heb_logoI have to admit that before today I had no idea that “H-E-B” (which stands for “Here Everything is Better”) was the name of a giant multi-billion dollar supermarket chain, with long-standing trademark rights in the HEB mark.  Instead I was drawn to the name and this arbitration case simply because it was the first that I have seen for a domain name with the .xxx TLD.  The facts of the case are pretty simple.  The Complainant has been using the HEB mark for a long, long time, has a trademark registration for HEB in the field of store services which it received in 2004 and uses the heb.com domain name for its main site.

Respondent is a guy who is not named HEB, does not use or go by the nickname HEB, is not interested in using the heb.xxx domain for a forthcoming adult site, and was apparently contacting a number of companies about defensive domain registrations in the .xxx space: “Respondent states that he contacted several businesses that bought .XXX domains after he brought the matter to their attention but that Complainant was not one of them so he bought the disputed domain because of Complainant’s failure to exhibit a proactive approach.”  I have to give the Respondent some credit for being honest – he told them he was going to register the domain, and then did so when HEB did not take the initiative.  Not surprisingly, the “I told’em I was going to do it” defense did not gain a lot of traction here.

The decision noted that the rules of the .xxx registry, the Charter Eligibility Dispute Resolution Policy (CEDRP), could be used as a supplement to the UDRP and act as further grounds for finding that the Respondent did not have legitimate rights to the domain name.  In this connection, the Complainant apparently made an additional submission which argued that under CEDRP ¶ 2(a) “Registration or Use Inconsistent with Community Eligibility,” that the domain name did not comply with the Community Eligibility requirement because Respondent was not running an adult entertainment site.  The only question I had in reading this is if the Respondent had put up a parking site with adult entertainment site links would he have qualified as a community “member” under the Community Eligibility requirement and, therefore, if the issue of rights could have been decided differently in such case?  My guess is no, because usually a parking site is not considered a “legitimate” commercial use, but, could it be in this case?  What is a legitimate adult entertainment site under the Community Eligibility requirement?  The Registry – Registrant agreement which is referred to in the CEDRP does not seem to provide any guidance on this...