6 reasons Mike Mann won this cybersquatting case

Panelist John Swinson provided a thoughtful analysis of whether or not this domain was registered and used in bad faith.

Domain investor Mike Mann has successfully defended his domain name ProIBS .com in a UDRP dispute.

Mann acquired the domain name after the Complainant, a Swedish company called Calmino group AB, acquired trademark rights in Sweden for the term ProIBS.

But World Intellectual Property Organization panelist John Swinson wrote (pdf) a thoughtful analysis of whether or not the domain was registered and used bad faith, and decided that Calmino did not prove its case.

Swinson started with a fair defense of domain name investing:

Dealing in domain names in the secondary market is a legitimate trading activity. By its very nature, it is speculative. A domainer usually has the intention of reselling domain names at a price in excess of the purchase price. Some domain names sell, and some sit on the shelf unsold; in either event, trying to make a profit by reselling domain names is not bad faith per se.

He then listed six reasons that Calmino did not show that Mann’s company, DomainMarket.com, registered and used the domain in bad faith.

1. The Respondent asserts that the Respondent registered the disputed domain name “without any knowledge of Complainant’s existence or alleged rights”. This presupposes little or no due diligence on Respondent’s part but is believable.

2. The Respondent appears to claim that the disputed domain name was selected because of its potential association with irritable bowel syndrome, or potentially other “IBS” related terms.

3. The Respondent states that it registered approximately 50 domain names starting with “pro”. Although the Respondent provided no evidence of when these domain names were registered or the list price for these domain names, the fact that the Respondent registers domain names with a “pro” prefix suggests that the Respondent may not have been targeting the Complainant but registered the disputed domain name due the Respondent’s interest in “pro” domain names.

4. Despite owning the disputed domain name for over 10 years, the Respondent did not approach the Complainant to sell the disputed domain name to the Complainant.

5. The Complainant approached the Respondent to inquire about buying the disputed domain name more than 10 years ago, but never informed the Respondent of its trademark rights.

6. The Respondent did not use the disputed domain name to advertise products competitive with the Complainant’s products (and in fact, it was not used to promote any products at all.)

Domain investors and IP holders should carefully review these reasons.