Just when you think you got the hang of anything, things tend to diverge from your understanding. Usually, a Complaint about a relapsed domain is denied, even in the presence of a prior trademark by the Complainant. Or, this is what I thought!
Forum was at the center of a major contention between parties vying for the domain ActionShip.com. The Complainant was Teapplix, Inc. and provides non-downloadable software service at its principal domain name of Teapplix.com. The Complainant had acquired the disputed domain name in August 2017. This was followed by the USPTO Trademark registration over ACTIONSHIP mark in December 2018. The domain name redirected to Teapplix.com.
The domain name however expired. The domain name was then registered by the Respondent, who is a domain name investor. The Respondent put the disputed domain name for sale. The Respondent argued that domain name investment was a legitimate business. The Respondent also claimed the domain name in question contained terms that were generic in nature.
The panel took an unusual standing on the case though. The panel presented that the generic nature of domain as claimed by the Respondent fails to be valid as the Complainant is the sole user of the mark. If the Respondent had looked for possible users of the terms in use, the Complainant would have shown up.
In the light of this fact the Complaint was granted and the domain name transferred.
You can read the case in detail here.
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