Delay In Website Setup Leads To Transfer Order?

Having been in this business for many years and having handled thousands of domain disputes I’ve found that owners of these disputed domains seem to fall into one of a small number of categories, such as: The hard-core cybersquatter; the shifty squatter who tries to concoct an overly-creative yarn to defend its domain; the pragmatic and quick-profit domain investor; and the owner who actually has a good and defensible story to tell.

But the category that’s often the most difficult to handle is the naïve owner who didn’t realize they were doing something that would get them into hot water.  These owners often register and use their domains in such a way that is technically infringing though they may not understand the implications of their actions until it’s too late.  Conversations with these owners have been some of the most challenging of my career as they require tact, careful and repeated explanation of the law, and lots and lots of patience. Sometimes the owner gets it and we’re able to resolve the matter, but sometimes they just refuse to budge often forcing the brand owner to make a hard decision on whether to take the dispute a step further.

A recent case involving the domain usedhaasparts.com seems to fall somewhere between this last category and one where the owner has a good story. The complainant’s HAAS trademark is used on factory milling and machining tools. The disputed domain name was registered earlier this year and the UDRP complaint was filed in September.  In between those dates there was some correspondence between the parties, although the decision only gives limited specifics about the Respondent’s offer to sell the domain to the Complainant for “what I have in it along with what GoDaddy charged me.”

However, I feel the most important facts of the case are 1) the Respondent owns a business that sells new and used factory machines; 2) he claims that he intended to use the usedhaasparts.com domain to actually sell used parts for HAAS products; and 3) at the time he was first contacted by Complainant, he hadn’t yet set up his website which was then showing pay-per-click links to Complainant’s competitors.

So, here we have a guy who perhaps could have more quickly gotten his site up and running and, if it was set up in compliance with UDRP precedent which allows some “fair use” of trademarks, this decision could have gone very differently.  No mention was made in the decision about the time between the domain’s registration and the filing of the UDRP complaint or whether it was reasonable for the Respondent to have launched his site within that time.  However, the Respondent’s offer to sell the domain to the Complainant was also not considered by the Panelist and I suspect this is because the offer was probably made in response to a demand letter from the Complainant and the amount requested may not have risen beyond the Respondent’s out-of-pocket costs.

In the end, it seems this Respondent’s hosting of competitive links on his website lead to his downfall.  The message is clear – domain owners must educate themselves on what is and is not permitted when using a domain that contains a trademark and, if they’re going to do something defensible, do it as soon as possible after registering the domain.