Panel divided, Transfer and RDNH in the same dispute

Domain disputes decisions do not always have a unanimous decision. Sometimes one panelist might disagree with other panelists. However, the scale of  dissension and diversion seldom enlarged. In today’s unique case study we would see how one side of panelists decided for Transfer while the other went as far as awarding a RDNH. 

The dispute was submitted at  WIPO, with the domain name in contention being The Complainant was an individual who operated an agricultural company under the domain name The Complainant hails from Chile.

The Complainant has claimed the trademark rights for REIMEX in Chile from 2017. The domain name originally was held with the Complainant. The domain name was acquired by the Respondent in an auction after the Complainant failed to renew the domain name and it expired. 

The Respondent claims that he had no knowledge of the Complainant’s exclusive rights over the REIMEX mark.The Complainant presents that at the time of registration a search results several unrelated entities using the term. The Canadian Respondent also checked for trademarks over the mark in the US and Canada and couldn’t find one. 

Both the parties engaged in a conversation on the disputed domain name before approaching WIPO. However, an agreement over the price couldn’t be met and the dialogue was put to a halt. 

Two of the panelists (majority) found that the Respondent himself mentioned that he was aware of the Complainant. The domain was acquired through a platform that sells domain names that have just expired. Domain names in such an auction are usually bought to sell to the original owner at an increased price. 

The majority found bad faith in Respondent’s registration of the domain name and the domain name was transferred. 

One dissenting panelist had extremely opposite opinions regarding the dispute. The dissenting panelist maintains that Respondent registered the domain name for reselling which is a legitimate use. The panelist also stated that the Respondent never claimed that he had the Complainant in mind during registration upon whom he had all hopes of reselling. The non-generic mark is used by multiple parties thus destroying its non-generic nature. 

The Complainant did own the domain name earlier however it couldn’t be the basis of a legal procedure. However, the Complainant approached WIPO only after a disagreement on the price of the domain name. This was a case of using dispute redressal forums as Plan B. The panelist (dissenting) awarded a RDNH to the Complainant. 

You can read the case in full detail here


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