Brett Lewis Wins Shocking.com UDRP
A UDRP was recently filed for Shocking.com, which clearly appears to be a descriptive domain name, and Brett Lewis of Lewis & Lin won the decision on behalf of the domain registrant. The company that filed the UDRP is Interbasic Holding S.A, which also filed a UDRP for ZUT.com (and lost that one, too).
Brett Lewis and Zak Muscovitch of The Muscovitch Law Firm (who defended ZUT.com) asked for Reverse Domain Name Hijacking decisions, and the request was denied in both instances. For more on RDNH, see Nat Cohen’s post from yesterday.
Below are some of the findings from the Shocking.com UDRP. I will post a link to the UDRP decision once WIPO puts it online. Congratulations to Brett Lewis, Zak Muscovitch, and the domain registrants. ** Update ** UDRP is now available here.
“The Panel notes that in addition to the Disputed Domain Name, the Respondent (or its related companies) is also the registrant of at least five other domain names incorporating generic terms (i.e.,,,,and). Further, in the first two years after the Disputed Domain Name was registered, it was indeed used in connection with a purpose relating to its generic meaning (i.e. the site provided comparative prices on Internet services under the heading “Shocking Prices”). After the Website was updated in 1999, it offered ISP-related services and no longer used the heading “Shocking Prices” on the Website.”
“Although the use of a domain name in connection with its generic or descriptive meaning readily supports a finding of rights or legitimate interests, it has been held previously that registrants that register generic or descriptive domain names can have rights or legitimate interests in such domain names so long as they have been used in connection with a bona fide offering of goods and services before receiving notice of the complaint (see Allocation Network GmbH v. Steve Gregory, supra).”
“After navigating through the Website, the Panel finds that although Internet users are redirected to “www.chico.net” upon clicking on any links displayed at the Website, there is no evidence to suggest that the ISP-related services advertised at “www.chico.net” are anything other than a bona fide offering of services. In fact, according to the snapshots available on “www.archive.org”, the Disputed Domain Name used to host a website advertising ISP-related services as early as 1996 and appears to have been used to provide a bona fide offering of services ever since. “
“The Panel finds that the Respondent has rights in respect of the Disputed Domain Name as a result of its legitimate use of the Website in connection with ISP-related services.”
“The Panel notes that the Complainant has failed to provide sufficient evidence of the fame of the SHOCKING trade mark throughout the world and in particular in the US where the Respondent is located. “
“Although the Complainant contended that the SHOCKING trade mark was very well-known at the time that the Disputed Domain Name was registered, the Panel notes that no evidence has been adduced by the Complainant in support of such contentions. Absent such evidence, and in light of the Respondent’s assertion of good faith use as supported by a record of bona fide use of the Disputed Domain Name for a number of years, the Panel is unable to find that the fame of the SHOCKING mark was such that the Respondent (a US-based entity) was more likely than not aware, or had knowledge, of the Complainant’s mark at the time of registering the Disputed Domain Name. The Panel is therefore unable to find that the Respondent knew or should have known of the Complainant and its SHOCKING mark when acquiring and using the Disputed Domain Name.”
“The Panel is not convinced that the Respondent acquired the Disputed Domain name with the intent to profit from the Complainant’s trade mark. The Respondent’s business is so distinct from the business of the Complainant that Internet users or customers are unlikely to be confused as to whether the Respondent may be associated, affiliated or sponsored by the Complainant, which precludes the presumption that the Respondent acquired the Disputed Domain Name, expecting to profit from this confusion. “
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