A three-member UDRP Panel at the National Arbitration Forum denied a complaint by City Bank for the domain name CITYBANK.COM. UDRPro represented the domain owner.
City Bank does not own any registered trademarks for "City Bank", and the Panel held that the Complainant failed to provide any evidence of secondary meaning in the term which would give rise to common law rights under the UDRP. City Bank simply alleged that it "spent significant time, money and effort to establish public recognition and has portrayed its trademark in advertisement, brochures and promotional materials", without providing sufficient evidence of its alleged activities related to the claimed mark.
While the Panel did not need to consider the Respondent's rights or legitimate interests in the disputed domain name, or Respondent's lack of bad faith in registering and using the domain name, UDRPro argued that the domain name consists of generic, descriptive terms.
Complainant waited over 18 years to file the present dispute, and UDRPro asserted a laches defense. The Panel states that "Complainant did not even prove its rights in a trademark registration of trademark rights of any kind, the defense of laches is no longer applicable."
However, the Panel found that "Complainant’s actions constitute an abuse of the UDRP process", and declared that "the Complaint was brought in bad faith and thus constitutes Reverse Domain Name Hijacking." While laches was not considered by the Panel as a defense, it appears that laches was a determinative factor in the finding of reverse domain name hijacking:
"The fact that Complainant filed this proceeding nearly 15 years after Complainant should have known of the existence of the disputed domain name and over 18 years after the disputed domain name registration, suggests that Complainant knew it had a very weak claim and nevertheless filed its UDRP Complaint in bad faith."
Full text of the NAF decision can be read here.
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