If you follow this blog, then you’re familiar with my posts about the now infamous cybersquatter Yoyo.email and its many thousands of [brand].email domains. Well, this post is not about that. It seems that someone else is intent on getting into the .email domain game. On December 24th, a decision was issued holding that the owner of nissan.email had a legitimate interest in the domain. The Complainant, Nissan Motor Co., owns the famous NISSAN brand in relation to cars and other vehicles. However, the Respondent in this case was able to register the.email domain and have it resolve to a page which simply says “Website coming soon!” The famous automaker, however, decided not to wait and proceeded to file a Complaint against this domain.
Passive Holding and the Burden of Proof
Under UDRP precedent, the failure to resolve a domain to a working website can still be held as a violation under the concept of “passive holding”. The thinking here is that the cybersquatter will register and then hold a domain – with no substantive website – in the hopes that the brand owner will eventually find them and offer to buy the domain for a princely sum. However, Complainant did not file it’s case under the UDRP. Rather, this case was filed under the URS, which experienced Domain practitioners know carries a higher burden of proof for brand owners. Rather than supporting the case under the UDRP¹s preponderance of the evidence standard of proof, the URS requires “clear and convincing evidence” with no issues of material fact. Under this high standard, the assumption underlying the concept of passive holding appears to be unsupportable.
A Person Named Nissan
Rather, in the nissan.email case, the Respondent claimed that he registered the domain with the intent of offering it to some as-yet unknown person who has the name “Nissan”. A search for that word with all mention of cars and vehicles filtered out does, in fact, reveal some individuals with this name. One website claims that there are over 6,000 people in the world with this name (mostly in the US and Israel). Of course, there is typically no witness testimony or cross-examination under either the UDRP or URS so the Panel in this case was free to take the Respondent at its word. Ultimately, the Panel found that “This intended use is not necessarily in bad faith, but a determination of this issue is best left for the facts of such a case.” The Panel further noted that the situation might be different if it were shown that the Respondent had a past pattern of registering domain names for the purpose of interfering with trademark owners. Unfortunately, the panel didn’t suggest how this could be done while the Respondent is hiding his identity behind a privacy service.
Was the URS the Best Choice?
While one could argue that this is a case on cusp of bad faith, that very point speaks directly to the standard of proof under URS cases and leads to the conclusion that this process may not have been the best choice for pursuing this case. Perhaps the Complainant could have gotten a different result under the UDRP and, at a minimum, it could likely have gotten behind the domain owner¹s privacy service had it filed an action in court. What it may ultimately show is that brand owners like Nissan are not happy about the cost of pursuing expanded cybersquatting in the new gTLDs and are trying less expensive enforcement vehicles (no pun intended!) to try and conserve their limited budgets.
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