A few weeks ago we told you a UDRP had been filed on the domain name Norcross.com.
Norcross is a city in Georgia
Today Marchex the domain holder represented by John Berryhill won a three member panel UDRP decision on the domain name.
At the time we didn’t know who filed the UDRP but it was the Norcross Corporation who had a Trademark on the term Norcross since 1969
The decision contains a sentence all domainers should love:
““A domain name registrant is always permitted to sell a domain name to which it has rights for a profit; that constitutes bad faith only when the domain name was acquired primarily for the bad faith purpose of selling it to the trademark owner. “
Here are the relevant findings by the Panel:
“The Complaint further alleges that, as of March 28, 2012, the domain name norcross.com was not being used for legitimate business purposes. Complainants indicate that, when Respondent was contacted regarding the transfer of the domain name, Respondent replied that it “does not entertain offers for less than $30,000.” According to the Complaint, the $30,000 price tag far exceeds any reasonable out-of-pocket costs incurred by Respondent in regards the domain name.”
“Respondent notes that the disputed domain name was originally registered by Ultimate Search in 2000, and acquired by Respondent in late 2004. ”
“Respondent further indicates that the domain name in issue corresponds to a prominent beltway municipality of the Atlanta area and that the links on the page correspond to hotels, airports, new homes, and car rentals in Atlanta, as well as to hotels in Savannah and Athens, Georgia. ”
“The Complainant here makes no allegation that the Respondent’s use of the domain name for these several years has in any way targeted, harmed, or disrupted the Complainant’s business. Moreover, the Complainant shows clearly that the domain name is used for such advertising subjects as travel, lodging, and in particular relation to Georgia, where Norcross is located. This is classic descriptive use of a domain name under the Policy.”
“With respect to the issue of bad faith registration and use, Respondent contends that the Policy does not proscribe the general trade in domain names on the secondary market. What the Policy does proscribe, Respondent asserts, is the registration of a domain name primarily for the purpose of extorting the owner of a mark, i.e., with an intention arising from knowledge of its value as nothing other than a trade or service mark associated with one party. The domain name in issue in this proceeding, Respondent contends, is a non-exclusive geographic term. Respondent also notes that it owns many domain names and receives many purchase inquiries and that $30,000 is certainly an appropriate secondary market value for a generic geographical place name.”
“The Panel concludes that Complainants have not sustained their burden of proving that Respondent has no rights or legitimate interests in the disputed domain name. Rather, the evidence establishes that Respondent’s use of the domain name constitutes a fair use under the Policy.”
“As noted by Respondent, Norcross is a municipality in the Atlanta, Georgia metropolitan area. The links on the norcross.com home page refer to hotels, airports, new homes, and car rentals in Atlanta, Savannah and Athens, Georgia, as well as to other travel-related services. ”
“The links and material on norcross.com make no reference to viscosity equipment or other goods or services associated with the NORCROSS mark. ”
Thus, the Panel finds that Respondent uses the term “norcross” in its domain name in a descriptive manner, i.e., to provide useful travel-related information to those traveling to Norcross, Georgia or the surrounding area . ”
“It appears that the domain name was not registered or used in bad faith.”
” Rather, Respondent appears to have registered this domain name for the purposes of advertising links related to the descriptive value of the Norcross geographic locale, and appears to have used it for that purpose. The fact that Respondent was only willing to sell the domain name to Complainants for a sum far in excess of its out-of-pocket expenses directly related to the domain name does not establish the requisite bad faith since the Respondent had a legitimate interest in the domain name. ”
“A domain name registrant is always permitted to sell a domain name to which it has rights for a profit; that constitutes bad faith only when the domain name was acquired primarily for the bad faith purpose of selling it to the trademark owner. “
Article source: http://www.thedomains.com/2012/05/11/marchex-wins-udrp-on-norcross-com/. Creative Commons (CC)
