Vanity Shop of Grand Forks Montana won a recent UDRP decision for the domain www.vanity.com. The case is unique for a number of reasons:
- Respondent has its own trademark registration for VANITY.COM (Reg. No. 3,720,766) with a date of first use going back to 1999;
- Respondent has owned the domain for approximately seventeen (17) years;
- Respondent has a website/business it appears to run at the domain;
- The term “vanity” is an often used descriptive term which indicates beauty and fashion; and
- The Respondent filed a declaratory judgment action for non-infringement against the Complainant prior to the UDRP Complaint in N.D. Cal. Fed. Ct.
Simply based on the above facts (without any further analysis) it is astonishing that the panel actually rendered a decision in this case, let alone a decision in favor of the Complainant.
First, a panel will usually stay (or dismiss without prejudice) a UDRP proceeding when there is a concurrent lawsuit pending and ownership of the domain is the prime subject of the suit. The reason is that a UDRP decision is not binding on a Court so the decision may be meaningless if the Court renders a verdict regarding ownership of the domain. Further, both parties in have trademark registrations which arguably cover the domain name. Thus, the panel should have rendered some decision on which registration is the “superior” one or why one registration is deficient. This type of analysis seems well outside the scope of a UDRP decision and cuts to the strength of the party’s basic trademark rights.
With respect to Respondent’s rights in the Vanity.com domain, the panel summed up the basis for finding that Respondent had no rights as an evidentiary issue – i.e., because Respondent failed to provide any affirmative proof that it had rights (other than the WHOIS search report which lists Vanity.com Inc. as the domain owner) the panel would not assume that it did. It also stated that the Respondent’s website at Vanity.com is not enough to show it is making a legitimate commercial use of the domain.
There is no analysis in the decision to support this reasoning, and it seems entirely contrary to the prior sentence in the decision where the panel noted that: “[c]omplainant states that Respondent resolves the <vanity.com> domain name to a commercial website offering information, blogs, chat groups, and social media links on beauty, fashion, health, and self topics.” If this is all true, and it is done in a way that does not reference the Complainant, then why are the activities described not enough to show that the Respondent is conducting some type of legitimate commercial activity? Doesn’t the existence of the Respondent’s trademark registration give it some basis to assert that it has rights? At the very least the panel should have explained why, in its opinion, the registration is not useful in this case and how a specimen of use that sufficed (for the purposes of the USPTO) to grant Respondent trademark rights in the Vanity.com name/mark was not enough to give it rights in the UDRP context.
On the issue of bad faith, the panel noted that the Complainant offered to pay approximately $10G for the website and Respondent countered with $1 million. Both offers are well over the registration/out-of-pocket costs of the Respondent for the domain – however the panel seems to be reasoning that an excessive counter-offer is a reason for finding bad faith. Without an explanation for its reasoning it is hard to figure out what the panel’s basis for bad faith here is other than the counter-offer by Respondent. Although there are plenty of cases that say an offer to sell a domain in excess of out-of-pocket expenses is evidence of bad faith where that offer to sell shows Respondent registered the domain to sell it back to the Complainant at a profit, here there does not appear to be that same type of evidence because of Respondent’s trademark registration and its long term holding of the domain name.
Lastly, there is no discussion regarding the fact that “vanity” is a common term. It is defined as “[a] dressing table used to apply makeup, preen, and coif hair” and “excessive pride or admiration.” There should have been some mention of the relative strength of the Complainant’s mark and an analysis/explanation of how the public uniquely identifies it with the the term “vanity”. Without this it is tough to understand how the panel rendered the decision it did.