Thu 25. Jul 2024, 11:36
The pharmaceutical company Young saw its trademark rights infringed by the domain young.com, which a domain investor had recently purchased and offered to interested parties via a broker. In the UDRP proceedings, the investor was represented by domain lawyer John Berryhill - with consequences.
The complainant Young Pharmaceuticals Inc. is a global skin care company founded in 1977 that maintains its web presence at youngpharm.com. The complainant claims to have been using the term "Young" as a trademark since May 23, 1982. It is also the owner of the well-known US trademark "Young", including a trademark applied for in 2007 and registered in 2008. The opponent is the domain investor Xiaopeng Zhou, known as "Miller Chou", based in China, who was represented by the domain lawyer John Berryhill. The opponent bought the domain young.com, which was first registered in November 1994, for US$ 220,000 in September 2023. He explained that he had sold his thousands of domains in 2015 and was now concentrating on a few high-priced domains, such as the recently bought and sold boy.com. In March 2024, he instructed a broker to sell the domain young.com. The broker wrote to more than 20 potential buyers, including the complainant. When asked by the complainant's CEO, the broker said that the domain young.com could be bought for US$ 699,999. Both continued to communicate with each other, while the complainant's legal representative simultaneously filed a complaint with the registrar without identifying himself as her representative. A short time later, the complainant started the UDRP procedure. The domain young.com redirects to a simple website stating that it is for sale. A three-judge panel, consisting of the Australian lawyer John Swinson as chairman and the American lawyer Phillip V. Maran and the Scottish lawyer Andrew D. S. Lothian as assessors, had to decide.
The three-judge panel not only dismissed the complaint due to a lack of bad faith on the part of the opponent, but also found reverse domain name hijacking (RDNH) (WIPO Case No. D2024-1699). The trio confirmed the similarity between the domain and the trademark. The question of prima facie evidence on the part of the complainant and a right or legitimate interest in the domain on the part of the opponent was skipped by the arbitration panel and the question of bad faith was immediately addressed. In the opinion of the three-member panel, the complainant's trademark was by no means as widely known as claimed. It had not provided any evidence that the mark or the company should have been known to a person in China. The opponent countered that, as a domain investor, he specialized in the purchase and sale of high-value domains and stated: "I believe a domain name has 'high value' if it is a word or phrase that can be used by many different parties for many different purposes. I believe it would be a poor investment strategy to buy domain names that are only suitable for one potential buyer, because it would limit the market to only what that buyer is willing to pay. Instead, I seek to purchase and sell domain names that have appeal to as wide a market as possible." The panelists considered this statement to be credible and comprehensible and it was supported by the examples given by the opponent. The panelists also considered the statement that he did not know anything about the complainant when he bought the domain to be credible. Moreover, it was the broker's decision to contact the complainant - among other possible buyers. The complainant's claim that there was no way to use the domain without infringing her rights did not stand up before the Panel. The opponent pointed out that the first owner of the domain used it for almost three decades without infringing the complainant's rights; moreover, there were 15 UDRP decisions concerning domains with the term "young", but none of them involved the complainant. According to the panel, it was clear that the opponent was investing in non-trademark or dictionary domains in order to resell them at a profit. This was a legitimate business. The Panel also found that there was no evidence to support the complainant's case and therefore the bad faith requirement was not met.
Subsequently, the three panelists examined RDNH and found that this proceeding involved a domain that is a dictionary word and is a common surname. In these circumstances, one would expect the Complainant to provide cogent evidence of both the reputation of its mark and the malicious conduct of its opponent. However, it has not done so. Rather, several of the complainant's arguments can be said to be unsupported by any reasonable interpretation of the evidence provided. Moreover, she concealed her attorney's correspondence with the registrar from the broker, whom she stalled with her correspondence. Based on the evidence provided in the complaint, the complainant and her counsel should have known that the complaint did not have a reasonable chance of success. For this reason, the three-judge panel found this to be a case of RDNH. It rejected the complaint and ruled that the domain remains with the opponent.
The UDRP decision on the domain young.com can be found at:
https://www.wipo.int/amc/en/domains/dec ... 4-1699.pdf