ARBITRATION

AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Squirrels LLC v. Giorgio Uzonian
Case No. D2014-1434

1. The Parties
Complainant is Squirrels LLC of North Canton, Ohio, United States of America, represented by Walker &
Jocke, United States of America.
Respondent is Giorgio Uzonian of Los Angeles, California, United States of America, represented by John
Berryhill, Ph.D., Esq., United States of America.

2. The Domain Name and Registrar

The disputed domain name <squirrels.com> is registered with eNom (the Registrar).

3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the Center) on August 21, 2014.
On August 21, 2014, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On August 22, 2014, the Registrar transmitted by email to the
Center its verification response confirming that Respondent is listed as the registrant and providing the
contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name
Dispute Resolution Policy (the Policy or UDRP), the Rules for Uniform Domain Name Dispute Resolution
Policy (the Rules), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy
(the Supplemental Rules).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the
Complaint, and the proceeding commenced on August 28, 2014. In accordance with the Rules, paragraph
5(a), the due date for Response was September 17, 2014. The Response was filed with the Center on
September 17, and received by the Center on September 18, 2014.
The Center appointed Gary J. Nelson, David H. Bernstein and Lorelei Ritchie as panelists in this matter on
October 15, 2014. The Panel finds that it was properly constituted. Each member of the Panel has
submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the
Center to ensure compliance with the Rules, paragraph 7.

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4. Factual Background
Complainant is the provider of a website in the field of computer software and related technology. To this
end, in 2014, Complainant registered a United States trademark for SQUIRRELS, Registration No. 4554892
(registered June 24, 2014). Complainant also owns a United States trademark for SQUIRRELS, and design,
Registration No. 4554893 (registered June 24, 2014). These registrations were both filed in 2012.
Complainant additionally owns the registration for a domain name that includes the registered SQUIRRELS
mark, <airsquirrels.com> (registered March 19, 2012). Complainant uses the URL associated with this
domain name to inform web users of its products and services. Complainant also introduced into the record
evidence of various other marks for the term SQUIRREL or SQUIRRELS owned by third parties and
registered with the United States Patent and Trademark Office for various goods and services.
The disputed domain name <squirrels.com> was registered with the Registrar on June 24, 1998.
Respondent has no affiliation with Complainant. Respondent has a parked web page with sponsored links
from the URL associated with the disputed domain name to websites that describe or advertise goods or
services that are unaffiliated with Complainant or Complainants services and that largely relate in various
ways to the topic of the animals referred to as squirrels.
The Parties exchanged correspondence regarding the disputed domain name whereby Complainant
expressed interest and inquired as to how much Respondent was asking for it. Respondent replied with
the number USD 300K. When Complainant stated that it may be willing to pay USD 25,000, Respondent
declined. In the exchange, as put into the record by Complainant, Respondent noted the value of the
domain name as a generic term, and no mention was made of any trademark rights. Respondent
mentioned that he owns as many as 5,000 other domain names. Complainant put in evidence of some of
these in the record, all of which appear to be dictionary words or descriptive terms.

5. Parties Contentions
A. Complainant
Complainant contends that (i) <squirrels.com> is identical or confusingly similar to Complainants
trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii)
Respondent registered and is using the disputed domain name in bad faith.
Specifically, Complainant contends that the disputed domain name directly incorporates the mark owned by
Complainant, SQUIRRELS, and that therefore it is identical or confusingly similar to a mark in which
Complainant has rights. Complainant further contends that Respondent has no rights or legitimate interests
in the disputed domain name since he neither appears to be one of the various holders of marks for the term
squirrels nor is he using the URL associated with the disputed domain name to host an active webpage.
Rather, he has a parked web page with sponsored links. Finally, for these reasons, because he appears to
be holding the domain name for the purpose of capitalizing on its value, Complainant alleges that
Respondent registered and is using the domain name in bad faith. In this regard, Complainant alleges that
Respondent acted in bad faith, allegedly by engaging in a business of owning and selling domain names.
B. Respondent
Respondent asserts that, as noted by the Registrar, Respondent has owned the registration for the disputed
domain name for at least 14 years prior to the time that Complainant registered its SQUIRRELS and
SQUIRRELS, and design marks. Accordingly, Complainant cannot claim senior rights or that Respondent
registered the disputed domain name in bad faith. Respondent further asserts that the term squirrels, the
sole term in the disputed domain name <squirrels.com>, is a dictionary term which Respondent does, in

