Dateline May 16th 2011. California. USA.
A recent UDRP panel issued a favourable ruling for domain owners in the case of Dancesoft v. Avyn-Linh Ngo. Dancesoft, the Complainant, owned the domain dancepartner.com and alleged that the domain name dancepartners.com infringed on its rights. The web page associated with dancepartners.com redirected users to another URL, dance.net, which displayed services similar to those offered by Dancesoft.
Dancesoft argued that not only was the domain dancepartners.com confusingly similar, but that using the site to redirect users was not, by itself, a legitimate use of the domain. Dancesoft also complained that Ngo, the Respondent, approached them to buy the domain name, which they believed to be in bad faith. Ngo argued that the term “dance partners” is generic for the services it represents, the domain name was registered prior to Dancesoft’s mark, and that redirecting traffic was and is a legitimate use.
In its decision, the UDRP panel denied Dancesoft’s complaint and request to transfer or cancel dancepartners.com. However, it did conclude that the two domains were confusingly similar because the only difference between them was an additional “s”. The panel also concluded that Ngo had a legitimate interest in using the domain because the mark is generic, and Ngo registered the domain before the trademark’s existence. The panel further concluded that the trademark was not registered in bad faith for similar reasons.
Finally, the panel held that a domain name owner’s approaching a trademark holder for sales purposes is not enough to demonstrate bad faith. Ultimately, Ngo prevailed and was able to keep the domain name.
This is a very important decision for domain name owners. In a move which helps to protect the resale of viable, generic domain names, the UDRP panel stated that approaching a trademark holder of a generic term for a domain sale is not considered bad faith on its face. More importantly, even if a domain name is minimally different from a trademark where it may initially cause confusion, it may not constitute trademark infringement under certain circumstances.
While the decision does not guarantee the same outcome for all similar cases, it is a ruling that demonstrates a clearer definition and protection of the rights of domain owners.
Text above from Sedo Domain Parking
My comment? Frankly I think the complainant was on very shaky ground from the start. Reading between the lines I would suggest that they got annoyed when the respondant appoached them wanting to buy the domain name. So they thought; “right we will have ’em” and it backfired. It also may create some uncertainty for domain owners wanting to protect their perceived intellectual property. I say perceived, as generic domain names simply cannot be really owned or indeed protected by anyone as they are words in general use and in my opinion cannot be trademarked as such.
If you want to read the full judgement its on this link: http://domains.adrforum.com/domains/decisions/1381556.htm