When the domain name containing a man and his wife’s initials expired

Naming something isn’t just an identification dataset, but has far more reaching impacts and consequences. A name identifies the aspiration and the story that the name appointer has in mind while naming so. Whether it be naming a person, company or your new domain name; it is always much more than just naming.

Many times it has deep sentimental value associated with it. As we will see in our current story where John McGinnis Halliday Gibson of the United Kingdom lost a domain name. Mr. Gibson had registered the domain name MoJac.com, which was an amalgamation of the names of him and his wife. However, the domain name was expired and registered  by a United States based domain name investor.

Hence in order to retrieve the deeply sentimental domain name, Mr. Gibson filed a UDRP (Uniform Dispute Resolution Procedure) Case.

Complainant’s Narrative

The complainant’s side contested that the domain name was initially registered by them in November 1998. The domain name was registered in relation to a firm named MoJac Limited. At the time of registration of the domain name, the complainant was the firm’s director.

The aforementioned company was terminated in 2013. The complainant clearly presents the absence of any trademarks related to the domain name. However, the party presented that they have a long history of association with terms in the disputed domain name. They added it with a show of possession of the domain name MoJac.co.uk.

The party humbly stated that they had appointed another firm to keep the domain name from expiring. How due to an error by that company, the domain name could not be renewed. 

Owing to this, the domain name was further registered by the Respondent. The Complainant claims that the sole purpose of domain name acquisition by the Respondent is monetary gain.

On the other hand, the Complainant has deep sentimental value attached to the name. The Complainant has a demonstrated use history of the term, a deep emotional value and several other related domain names. Even the expiry wasn’t due to a fault of the Complainant, hence they requested the concerned domain name be transferred.

Respondent’s narrative

The Respondent came heavily on the Complainant’s presentation. The Respondent claimed that the Complainant itself states that it has no registered trademarks over associated terms nor does it currently use the name in any commercial activities.

The Respondent claimed that the opposite party did present that the domain name was registered by Mr.Jacob, as the Director of erstwhile MoJac Limited. However, it wasn’t established whether MoJac Limited. also, ever owned the related trademarks.

The Complainant’s claims that it has registered several other related domain names, doesn’t accord it with trademark rights. Mere registration of domain names doesn’t even confer common law rights, let alone be the trademark rights.

It wasn’t established by the Complainant that the firm MoJac Limited has acquired the required notoriety to claim common law rights. In absence of such notoriety, Respondent’s registration of the domain name couldn’t be termed as in bad faith.

Hence, not only did the Respondent sought for a Denial of the Complaint, but even requested for a RDNH ( Reverse Domain Name Hijacking).

Panel’s decision

The panel looked at the case through three key parameters required for a domain name complainant to succeed. The first of them is Identical or Confusingly Similar. The panel presented that in order to find that the domain name registered is similar to the complainant’s mark or not, it is first necessary that the Complainant first does possess a related mark.

The Complainant fails to present so. The complainant does not have any registered marks nor does it currently carry any commercial activity related to the domain name. The Complainant claims a sentimental association with the name, owing to its relation to him and his wife.

The panel stated that there is no clear rule as to the chain of actions when a dispute related to domain names based on personal names is brought. However, even if rights over the virtue of personal names are sought, there must be an existing company to seek so. In the present case that is missing. Hence, the panel stated that the Complainant lacks any rights for the Complaint to go through.

Second criteria is Rights or Legitimate Interests. This is to check whether the Respondent has any real interest related to the domain name. However, the Complainant lacked any trademark to claim so.

Third criteria is Registered and Used in Bad Faith. This was again dismissed because of the same reason of unsubstantiated rights.

The Complaint was denied.

However, the panel also noted that the Complainant was represented  by a legal counsel. A party in aid of a legal counsel must be looked through a higher pedestal. In such a situation the pane found that the present case was an abuse of the administrative procedure. 

And hence RDNH was awarded to the Complainant.


Mr. Gibson’s precious domain name was taken. Not only was it taken away but rather a claim of abuse of administrative process was substantiated as well. However, it wasn’t unwarranted also.

Domain Dispute Cases shouldn’t be filed in the flow of emotions. Such responsibility increases when there is the aid of a legal counsel. If a sentiment is all that there is behind a dispute resolution case, it is best that such a case be dropped. 

Also, mere personal association and historic use case doesn’t associate the name with you or your company. There must be active association and your brand name should be identifiable by masses. If such is not the situation, the registration of trademarks can come to an aid for you.

However, an absence of both of these can be detrimental to your brand and IP associated with it. As shown in our present Domain Dispute Resolution story.


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