name ($31,000).
On April 27, 2022 Respondent replied to Complainant’s additional submission by submitting what purports to be a screen capture of the Complainant’s website Delorean.com listing Respondent’s “Fuel Tank Sender” for sale for $349.00. Though not stated, Panel believes that this screen capture is in response to Complainant stating that it never authorized Respondent to sell any officially branded DeLorean parts.
1. Respondent’s domain name is confusingly similar to Complainant’s DELOREAN mark.
2. Respondent does not currently have any rights or legitimate interests in the disputed domain name.
3. However, the Panel finds that the Complainant has failed to prove that the disputed domain name was registered and used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Complainant asserts rights in the DELOREAN mark through its registration of the mark with the United States Patent and Trademark Office (USPTO) (e.g., Reg. No. 3,715,283, registered Nov. 24, 2009). See Compl. Ex. A. Registering a mark with the USPTO is sufficient to establish rights in a mark. See Recreational Equipment, Inc. v. Liu Chan Yuan, FA 2107001954773 (Forum Aug. 9, 2021) (“Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i)”); see also H-D Michigan, LLC v. Private Whois Service, FA 1006001328876 (Forum July 12, 2010) (finding that “Complainant has sufficiently registered its HARLEY-DAVIDSON mark with the USPTO to prove Complainant’s rights in the mark according to Policy ¶ 4(a)(i), regardless of the fact that Respondent lives or operates outside the United States.”). Therefore, the Panel finds Complainant has sufficiently established rights in the DELOREAN mark.
Complainant argues Respondent’s domain name is identical or confusingly similar to Complainant’s DELOREAN mark, as it incorporates the mark in its entirety, only adding the generic term “parts” and the “.com” gTLD. The mere addition of a generic term and gTLD may not be enough to differentiate a disputed domain name from a mark. See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); see also Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.). The Panel therefore finds domain name is confusingly similar to Complainant’s DELOREAN mark.
While Respondent contends that the domain name is comprised of common and generic terms and as such cannot be found to be confusingly similar to Complainant’s mark, such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
Rights or Legitimate Interests
In addition to demonstrating that that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, the Complainant must demonstrate that the Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the “often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Overview (“WIPO Jurisprudential Overview 3.0”) at Section 2. Therefore, in order to satisfy its prima facie case under the Policy the Complainant must proffer evidence to show that (a) the Respondent is not commonly known by the disputed domain name nor has it been authorized to use the Complaint’s mark, and (b) the Respondent is not using the disputed domain name for any bona fide offerings of goods or services, nor any legitimate noncommercial or fair uses.
Panels have also consistently held that when assessing whether a Respondent has rights or legitimate interests to a domain name, Panels look to the circumstances prevailing at the time of the filing of the complaint and not to any previous conduct or circumstances which may have established a past right or legitimate interest. See WIPO Jurisprudential Overview 3.0 at Section 2.11. Although not relevant for this element of the UDRP, evidence of a past right or legitimate interest is considered in assessing whether the disputed domain name was registered and used in bad faith under the Policy ¶ 4(a)(iii).
Complainant contends Respondent lacks rights and legitimate interests in the domain name because Respondent is not commonly known by the disputed domain name or authorized to use the DELOREAN mark. Previously, panels have looked at the available WHOIS information to determine whether a Respondent is commonly known by the disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Here, the WHOIS information shows Respondent is known as “Netcom”. Therefore, the Panel finds that Respondent is not currently commonly known by the disputed domain name.
Although the Respondent provides evidence that it was at one time authorized to use the Complainant’s mark (directly or indirectly) in connection with the sale of parts for the Complainant’s vehicles, that was more than 15 years prior to the filing of this complaint. There is no evidence in the record that the Respondent was authorized to use the Complainant’s mark at the time of the filing of the complaint. As stated above, this element of the UDRP relates to activities conducted at the time the dispute arose; not whether the Respondent previously had rights or legitimate interests in the domain name. The Panel will discuss those prior activities under the third element of the UDRP – namely whether the domain name was registered and used in bad faith.
Having established that the Complainant is not commonly known by the domain name, and that it has not been authorized to use the Complainant’s mark (as of the time of the instant dispute), Complainant argues Respondent does not use the domain name for a bona fide offering of goods and services; nor is it currently using the disputed domain name for legitimate noncommercial or fair use. Complainant alleges that since 2006 the disputed domain name has resolved to a parking page. That parking page, which is provided by Complainant as an exhibit, contains hyperlinks to third party websites. Some of the links are related to Complainant’s products, and some appear to be completely unrelated. The Respondent admits that the domain name is not currently being used for any specific purpose and that it will not be used until “the current phase of design and manufacturing of new products is completed.”
Previous panels have found that using a disputed domain name to redirect users to a parked website does not constitute a bona fide offering of goods and services or legitimate noncommercial or fair use. See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business).
If the Complaint can establish a prima facie case, as the Panel finds it has here, the burden shifts to Respondent to show it does have rights or legitimate interests in the disputed domain name. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
For all of the above reasons, as of the time this dispute arose, Respondent has not demonstrated that it has rights or legitimate interests in the domain name in compliance with Policy ¶ 4(c).
Registration and Use in Bad Faith
Once the Complainant has satisfied the first two elements of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith by the Respondent. “These are conjunctive requirements; both must be satisfied for a successful complaint.” Warner Bros. Entertainment Inc. v. Karl Allberg FA2002001881913 (Forum Feb. 19, 2020).
Complainant makes several arguments attempting to establish that the domain name was registered and used in bad faith. First, it points to evidence that Respondent offered to sell the domain name to Complainant for $31,000. Complainant argues that under Policy ¶ 4(b)(i) acquiring “a domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name” is evidence of bad faith.