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fact, use in its normal dictionary fashion. Specifically, although Respondent uses the disputed domain name
to host sponsored links, many of these relate in various ways to squirrels, which shows that Respondent in
fact is using the term in its dictionary sense. Finally, Respondent notes that there are various UDRP
decisions upholding rights by respondents in dictionary words, particularly where they are registered before a
mark is obtained by Complainant, and that negotiations on such registrations may indeed exceed registration
costs.

6. Discussion and Findings

A. Identical or Confusingly Similar
This Panel must first determine whether <squirrels.com> is identical or confusingly similar to a trademark or
service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel
finds that it is. The disputed domain name incorporates in its entirety Complainants registered trademark
SQUIRRELS, with no additional matter, merely adding the top level domain name, .com. Panels have
found for complainants on this first element where they demonstrate rights in the exact term shown in the
disputed domain name, even where the term is a dictionary or descriptive word. See Libro AG v. NA Global
Link Limited, WIPO Case No. D2000-0186 (discussed below); Newstoday Printers and Publishers (P) Ltd. v.
InetU, Inc., WIPO Case No. D2001-0085 (discussed below).
This Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in
which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel next considers whether Complainant has shown that Respondent has no rights or legitimate
interests as must be proven to succeed in a UDRP dispute. Paragraph 4(c) of the Policy gives examples
that may show rights or legitimate interests in a domain name. These examples include: (i) use of the
domain name in connection with a bona fide offering of goods or services; (ii) demonstration that
respondent has been commonly known by the domain name; or (iii) legitimate noncommercial or fair use
of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the
trademark or service mark at issue.
Respondent uses the URL associated with the disputed domain name to resolve to a parked web page with
sponsored links. Many of these links are for goods and services specifically related to squirrels, as that
word is used in its dictionary sense. Respondent has provided evidence dating back several years to show
such links including examples such as Stop Squirrels, Squirrel Control, Baby Squirrels and How to Get
Rid of Squirrels. UDRP panels in cases with similar fact patterns have found for respondents on the second
element, finding that [i]t is well settled that a respondent may have a right to register and use a domain
name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the
domain name is identical or confusingly similar to the trade mark of a complainant, provided it has not been
registered with the [c]omplainants trade mark in mind. See Admiral Insurance Services Limited v. Mr. Adam
Dicker, WIPO Case. No. D2005-0241 (denying transfer of <elephants.com>); carsales.com.au Limited v.
Alton L. Flanders, WIPO Case No. 2004-0047 (denying transfer of <carsales.com> and finding respondents
warehousing of domain names to constitute a legitimate business interest). For the same reasons, and
because the Panel expressly finds that Respondent has used the disputed domain name in ways that takes
advantage of its dictionary meaning rather than Complainants trademark, the Panel finds that Complainant
has failed to show that Respondent lacks rights or legitimate interests in the disputed domain name.
Therefore, this Panel finds for Respondent on the second element regarding rights and legitimate interests
in accordance with paragraph (4)(a)(ii) of the Policy.

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C. Registered and Used in Bad Faith

