The disputed domain name in this week’s decision is owned by a Mr. Will E. The complainant, Electronic Transaction Systems Corporation, claims to have used the EMONEY trademark for financial services since 1999. Unfortunately, its trademark registrations are in the name of someone else and weren’t filed until some years after respondent created its accused domain name.

shutterstock_164636990The complainant also claims it had common-law rights to the mark but it didn’t submit any evidence beyond the “First Use” date listed in its trademark registrations. The panel found that the complainant failed to satisfy even this preliminary requirement of UDRP policy regarding ownership of prior trademark rights.

The panel also found that the complainant failed to show that the respondent has no rights to or legitimate interest in the domain name. Respondent made bona fide use of the domain name either as part of a business which resells generic domain names, and this was one such domain name, or as the host site for links to third parties offering goods or services linked in some way with electronic monetary matters.

As for bad faith, the three-member panel noted that the name has a dictionary meaning and is rather descriptive when used in relation to financial services. It then pointed out that “at the time of registration Respondent could not have done any meaningful due diligence on the term EMONEY and it would not have discovered Complainant’s USPTO filings.”

Finally, the panel hinted at a laches issue: “Even if Respondent was an astute cybersquatter who spotted the (unproven) public use of the Complainant’s trademark in 1999, fourteen years has since elapsed. In the absence of any compelling physical evidence, this passage of time makes the meaningful assessment of Respondent’s state of mind in 2000 difficult.”

Ultimately, the complaint was denied, but the complainant was spared a worse penalty when the panel said “although Complainant might have better tempered its submissions there has been no attempt at reverse domain name hijacking.”

Steve Levy
Show Me the EMONEY

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