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that the disputed domain name could be bought for $20,000. Such sale offers
are further evidence of bad faith.
B. Respondent
- Respondent has used the disputed domain name since 2008 in connection with
fuels, energy efficiency and alternative energy sources. Complainant's
trademark registration lists "first use" for beverages and food products as
occurring in 2012.
- Respondent acquired the disputed domain name in 2007 through an auction of
abandoned domain names. The phrase, "fuel for thought," is a common
expression, capable of reference to many potential commercial uses.
Respondent's rights in the disputed domain name are senior in time to
Complainant's rights in its trademark, so Respondent's rights are legitimate.
- Respondent has used the disputed domain name for paid search advertising
links since 2008. Links found on Respondent's website refer to bio fuels,
whereas Complainant markets only nutritional beverages or edible processed
food. Respondent has never used the disputed domain name in connection with
goods similar to those produced by Complainant.
- Bad faith registration of a disputed domain name under the Policy requires prior
knowledge of a mark holder's rights at the time of name registration. That does
not apply in this case, because the Complainant's rights in its trademark arose
after the acquisition of the disputed domain name by Respondent. Respondent's
later offer to sell the name is not relevant to the purpose of its registration, since
Respondent was unaware of Complainant's rights.
- Arguably, Complainant engaged in bad faith naming of its products, because it
was surely aware that the disputed domain name existed before starting its brand
line. Moreover, Complainant waited four years from adoption of its trademark to
file the Complaint. Under these circumstances, the Complaint was brought in
bad faith, and Complainant should be found to have engaged in reverse domain
name hijacking.
FINDINGS
Complainant is an American company that operates under the mark FUEL FOR
THOUGHT, for which it has obtained a trademark registration with USPTO
(Registration No., 4,210,936; registered on Sept. 18, 2012).
Respondent is the owner of the disputed domain name <fuelforthought.com>,
which was created on May 22, 2007 and acquired by Respondent later in that
year. Respondent has used and is using the disputed domain name for a
website that offers sponsored advertising links to the websites of third parties.
DISCUSSION
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
By submission of evidence of its trademark registration with the USPTO for FUEL
FOR THOUGHT, the Complainant has established its rights in that mark for the
purposes of Policy 4(a)(i). See True Value Co. v. Wetters, FA 1420219 (Nat.
Arb. Forum Jan. 17, 2012) (...the Panel finds that Complainant has established
its rights in the TRUE VALUE mark under Policy 4(a)(i) by registering it with the
USPTO.); see also Space Needle LLC v. Lalji, D2008-1883 (WIPO Feb. 2, 2009)
(The Panel finds that Complainant has established rights in the mark SPACE
NEEDLE, by virtue of its registration with the United States Patent and
Trademark Office).
The disputed domain name, <fuelforthought.com>, duplicates exactly
Complainant's FUEL FOR THOUGHT trademark, except for spaces between
words -- which cannot be placed in a domain name -- so the Panel finds the
name to be identical to the mark. See Fashion Design Council of India v.
Pawaskar, D2015-2296 (WIPO Feb. 4, 2016) (finding <indiafashionweek.com> to
be identical to the INDIA FASHION WEEK mark); see also Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001)
(finding <hannoverre.com> to be identical to HANNOVER RE, as spaces are
impermissible in domain names and a generic top-level domain such as .com or
.net is required in domain names).
As a result, the Panel finds that Complainant has satisfied the first element
required under the Policy.
Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in
the disputed domain name. Respondent counters that he has made and is
making legitimate use of the disputed domain name in providing links to third
party websites that offer products that conform to the plain meaning of the
Included in those cases are circumstances where the complaints failure would
be a foregone conclusion based upon the fact that the disputed domain name
was registered long before the complainant obtained its trademark rights. See
Tiny Prints, Inc. v. Oceanside Capital, FA 1337650 (Nat. Arb. Forum Oct. 8,
2010); see also Proto Software, Inc. v. Vertical Axis, Inc, D2006-0905 (WIPO Oct.
10, 2006); see also carsales.com.au Limited v. Flanders, D2004-0047 (WIPO
Apr. 8, 2004) ("In the Panels view such a finding [reverse domain name
hijacking] is particularly appropriate where the Respondents registration of the
domain name predates the very creation of the Complainants trademark.").
Accordingly, the Panel finds that the filing of the Complaint is an abuse of the
Policy and that Complainant has engaged in an attempt at reverse domain name
hijacking.
DECISION
Having not established all three elements required under the ICANN Policy, the
Panel concludes that relief shall be DENIED, and finds that the Complaint was
brought in bad faith, and constitutes an abuse of the administrative proceeding.
Accordingly, it is Ordered that the <fuelforthought.com> domain name REMAIN
WITH Respondent.