Thu 3. Oct 2024, 09:11
In a recent UDRP procedure concerning the domain cronosgroup.com, the complainant, who is the owner of an earlier trade mark, failed to prove that the opponent was targeting her with the domain. It was even sufficient for a reverse domain name hijacking (RDNH), as the complainant did not provide any evidence of the opponent's bad faith.
The Complainant is a Canadian-based global cannabinoid company that is publicly traded on the Nasdaq Global Market and the Toronto Stock Exchange. It has been using the name ‘Cronos Group’ since October 2016 and has corresponding trademark registrations for ‘Cronos’ and ‘Cronos Group’ in several countries for various cannabis-related services, with the earliest filing date being in 2017. The opponent is a domain investor who purchased the domain cronosgroup.com in an auction at SnapNames in March 2023 for US$ 2,849. After the purchase of the domain failed because the price was too high, the complainant initiated UDRP proceedings before the Canadian CIIDRC. Among other things, it argued that the opponent had registered the domain cronosgroup.com years after it had started using the term itself and had registered the Cronos Group trade marks. In the past, the opponent had repeatedly registered trade mark infringing domains and had been an opponent in UDRP proceedings. He had acquired the domain in order to sell it for an inflated amount; the domain had been offered for sale on the GoDaddy website at a price of US$ 48,500 and in the opponent's reply to the complainant's offer letter he had demanded US$ 18,500 for the domain.
The opponent counters that he buys high-quality, memorable domains in order to offer them for sale or lease. He had not targeted the complainant in any way. He is the owner of other similar ‘two-word’ domains such as hydrogroup.com, geminigroup.com and visionarygroup.com. He further pointed out that the ‘WIPO Global Brand Database of Trademarks’ contains a list of 180 trademarks for the term ‘Cronos’ and that several companies market their goods or services under the sign ‘Cronos Group’ but have no trademark registrations. He moved to declare RDNH because the complaint was brought in bad faith as Appellant's Plan B. The three-judge panel consisted of Gerald M. Levine as chairman, domain name attorney Douglas M. Isenberg and British-Australian lawyer and mediator Alan L. Limbury as associate judges.
The three-judge panel dismissed the complaint and found an RDNH (CIIDRC case number: 23351-UDRP). The decision-makers briefly confirmed the existence of the ‘Cronos Group’ trade mark, but left out the question of a right or authorisation of the opponent to use the domain, because answering this question was unnecessary in this case, and instead focused on the question of bad faith: the panellists agreed that in proving bad faith, the complainant was focusing pejoratively on the opponent's activities as a domain investor. However, it is in the nature of domain investments to buy low and sell high, and as long as there are no actions or behaviour that go beyond the pursuit of ‘maximising profits’, this is not evidence of bad faith. The cases cited as evidence in support of her argument are not valid, as there is always something else added to them that supports the existence of bad faith. Furthermore, the complainant had not been able to justify why it had a better right to the domain name than the other companies using the sign ‘Cronos’ in trade. The Panel said that if any conclusion can be drawn at all, it is that the acquisition of such a domain containing a non-exclusive phrase has a potential market for commercial users offering goods or services in areas unrelated to the cannabinoid business. Accordingly, the complainant had not shown that the opponent was using the name in bad faith, which is why it dismissed the complaint.
The Panel also examined an RDNH, the existence of which it confirmed. The existence of RDNH in this case depends on how common the term ‘Cronos Group’ is and to what extent this trade mark is lawfully used by other providers. As long as the complainant did not prove that the opponent knew about it or its trade mark and had registered the domain for unfair purposes, it could not be concluded that the opponent was acting in bad faith. The panellists suspected that the complainant was represented internally by a person who was probably not familiar with the case law of the UDRP. However, this did not excuse the initiation of UDRP proceedings. The complainant had started the proceedings without being able to prove or demonstrate in any way that the opponent knew or should have known about them. This was a typical case of Plan B, an attempt to deprive the opponent of its right to hold and sell its assets on its own terms. The panel thus found in favour of RDNH.
Domain attorney Zak Muscovitch commented on the decision and once again found a case where an older trade mark was not sufficient to obtain a domain. This is because the trade mark was not sufficiently well known and the domain was not abusively registered and used specifically in relation to the complainant.
The UDRP decision on the domain cronosgroup.com can be found at:
https://ciidrc.org/wp-content/uploads/2 ... signed.pdf