As a Complainant, Xedoc Holding SA would be one of the organisations many would attempt to steer clear of. Not only due to them possessing one of the most well respected UDRP attorneys in the industry but also their enviable portfolio of generic domain names; kaleidoscope.com being one of them.
Interestingly enough the domain name has been the subject of domain dispute proceedings back in 2004 and 2007. It is unclear at this point whether the Complainant is the same as any of the entities from the previous cases but what is clear from both is that the Complainant’s failed to show that the Respondent registered the domain name with the aim of exploiting their marks.
The Complainant In the 2007 case had a UK trademark which it used to offer for sale, clothing, fashion apparel and household furnishings from its commercial website www.kaleidoscope.co.uk. The Complainant’s main contentions were the third party links displayed on the kaleidoscope.com website, some of which related to fashion items. Respondent counteracted the Complainant’s contentions by focusing on the descriptive nature of the domain which the Complainant’s mark could not dispel.
The 2004 case, involved a US company that went by the name of Kaleidoscope Imaging, Inc who attempted to rely on its service mark registered January 19, 1999.The panel held:
“With respect to Complainant’s allegations pursuant to Policy 4(b)(i), Complainant has failed to satisfactorily establish bad faith registration of the disputed domain name, because Respondent had no knowledge of Complainant at the time of registration and never made a deliberate attempt to capitalize from the name. See Canned Foods Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001) (holding that where the domain name is a generic term, it is difficult to conclude that there was a deliberate attempt to confuse on behalf of Respondent, and stating that “[i]t is precisely because generic words are incapable of distinguishing one provider from another that trademark protection is denied them”).”
With so much precedent in favour of the Respondent It is difficult to see a negative outcome for them. Yes, there may be elements of bad faith use in this case in regards to the advertising links but retroactive bad faith registration is in direct opposition to the conjunctive requirement found in the bad faith element; namely, that a domain must be registered AND used in bad faith.
The panel in Substance Abuse Mgmt., Inc. v. Screen Actors Modesl [sic] Int’l, Inc. (SAMI), D2001-0782 (WIPO Aug. 14, 2001)held;“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.”
There can only be one right decision.