Although the Panels finding for Respondent on the second element precludes Complainant from prevailing
in this proceeding, the Panel finds it appropriate to discuss the issue of bad faith because it is relevant to the
Panels assessment of Reverse Domain Name Hijacking.
Complainant alleges that Respondent registered and used the domain name in bad faith, citing
paragraph 4(b)(iv) of the Policy. It claims, for example, that Respondent owns multiple domain registrations
and that Respondent registered or . . . acquired the domain name primarily for the purpose of selling . . . for
valuable consideration in excess of . . . documented out-of-pocket costs, in a showing of bad faith as
contemplated by paragraph (4)(b)(i) of the Policy.
However, as pointed out by Respondent, Respondent registered the disputed domain name more than a
decade prior to Complainants registration of its marks, and more than a decade prior to its allegation of
common law use. In similar cases, UDRP panels have found no bad faith registration where a respondent
registered the disputed domain name prior to the time that complainant acquired rights to a mark. See Libro
AG v. NA Global Link Limited, supra, (denying transfer of <libro.com> finding it is not likely that that
[r]espondent has chosen the domain name with the intent to profit or otherwise abuse complainants
trademarks). In such cases, panels have also found that, where a respondent owned a domain name in
which it had a legitimate interest, since it registered the domain name prior to the creation of trademark
rights, and where it consistently used the domain name for its value as a common dictionary word and not for
its value as a trademark, the offer by a respondent to sell such a domain name is not by itself evidence of
bad faith use. See Newstoday Printers and Publishers (P) Ltd. v. InetU, Inc., supra, (denying transfer of
<newstoday.com> noting that the respondent has a legitimate business [e]ven if that business, in the
relevant context here, were to comprise the registration, for sale, of generic domain names, either generally
or to its customers, that would not be an illegitimate use of the domain name).
The case here is analogous to those cited. Respondents ownership and offer to sell the disputed domain
name which it used to offer links to ads related to squirrels in the dictionary sense is not an illegitimate use
and does not constitute bad faith use. Further, the fact that Respondent registered the disputed domain
name at least 14 years prior to Complainants trademark registration of the term demonstrates that he did not
register the domain name in bad faith. Nor is there evidence to the effect that Respondent renewed the
domain name registration and thereafter changed its use of the domain name to take advantage of the
trademark value of the domain name, in which case Policy, paragraph 4(b)(iv) may have found application.
Cf. Big 5 Corp. v. EyeAim.com / Roy Fang, NAF Claim No. 1513704 (Oct. 11, 2013); Eastman Sporto Group
LLC v. Jim and Kenny, WIPO Case No. D2009-1688 (March 1, 2010). Therefore, this Panel finds for
Respondent on the third element, finding that Complainant has failed to demonstrate bad faith registration or
use in accordance with paragraph 4(a)(iii) of the Policy.
D. Reverse Domain Name Hijacking
Paragraph 15(e) of the Rules instructs panels to make findings on bad faith and reverse domain name
hijacking where appropriate, even in the absence of a request from the respondent:
If after considering the submissions the Panel finds that the complaint was brought in bad
faith, for example in an attempt at Reverse Domain Name Hijacking or was brought
primarily to harass the domain-name holder, the Panel shall declare in its decision that the
complaint was brought in bad faith and constitutes an abuse of the administrative
proceeding.
As stated previously, there is no dispute that Respondent registered the disputed domain name at least 14
years prior to the time Complainant registered its SQUIRRELS marks. As further noted, it is therefore
implausible that Respondent could have had intent to profit from Complainants trademark rights at the time
he registered the disputed domain name. Rather, we find that bad faith was shown by Complainant, who

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brought this UDRP proceeding with the knowledge that Respondents rights in the disputed domain name
registration for this common dictionary term preceded its own trademark rights. See Admiral Insurance
Services Limited v. Mr. Adam Dicker, supra; Dreamgirls, Inc. v. Dreamgirls Entertainment, WIPO Case No.
D2006-0609 (denying transfer of <dreamgirls.com>); carsales.com.au Limited v. Alton L. Flanders, supra
(stating, regarding reverse domain name hijacking, [i]n the [p]anels view, such a finding is particularly
appropriate where the respondents registration of the domain name predates the very creation of the
complaints trademark). As the panel further noted in the latter case, [i]n the [p]anels view, the
[c]omplainants actions must have inevitably imposed burdens and costs upon the [r]espondent, who in this
case went through the trouble and expense of hiring legal counsel.
We find that Complainant acted in bad faith in initiating this UDRP proceeding and engaged in reverse
domain name hijacking.

7. Decision
The Panel dismisses the Complaint and declines to order transfer of the disputed domain name
<squirrels.com> as requested by Complainant. The Panel also makes a finding of reverse domain name
hijacking against Complainant.

Lorelei Ritchie
Presiding Panelist

David H. Bernstein
Panelist

Gary J. Nelson
Panelist
Dated: October 28, 2014