Domain Name: adventurerv.com / Case: CNRV, inc. v. Vertical Axis Inc., No. FA0912001300901 (Nat’l. Arb. Forum May 3, 2010) / Element(s) not met: 4(a)(ii), 4(a)(iii)

Complainant sells RV parts and accessories in the eastern part of Tennessee. Respondent, no stranger to UDRP proceedings, registers domain names and sets up pages with pay-per-click ads related to the subject of the words in the domain name.

Though Complainant had been operating on the web since mid-2004, which is the same year it incorporated, it claimed that its predecessor in interest had been using the ADVENTURERV trademark since 1989.

The three-member Panel denied the complaint. The majority held that Complainant had established common law trademark rights in ADVENTURERV by the time the complaint was filed in 2010. But the Complainant failed to establish the other to required elements of Paragraph 4 of the UDRP.

The Panel found that Complainant did not establish its trademark rights in the 2-year time period between 2004 (when it incorporated) and 2006 (when Respondent registered the Domain Name). At first blush this would seem to contradict the finding that Complainant had established trademark rights in ADVENTURERV. You have to read the opinion closely to see that what the Panel found was that those trademark rights were acquired in the longer period of time from incorporation through the date of the filing of the complaint.

Although the Complainant argued that its predecessor had been using the ADVENTURERV mark since 1989, the Panel did not accept that as true. It found that Complainant had not presented enough evidence to show those rights had passed on to Complainant.

The Panel found that Respondent had not registered the Domain Name in bad faith because the Respondent recognized and acted upon the Domain name’s descriptive characteristics.

Finally, and somewhat surprisingly, the Panel found that Complainant, in bringing the UDRP action, engaged in attempted reverse domain name hijacking. To show reverse domain name hijacking, a respondent must show:

• that the complainant knew of the respondent’s unassailable right or legitimate interest in the domain name;
• the clear lack of bad faith registration and use, with the complainant bringing the action nonetheless;
• that the complaint was brought in knowing disregard of the likelihood that the respondent possessed legitimate interests; or
• that the complainant knew it had nor rights in the trademark or service mark upon which it relied and nevertheless brought the complaint in bad faith.

The finding of reverse domain name hijacking in this case turned on the descriptive nature of the mark. The Panel found that Complainant knew it could not establish bad faith registration given:

• he weakness of its trademark;
• Respondent’s descriptive use of the domain name; and
• the inherent unlikeliness that Respondent could have had Complainant in mind when it registered the Domain Name, given the narrow geographic scope of Complainant’s use and the many concurrent uses of the same name.