Complainant also asserts that Respondent’s display of competing and unrelated hyperlinks disrupts Complainant’s business and that such conduct amounts to further evidence of using the domain name in bad faith under Policy ¶ 4(b)(iii). Past panels have found that using a disputed domain name to host a parked website is an indicia of bad faith. See State Farm Mutual Automobile Insurance Company v. Niang, huai, FA1412001594788 (Forum Jan. 16, 2015) (“The at-issue domain name’s website includes advertisements for third parties, some which may sell insurance and banking services similar to those offered by Complainant. Using the at-issue domain name to display competing advertisements disrupts Complainant’s business and demonstrates Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii)”).
Respondent disputes the fact that it has registered and used the domain name in bad faith by claiming (i) Complainant’s claims should be barred under the equitable legal doctrine of “laches”, (ii) Respondent was authorized to register and use the domain name, (iii) Even if it was not authorized by Complainant to register and use the domain name, it has every right to use the use the domain name to offer products and services related to Complainant’s vehicles, and (iv) the offer to sell the disputed domain name was solicited by a broker working for the Complainant and therefore was not evidence of use in bad faith.
Although Panels have widely recognized that a mere delay between the registration of a domain name and the filing of a complaint does not prevent a Complainant from filing a case, nor from potentially prevailing on the merits, the Panel notes that allowing more than twenty years to lapse prior to asserting rights to the Disputed Domain Name is a factor to consider in Respondent’s favor especially when looking at Respondent’s rights and legitimate interests in the Disputed Domain Name and evaluating whether the Disputed Domain Name was registered and used in bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”) at Section 4.17.
(ii) Right to register and use the disputed domain name
Unlike the second element of the UDRP which looks only at the circumstances at the time the instant dispute arises, in determining whether the domain name was registered in bad faith and is being used in bad faith, a Panel must look at the circumstances under which the domain name was first registered by the Respondent as well as during the current time period. The disputed domain name was registered on December 8, 1999, more than 22 years prior to the instant dispute.
According to the evidence submitted by Respondent (which was not disputed by Complainant in its supplemental filing), Respondent believed that it was authorized to register the disputed domain name. Respondent entered into a partnership in 1989 with PJ Grady, America’s first DeLorean car dealership, to design and manufacture electronic control systems for the DeLorean car. Respondent states that sales of its’ Zilla branded controller systems for the DeLorean cars began in 1992 and that partnership deal established his rights to use the mark. In furtherance of its business selling DeLorean parts, Respondent registered the disputed domain name on December 8, 1999, more than 22 years prior to this proceeding. Moreover, it is clear that Complainant knew that Respondent was selling products and services related to Complainant’s DeLorean vehicles as evidenced by the fact that Complainant sold Respondent’s products on its own website. Although Complainant argues in its supplemental filings that it only discovered that the disputed domain name existed in 2022, the Panel finds this hard to believe given the fact that it clearly knew about the Respondent’s sale of parts for its DeLorean vehicles in that it offered Respondent’s parts through its own website at least as early as 2001.
In addition, Respondent believed that as a service provider for Complainant’s vehicles at the time it registered the disputed domain name, it was entitled to also use the domain name to sell parts for Complainant’s vehicles under the disputed domain name. Panels have long recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and therefore using it in good faith. Outlined in the “Oki Data test”, the following factors have been used by Panels to find that a Respondent has not registered nor is it using a disputed domain name in bad faith: (i) the respondent must actually be offering the goods or services at issue; (ii) the respondent must use the site to sell only the trademarked goods or services; (iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and (iv) the respondent must not try to “corner the market” in domain names that reflect the trademark. See Oki Data Americas, Inc. v. ASD, Inc., D2001-0903, (WIPO November 6, 2001).
Respondent provides evidence that it was using the disputed domain name, , to sell actual parts and software manufactured and created by the Respondent under its brand ‘Zilla’, in support of the Complainant’s line of DeLorean cars. In fact, some of the parts that were manufactured by Respondent (through its Zilla brand) were also being offered through the online store on Complainant’s website . In addition, Respondent used the disputed domain name to promote a charitable organization seeking to find a cure for Parkinson’s disease, the disease that afflicted Back to the Future’s star Michael J. Fox. It was the Back to the Future movie franchise that popularized the Complainant’s DeLorean vehicle in the 1980s.
In weighing the Oki Data factors taken as a whole, the Panel believes Complainant has not demonstrated that the domain name was registered in bad faith back in 1999 nor was the domain name initially being used in bad faith. Complainant has not disputed any of the facts proffered by the Respondent that (a) Respondent sold DeLorean parts between the years of 1992 and 2006 and that it did so online through the disputed domain between 1999 and 2006, and (b) the website was only used to provide parts and services related to Complainant’s trademarked products. There is no evidence in the record that indicates there was any confusion about the relationship between the registrant and Complainant nor is there any evidence that the Respondent has registered or used any other domain names that reflect the Complainant’s mark much less “cornered the market” in domain names reflecting the trademark.
(iii) Right to sell the disputed domain name
Having established that the domain name was not registered in bad faith nor was it being used in bad faith (at least prior to 2006), the fact that Respondent offered to sell the domain name for $31,000 to the Complainant (in response to a request made by a broker working for the Complainant) does not change the fact that the disputed domain name was not registered in bad faith. Therefore, under the Policy as applied in this case, there is no need to assess whether the asking price was an indicia of bad faith.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the domain name REMAIN WITH Respondent.
Jeffrey J. Neuman, Panelist
Dated: May 3, 2022
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