Help Scout may need to start scouting for some new domain names. The online customer support solutions company recently unsuccessfully attempted to recover the domain names helpscout.com and help-scout.com.

The National Arbitration Forum (NAF) panelist found that the domain names are both confusingly similar to the Complainant’s mark and that the Respondent has not established rights and legitimate interests in the domain name. However, because no trademark rights for the Help Scout name existed at the time the domain names were registered, no evidence of bad faith usage of the domain names by the Respondent was found. As such, Help Scout was not able to meet the third requirement of the UDRP (bad faith by Respondent) and the Complaint was therefore denied. It is rather surprising that reverse domain name hijacking (RDNH) was not found as it so often is when a Complainant’s trademark rights don’t pre-date the creation of the domain name.

As we noted last week, cases such as this underline the importance of promptly registering trademarks, presenting clear and incontrovertible evidence of infringement in the complaint, and carefully selecting which domain names to pursue via UDRP action. Experienced UDRP counsel can help complainants, such as Help Scout, select winnable cases and solid domain name advisors can assist with longer-term digital strategy.

The presence or absence of a trademark can sometimes make or break a UDRP case for a Complainant. Nice Car Inc.'s trademark for NICE CAR seemingly played a large role in deciding the outcome in its complaint against choi sung sik over the domain name NiceCar.com, filed with the National Arbitration Forum.

In the case of a default (non-response) by the Respondent, the Panelist made her decision based only on the information that the Complainant presented. The Complainant has owned a US Trademark for NICE CAR in relation to motor vehicle dealerships and repair services since 1975.  Surprisingly, despite some technical issues in the PTO application process and a cancellation action by a competitor claiming prior use, the trademark was never called into question for being descriptive of the Complainant’s services.

Owning rights to such a borderline mark may be unusual, but the Panelist determined that the it was identical or confusingly similar to the NiceCar.com domain name. The Complainant was also able to prove that the Respondent lacked rights or legitimate interests in the disputed domain name and that he had registered the name in bad faith, as he offered to sell it to the Complainant for $100,000, a sum that greatly exceeds the Respondent's costs of registering and maintaining the domain name.

Based on the above factors, the Panelist ordered that the domain name be transferred to the Complainant. While the proceedings themselves were somewhat straightforward based on the evidence presented, it's somewhat unusual for a case involving such a descriptive term to proceed to smoothly. This shows that if the Complainant can satisfy all three requirements and the respondent defaults, a transfer of almost any name is possible.

The UDRP complaint that Edward Smith’s attorney filed against Douglas Bates over the domain name Joopa.com hinged on one of the three elements required for domain name transfer. Was the Complainant able to prove that the Respondent registered the domain name in bad faith?

The Complainant is the owner of the JOOPA mark, which it registered in March 2011. In his Complaint with the National Arbitration Forum (NAF), the Complainant states that because the trademark is identical to the disputed domain name, he has rights and legitimate interests to it, while the Respondent does not. Furthermore, he explains that he tried to purchase the domain name from the Respondent at multiple points, but each time, the Respondent asked for substantially more money than he was offering.

The Respondent, a doctor who develops websites on the side, explains that he has owned the disputed domain name for 11 years, which far exceeds the length of the Complainant's trademark (not even filed until after the Complainant first contacted the Respondent about Joopa.com). The Respondent explains that he is developing the domain name, albeit slowly because of his fulltime job, and offering to sell it to the Complainant does not demonstrate bad faith. Finally, he accused the Complainant of attempting Reverse Domain Name Hijacking.

In its decision, the Panel found that the Complainant satisfied the first two necessary elements of a UDRP complaint, but when it came down to the bad faith requirement, the 11-years between the Respondent's website registration and the Complainant's trademark registration proved that this element would not be satisfied. Additionally, the Panel found the Complainant guilty of Reverse Domain Name Hijacking, citing an earlier complaint in which the Complainant "was not entitled to the domain name and hence had no colorable claim under the Policy."

Once again, this is a reminder that all three elements must be satisfied in order to have a successful UDRP complaint, and if the Complainant simply does not have trademark rights that predate the domain name, the Panel will get to the bottom of it.

 
The University of Miami filed two UDRP complaints with the National Arbitration Forum (NAF) over UHealth.com and UHealth.org, and although the domain names and complaints were similar, the outcomes were decidedly different.

It's important to note that while the Complainant, the University of Miami, was the same in both complaints, the Respondents were different. Marchex Sales was the Respondent in the UHealth.com complaint, and DNS Manager/Sentri group was the Respondent in the UHealth.org complaint. In both cases, a three-person panel from the NAF decided the outcome of the case, and one Panelist, Wolter Bettink, sat on both panels.

Despite the similarities on the surface, there were a number of factors that distinguished the complaints and led to the different results. The University of Miami registered the trademark UHEALTH UNIVERSITY OF MIAMI HEALTH SYSTEM in 2007, and at that point, UHealth.com was already in existence, while UHealth.org changed ownership and content after the trademark went into use. This distinction, along with an orange and green color scheme that mirrored the University's official colors, was one of the reasons that the Respondent of the .ORG complaint was found to be using the domain name in bad faith and had no rights or legitimate interests.

In fact, the connection between the term UHEALTH and the colors was a point of contention in both complaints. While both Respondents argued that the connection between an established mark and specific colors should not affect domain name disputes, the .ORG Respondent's use of the colors on a similar pay-per-click page ultimately contributed to losing the complaint.

In the end, the .COM domain name was ordered to stay with the Respondent, while the University of Miami acquired the .ORG domain name. It's worth noting that in the transfer, however, there was a dissenting opinion by one Panelist that echoed many of the reasons that the University did not win the .COM complaint, which reinforces the inherently subjective nature of UDRP decisions.

The case highlights the critical factor of timing in UDRP disputes. If a domain was owned by a respondent before the complainant’s trademark rights were created it is nearly impossible to show that bad faith was involved.