This is a story about a company that forgot to renew its domain name, which was quickly scooped up by a domainer who refused to relinquish the name back. Spoiler alert—in this story, there is no happy ending. You may be wondering how a company that has a trademark lost a UDRP complaint to a domainer. What you always have to remember is that there are three things you must prove to win a UDRP case. Let’s go through the facts of the case together to see where this company went wrong.
The Facts of the UDRP Case
This proceeding, reported by the National Arbitration Forum (adrforum) was between the company Healthy Pets, Inc. and a domainer by the name of Kwangpyo Kim.
Complainant – Healthy Pets, Inc.
- Healthy Pets, Inc. is a wholesaler, retailer, and distributor of pet health-related products.
- One of Healthy Pets, Inc.’s principal products is Joint Max brand pet joint supplement
- Healthy Pets, Inc. has owned the domain jointmax.com since August 2001.
- The jointmax.com domain is printed on Joint Max product and other product labels.
- Healthy Pets, Inc. first learned that it had lost ownership and control of jointmax.com on or about January 29, 2021.
- Healthy Pets, Inc. had inadvertently failed to renew its registration of jointmax.com when it came up for renewal.
- Upon learning that a domainer had obtained ownership of jointmax.com, Healthy Pets, Inc. attempted to reach the domainer to resolve the domain ownership matter. The domainer did not respond.
- Healthy Pets, Inc. has rights in the JOINT MAX mark with the United States Patent and Trademark Office (“USPTO”) since March 11, 2003.
Respondent – The Domainer
- Respondent arguments are that there is no basis for transferring jointmax.com to Healthy Pets, Inc.
- Respondent registered jointmax.com on September 15, 2020, and has maintained continuous ownership over the past year. Healthy Pets, Inc. has taken no action until it filed this UDRP complaint.
- Respondent had no knowledge of Healthy Pets, Inc. when he purchased jointmax.com.
- jointmax.com is a combination of common, descriptive words with intrinsic value as a short memorable domain name.
- Respondent never targeted or attempted to sell jointmax.com to Healthy Pets, Inc. and has used the domain name in good faith in a manner consistent with the descriptive terms of the words “Joint” and “Max,” in no relation to Healthy Pets, Inc.
- Respondent received an anonymous domain acquisition request in February of 2021. This UDRP complaint was filed only after Healthy Pets, Inc. chose not to purchase jointmax.com from him.
- Healthy Pets, Inc. states that the Respondent offers only the bare statement that the words comprising the trademark/domain are “common, descriptive words”, but offers no actual competent evidence to support this conclusion. On the other hand, Healthy Pets, Inc. has submitted a copy of its certificate of registration for its JOINT MAX mark.
- Healthy Pets, Inc. alleges that it defies rationality to suggest that consumers would decide to type “jointmax.com” into their browsers because they spontaneously conjured into consciousness the terms “joint” and “max”. The only plausible reason any consumer would do so is because of a familiarity with the Healthy Pets, Inc. JOINT MAX product.
- Respondent argues that the terms of jointmax.com are common and generic, and therefore, Healthy Pets, Inc. does not have an exclusive rights.
- Respondent contends that it registered jointmax.com solely because of the combination of the words “joint” and “max”.
- Respondent also owns many other domain names that include a descriptive word followed by “max.”: keymax.com; gamemax.com; megamax.com; climbmax.com; seniormax.com; drivemax.com; studiomax.com; grassmax.com; and bonejoint.com.
- Furthermore, Respondent provides an Internet search screenshot showing various results for the term “jointmax” that do not include Healthy Pets, Inc.
Complainant must prove the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
This portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. Healthy Pets, Inc. has trademark rights to JOINTMAX through its registration with the USPTO and argues that Respondent’s jointmax.com domain name is confusingly similar to Complainant’s JOINT MAX mark because it incorporates the mark in its entirety.
Therefore, the Panel determines the jointmax.com domain name is confusingly similar to JOINT MAX mark.
Complainant must prove the Respondent has no rights or legitimate interest in respect of the domain name.
The Panel finds that Healthy Pets, Inc. has not met its obligation of proving that Respondent has no legitimate interest in jointmax.com. Investing in domain names consisting of common, dictionary terms, for purpose of resale, is a legitimate business. Respondent lists other common word domain names that it also owns, which include a descriptive word and “max”, making it reasonable to conclude that Respondent did not target Healthy Pets, Inc.’s trademark.
Therefore, the Panel concludes that Respondent has rights and legitimate interests in the disputed domain name.
Complainant must prove the domain name was registered and is being used in bad faith.
Since the Panel concludes that Healthy Pets, Inc. has not satisfied point number 2, they declined to analyze point number 3. Healthy Pets, Inc. must prove all three elements under the Policy. Its failure to prove one of the elements makes a further investigation unnecessary.
The Finding: Complaint Denied
All three elements required under UDRP were not met. Because of this the Panel concluded that the domain name remains in control of the Respondent.
This story is a cautionary tale for businesses everywhere. A trend that is quickly becoming the norm is capturing generic trademark names when they become available in the marketplace – often through failure to renew registration. A domainer may defeat a UDRP complaint by showing it has used the domain name in connection with a bona fide offering of goods or services, in this case, investing in domain names for resale.
Now that Healthy Pets, Inc. has lost the UDRP proceeding, they only have two options to proceed. They can take the case to court or they can buy the domain name for whatever price the domainer ascribes to it. With annual sales of over $1.2 million and the advertising budget in connection with these products exceeding $200,000 annually, it’s going to be a steep price.
This serves as a reminder of why something as innocuous as forgetting to turn on auto-renew could end up costing your business thousands of dollars down the road to remedy. As the saying goes, “An ounce of prevention is worth a pound of cure”.
The 101domain Corporate Brand Services team is fully versed in UDRP proceedings and has an extremely successful track record of getting names transferred back to our clients. Give us a call to learn more +1.888.982.7940