In a recent domain name dispute decision (ZA2009-0028), the adjudicator has ruled that the domain name registration of by the Registrant was abusive dispite the fact that the Registrant had been using the GARDENMASTER trade mark for longer than the Complainant.

The Complainant had registered and started using the trade mark GARDENMASTER in May 1999 in connection with gardening tools. The Registrant, though, could show rights in the GARDENMASTER name in relation to gardening services dating back as far back as 1969. In February 2007, it registered the domain name

In April 2008, the Complainant contacted the Registrant and demanded that the domain name be transferred to it. The Registrant replied that it would do so only in exchange for the payment of a substantial amount of money. At that time, the Registrant had not started using the domain name and indeed the domain name was still not in use by the Registrant by the time the domain name complaint was filed.

After the Complainant filed its complaint, the Registrant sent a response to the attorneys acting for the Complainant. The Registrant did not however make a formal response that was submitted to the domain name dispute resolution body. The adjudicator nevertheless found that the content of the letter should be taken into account by him despite the fact that the Registrant was, technically, in default. In proceedings such as these, form should not be put above substance.

As the Registrant’s letter to the Complainant’s attorneys gave rise to several questions, the adjudicator requested further particulars from the Registrant. No response was forthcoming.

The adjudicator confirmed that the Complainant had shown that it had rights in the GARDENMASTER name. It then fell to the adjudicator to determine whether the registration of the domain name was abusive in terms of the Domain Name Regulations. In essence, an abusive registration is one which either was registered in a manner which, at the time when the registration took place, took unfair advantage of the Complainant’s rights or has been used in a manner that takes unfair advantage of the Complainant’s rights.

Factors which may indicate that the domain name is an abusive registration include circumstances which show that the registration was primarily to block the registration of a name or mark in which the Complainant has rights or to prevent the Complainant from exercising its rights.

In its letter to the attorneys for the Complainant, the Registrant referred to a conflict between its name and that of the Complainant. The Registrant had prior rights to the GARDENMASTER trade mark but had acquiesced in the Complainant’s continued use of that mark. The Complainant would not have been able to stop the Registrant from using the GARDENMASTER name due to the Registrant’s prior rights.

The Registrant alleged that it had registered the domain name to “protect its rights”. The adjudicator held that the purpose of domain registration is not to protect rights but rather to enable e-commerce. In any event, the Registrant clearly did have prior rights and the registration of the domain name would not have taken this any further. In addition, it appeared that it was only in the light of the alleged conflict that the Registrant had “sought to protect” the domain name.

The adjudicator found that in the absence of the requested further particulars from the Registrant, the automatic inference must be that the registration of the domain name was to prevent the Complainant from doing so. This conclusion is supported by the fact that no such registration had been sought at any time before.

The adjudicator found that:

“Furthermore, the domain is still in the hands of (at best) an agent. Moreover, whilst the absence of use, per se, offers no indication of abuse, in these circumstances (and absent an explanation from an enterprise already in existence for decades) the fact that, a number of years later, still no use has been made of the domain name lends credence to the perceived probabilities.”.

“These probabilities are – and the Adjudicator’s view, therefore, and on balance, is - that the registration was abusive. Given the circumstances, the refusal to transfer the registration except for a substantial amount of money, one in excess of the reasonable out-of pocket expenses incurred in the actual registration, perpetuates the abuse.“

It seems then that it is possible for a domain name registrant to be forced to relinquish a domain name despite the fact that it has rights in the trade mark which predate those of the Complainant. However, this conclusion was only reached in the specific circumstances of this case and, particularly, in the absence of a proper response from the Registrant in the proceedings.

Megan Reimers

Spoor & Fisher

Date published: 2009/09/02
Author: Megan Reimers

Tags: domain name gardenmaster dispute