Jim Bikoff and Holly Lance successfully defended client Michael Mann, the president of Domain Asset Holdings, LLC (DAH), in a UDRP action involving the domain name Dollarcity.com. The proceeding was instituted by El Salvadoran company Centroamerica Comercial Sociedad Anonima de Capital Variable (CAMCO), which operates a chain of "Dollar City" discount stores in El Salvador and Guatemala, with plans to expand in Central and South America.
DAH, a premium domain name reseller, had acquired the Dollarcity.com domain name in 2007, several years before CAMCO's first trademark registration. While the Panel found that Dollarcity.com was confusingly similar to CAMCO's "Dollar City" trademark, CAMCO failed to prove that DAH lacked rights or legitimate interests with respect to the disputed domain name. To the contrary, the Panel found that DAH's offering of the Dollarcity.com domain name for sale as part of its general business activities provided DAH with a legitimate interest.
In addition, the Panel found that the Dollarcity.com domain name was not registered in bad faith because DAH "was not aware of [CAMCO's] trademark when he acquired the domain name." Additionally, DAH did not use the Dollarcity.com domain name in bad faith because it was not being used to "offer goods or services competitive with those of [CAMCO], to offer pay-per-click advertising, or in any other manner that has targeted [CAMCO's] rights."
Notably, the Panel also made a sua sponte finding of reverse domain name hijacking. Because CAMCO failed to show that the Dollarcity.com domain name was used in a way to target or take unfair advantage of the "Dollar City" trademark, the Panel found that "[CAMCO] had no reasonable prospect of success and that [CAMCO], who is represented by specialist attorneys who appear to have specific expertise in this area, knew or ought to have known that this was the case." As a result, the Panel found that the UDRP was brought in bad faith and was an abuse of the administrative proceeding.
A copy of the full opinion for Centroamerica Comercial, Sociedad Anonima de Capital Variable (CAMCO) v. Mann, Case No. D2016-1709 (WIPO Oct. 3, 2016) appears at http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2016-1709.
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