Gekko.com UDRP: Complaint Denied
A UDRP was filed against the Gekko.com domain name, which had a creation date of July 24, 2001. The UDRP was filed at the World Intellectual Property Organization, and it is listed as Case No. D2016-0362. According to Wikipedia, a “Gekko is a genus of colorful and diverse Southeast Asian geckos commonly known as true geckos or calling geckos.”
The complainant operates a boating company with the name Gekko, and it looks like that company presently uses GekkoSports.com for its website. The respondent apparently operates a company with the same name in a different market, and the domain name is currently parked. The UDRP decision was published this morning, and the complaint was denied. Most interestingly, both the complainant and respondent were self-represented.
There are a few aspects of the decision I would like to call out as I found them most interesting (all are found in the Rights or Legitimate Interests section of the decision):
Both parties agree that there is no relationship between them. Complainant submits that Respondent is not using the disputed domain name for a valid ongoing business, but is “sitting on the [disputed domain name] since 2001 without any connection to any business or product”. Respondent states that the activities linked to the disputed domain name only relate to travel in Europe.
In this respect, limited factual research on “www.archive.org” shows that before referring to a parking page, the website associated to the disputed domain name used to contain travel related content. (The WIPO Overview 2.0 records to be a consensus view among WIPO panelists that panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent and the use of the domain name, consulting a repository such as the Internet Archive (at “www.archive.org”, see paragraph 4.5.) in order to obtain an indication of how a domain name may have been used in the relevant past). In any event, the Panel finds that there is no evidence showing that Respondent’s conduct was aimed at creating confusion with Complainant’s trademark at any point in time.
Moreover, the Panel notes that the dominant word element of Complainant is descriptive, as it refers to a type of reptile. The Panel considers that normally a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of commonly used descriptive or dictionary terms, in the absence of circumstances indicating that the respondent’s aim in registering the disputed domain name was to profit from and exploit the complainant’s trademark (See Harvard Lampoon, Inc. v. Reflex Publishing Inc., WIPO Case No. D2011-0716; National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424).
Complainant does not provide any proof indicating that Respondent’s aim in registering the disputed domain name was to profit from and exploit Complainant’s trademark. The Panel finds that Respondent’s offer to sell the disputed domain name to Complainant is not relevant as Respondent was first approached by Complainant to sell the disputed domain name.
One thing I found a bit troubling is the language in that last section, particularly, “Respondent’s offer to sell the disputed domain name to Complainant is not relevant as Respondent was first approached by Complainant to sell the disputed domain name.” Does this mean that if the domain owner had approached the complainant offering the name for sale that the decision would have been different? Assuming that may be the case, it’s something domain owners should keep in mind the next time they do outbound marketing on a keyword domain name.
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