The Complainant was Bulbs 4 East Side Inc., d/b/a Just Bulbs of New York, New York, United States of America, represented by Kaufman & Kahn, LLP, United States of America and the Respondent was a Gregory Ricks of College Station, Texas, United States of America.
The basic facts show that the domain name in dispute was actually subject to UDRP proceedings back in 2003 when a company known as Superiority, Inc (The Complainant’s predecessor in this dispute) filed a complaint against the domain.
“The panel in the Superiority case denied the complaint. The panel found that the complainant had failed to prove that the respondent lacked legitimate interests in respect of the Domain Name, because the respondent was selling light bulbs and using that term in its descriptive sense and there was no evidence that, at the time of the Domain Name registration, the respondent was aware of the complainant’s JUST BULBS service mark. The panel in the Superiority case also noted that the respondent there “evinced good faith by removing light bulb advertisements from its site subsequent to being notified of the dispute” and commencing to advertise flower bulbs at the website. Accordingly, the panel held, “Respondent has a legitimate interest in using the domain name for flower bulbs.”
Observing further that “this is not a case where Respondent is deliberately benefitting from the use of the trademark meaning of JUST BULBS by funneling traffic to its site,” the panel in Superiority concluded as follows: “Since Respondent has represented that it will not resume advertising light bulbs, Respondent’s use of the domain name as a portal for customers interested in flower bulbs is sufficient to demonstrate a legitimate interest and a bona fide use of the domain name.”
So what had changed in the 10 years since this dispute?
Well, in October 2008, the entire interest in the JUST BULBS service mark was transferred to Complainant Bulbs 4 East Side Inc., the current Complainant who is also in the business of selling light bulbs. Complainant has been using a website located at “www.justbulbsnyc.com” in connection with its business.
Nevertheless, the companies are essentially the same and so this would not have constituted a separate filing; the Complainant surprisingly acknowledged this fact in their complaint.
When it comes to UDRP refilling the consensus view is that “a refiled case may only be accepted in limited circumstances. These circumstances include when the complainant establishes in the complaint that relevant new actions have occurred since the original decision, or that a breach of natural justice or of due process has occurred, or that there was other serious misconduct in the original case (such as perjured evidence). A refiled complaint would usually also be accepted if it includes newly presented evidence that was reasonably unavailable to the complainant during the original case.”
The Panel however accepted the refilling of the case based on Complainant’s assertion that “relevant new actions” had occurred.
These new developments included the fact that Respondent was now using the Domain Name to advertise light bulbs, not flower bulbs, and the fact that Respondent transferred the Domain Name from one privacy/proxy service (NameSecure.com) to another (Internet.bs Corp.).
The Respondent failed to provide a formal response to the Complaint merely stating:
““I did not register JustBulbs.com in bad faith 10 years ago when the complainant attempted to reverse hijack this generic domain name. Now 10 years later I still did not register JustBulbs.com in bad faith and I should not be subjected legal expenses resulting from repeated reverse hijacking attempts.”
To his detriment?…Well fortunately for him no, the Panel firstly held that the “movement” of the domain name registration from one privacy provider to another did not constitute a “new registration” and therefore the underlying Registrant was the same person in the Superiority case of 2003.
Secondly, whilst it was accepted that the Respondent was USING the domain name in bad faith due to the fact that he had resumed his use of the Domain Name in connection with light bulb advertisements (as opposed to flower bulb advertisements) and offered it for sale he couldn’t ignore the fact that the Policy has a conjunctive requirement and that both registration and use in bad faith must be found for a claim to succeed under the third element.
The panel held:
“This conjunctive requirement is fatal to Complainant’s complaint in this refiled proceeding. Respondent’s bad faith use of the Domain Name since the Superiority decision does not by itself alter the fact that Respondent’s initial registration of the Domain Name was held to be legitimate and nothing on the current record allows this Panel to find otherwise.”
So what do you think? Good decision, bad decision?
Well, It is a common principle that law should not be retroactive and the conjunctive requirement of the bad faith element of the UDRP has been affirmed in many recent cases overturning the concept of “retrospective bad faith”. If a domain name was registered in good faith, it cannot, by changed circumstances, the passage of years, or intervening events, later be deemed to have been registered in bad faith.
Panel’s should also be careful not to add anything to the policy and interpret it to suit their own ideals as has been done so many times in the past, but in the same vein, the Respondent took a risk by not responding and presenting its case. Another day, another Panel he may have found his domain name in the hands of the Complainant.