Explains a common expired domain occurrence — WIPO panel
A firm wanted a domain but failed it capture it when it expired. Then it filed a UDRP against the fresh domain owner.
A World Intellectual Property Organization panel has provided an unusually descriptive explanation and interpretation of a very common occurrence.
Rolyn Firms Inc. filed a UDRP against the domain name Rolyn.com just weeks following the domain name was sold in an expired domain name auction. The domain was previously used by another firm named Rolyn. That another firm previously used the domain for its business suggests that the complainant is unlikely to have exclusive rights in that term.
Take a look at how the panel summarized this while inferring that if the complainant wanted the domain, it ought to have figured out how to buy it upon expiration:
What happened, in the Panel’s overview, is that the Complainant, which owned 8 domain names incorporating the trademark ROLYN, sufficiently desired the disputed domain name in the “.com” gTLD that it offered initially USD 3,000 and eventually USD 10,000 for it. In the circumstances, the Complainant may reasonably be presumed to have been aware that another owner had used the disputed domain name for a long time, in fact for 22 years. It is not for the Panel to comment on how the Complainant runs its business or on the various steps that might have been taken through an agency or by itself to become notified of the impending availability of a desired domain name, e.g., by placing it on permanent “backorder” with domain name auctioneers. Only the Complainant knows why the disputed domain name apparently slipped through its fingers when it came up for recycling, particularly since the Complainant was trying to buy it from the Respondent within only 6 weeks following the auction. It had been bought openly by the highest bidder, by or on behalf of the Respondent. To a degree, the release of an expired domain name carries at least some implication that it is no longer wanted by its presumably unchallenged previous owner and invites the inference by a potential buyer that no other party felt any special entitlement to it. Had the Respondent done a search it may have found, as shown above, the existence of potential buyers of which the Complainant was merely one, and there is the further possibility that a fresh entity might build its name around an available domain name, rather than vice versa.
I wonder if the part “To a degree, the release of an expired domain name carries at least some implication that it is no longer wanted by its presumably unchallenged previous owner” will come in handy for another common type of case: a firm forgets to renew a domain and then files a UDRP against its fresh owner.
This particular panel went the extra mile an on examining how common the term Rolyn is and how exclusive the complainant’s rights in the term might be.
Kudos to panelists Dr. Clive N.A. Trotman, The Hon Neil Brown Q.C. and Jonathan Agmon.
