LYTRO digital camera maker in California goes after a respondent in Australia who claims he registered lytro.com.au for use in his business of manufacturing carbon fibre equipment for competitive rowing. The complainant first contacted the respondent to try and buy the domain name and there was some back-and-forth during which the respondent said it was just a few months away from the launch of its website but, if the complainant “were to make a motivating offer to acquire the domain” it might consider the matter. The complainant replied with more claims of its trademark rights and then asked the respondent to suggest a price. Eventually the respondent stopped replying since it wasn’t interested in selling. In its argument, the complainant pointed out that the respondent said it was 6 months away from launch but 16 months have now passed and the site still hasn’t launched.
The panelist found that the domain name is confusingly similar to the complainant’s LYTRO mark and, since its site still hasn’t launched and it hasn’t provided evidence to support its ongoing intention to launch, the respondent has no rights or legitimate interest in the domain name. However, he then found that the respondent didn’t register the domain name in bad faith since it really did intend to use the domain name for its rowing equipment business (the term LYTRO is supposed to be a play on the words “light” (“lyt”) and “row” (“ro”).
This is a very close case and I’m hard-pressed to say how the complainant’s counsel could have handled it better. Perhaps it could have further investigated the respondent and its business and then advised its client that a negotiated purchase would be the pragmatic way to go. Of course, investigations cost money and maybe that amount could have been added to a purchase offer. Ultimately, this may have been a case of the brand owner wanting to roll the UDRP dice to try and get the domain name at a lower cost than any price it could have negotiated with the respondent.
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