Arbitrator Rules in 1st .XXX UDRP Decision
GENEVA — An arbitrator last week ruled in the first .XXX ruling in a uniform domain name dispute resolution (UDRP) case, siding with San Antonio, Texas-based HEB Grocery Co. over an Atlanta resident who registered HEB.xxx.
The Atlanta resident, Eric Gonzales, contended that he had rights to the .XXX domain name and that HEB Grocery Co. should have exhibited "a proactive approach" by blocking its purchase.
Gonzales said that he was doing “extensive research for a TV news report on businesses that have not registered .XXX domains with possible variations close to their names” before he purchased the name through GoDaddy.
After the purchase, Gonzalez said he later was contacted by HEB counsel "demanding" he relinquish control over the disputed domain. But Gonzales said that HEB never "asked."
“Everything would have been avoided if they would have 'asked,'” Gonzales told arbitrators in a response. If HEB would have asked, he “would have gladly 'given'” them the domain, he said.
But an arbitrator wasn't swayed by Gonzales' argument, particularly since he isn't part of the sponsored community as an existing adult entertainment entity and that he made no mention of plans to use the website with his present businesses or any future businesses.
As a result, the arbitrator found "that respondent’s registration and failure to make an active use of the disputed domain name are evidence of bad faith registration and use."
HEB's complaint was filed in December and Gonzales was served in mid January, with Gonzales responding shortly thereafter. The case was decided Feb. 7.
In its decision, the panelist, a member of the National Arbitration Forum, relied on ICANN Policy for transferring and canceling domain names.
Under its policy, complainants must prove three elements to obtain an order that a domain name should be cancelled or transferred:
- The domain name is identical or confusingly similar to a trademark or service mark;
- Respondent has no rights or legitimate interests in respect of the domain name; and,
- The domain name has been registered and is being used in bad faith.