I am not a lawyer and this is not legal advice but take a look at the link below. Per point 6 of this article they would need to prove 3 things to win your domain in arbitration: 6. Discussion and Findings According to paragraph 4(a) of the Policy, the Complainant must prove that: A. The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and B. the Respondent has no rights or legitimate interests in respect of the domain name; and C. the domain name has been registered and is being used in bad faith. They may prove point A, but likely not points B & C. If you have a legitimate site, I don't think they can prove B or C. http://www.wipo.int/amc/en/domains/decisions/html/2004/d2004-0481.html
B) The fact that the OP was running a site with similar content and in the same industry under the complainant's trademark is enough to "prove" this in a WIPO arbitration. C) Registering a domain and using it in the same industry as a business that had registered their trademark in 1993 would "prove" bad faith in a domain dispute.
Have to agree here, C is where you could fall down but its imaterial now as you've agreed a settlement. Well Done.
Yes, there is no issue here anymore as a settlement was reached by both parties (and for cheaper than a dispute). Good work bizbiotic.
Bluegrass - your statements are not consistant with the WIPO board finding in this case. Indeed in this case they ruled the person can keep the domains porschebuy.com and porsche-buy.com because he had a bonafide business offering selling porsche cars (point B) And because the domain was register for good reason like a business, it was not registered in bad faith. The one WIPO finding that suprise me is below: • Respondent must use the site to sell only the trademarked goods; otherwise it could be using the trademark to bait Internet users and then switch them to other goods: Nikon, Inc. v. Technilab, WIPO Case No. D2000-1774 (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use; Kanao v. J.W. Roberts Co., CPR Case No. 0109 (bait and switch is not legitimate); and
The finding that you found that surprises you is completely in line with the previous arbitration that you listed and with my statement. In the first case, the only reason the person was able to keep the domains is because the only thing he sold from the site were Porches. Had he been selling Ferraris then he would have lost the domains to Porsche, which is what the second decision is talking about. This makes sense, because if I sell Porsches, the only way to tell people that I sell Porsches is to use the name Porsche. My statement about point B is still consistent with the WIPO standards. The Porsche example is the exception, not the rule. The OP was not selling Lover's Lane lingerie. Even if the OP was not selling any lingerie at all, the content was still about that industry. So, that would be using another company's mark to promote competing products. This is clearly a violation of WIPO standards. The OP was correct in saying that if he had a site that was not related to that industry at all then he would have probably been safe (since lover's lane is a common phrase). However, changing the site content after being alerted by the mark holder essentially negates any protection for this. In a UDRP, those are three main factors that are looked at. However, the panels that review these cases look at other information as well. One of the things that they look at is whether the respondent (person with potentially infringing site) has lost a UDRP before. When you lose too many UDRP decisions, the presumption will be that you are an infringer. Then the burden falls from the claimant to the respondent. Another thing they look at is the domain portfolio owned by the respondent. If a respondent owns several domains that look to be infringing, a UDRP panel may (and has in the past) determined that this is sufficient evidence to show bad faith, even if the domain/site in question would otherwise pass the three prong test. I am not saying that would be a factor in this case, just pointing it out.