Guest Post By Paul Keating On UDRP’s: “Why Panel Certification is Important” The Case Of HardwareResources.Org
This Guest Post was written by Paul Raynor Keating, Esq.[1] one of the preeminent attorney’s practicing in the domain industry. Paul has handled many UDRP’s and had some thoughts about a recent UDRP involving the domain name HardwareResources.org.
We are publishing the post unedited:
“”Although the UDRP has functioned for over a decade, the evidence continues to mount in favor of a certification process so all can be assured that panelists have the proper legal knowledge and address claims seriously. Examples abound of panel errors but I have seen few that competes with the likes of Hardware Resources, Inc. v. Yaseen Rehman, Claim Number: FA1201001423229 (HardwareResources.org), a recent decision by NAF-favored panelist Atkinson (http://www.dnattorney.com/study.shtml).
In Hardware Resources, the panelist was so absorbed with the Complainant’s assertions that he failed to examine even the most basic aspects of the claim. Granted the case was a default. But that provides little excuse given the obviousness of the problems. Given Mr. Atkinson’s litigation experience (he authored an article entitled “How to Respond to Trial Objections in 1995), I am somewhat perplexed.
Complainant asserted 4 registered trademarks for “HR Hardware Resources”. A 10-second trip to the USPTO site satisfied my surprise that the PTO would allow registration of such a descriptive trademark. Complainant’s “trademarks” consisted of 2 text marks and 2 design marks. Each of the marks contained the following disclaimer:
“NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE “HARDWARE RESOURCES” APART FROM THE MARK AS SHOWN.”
The significance of the disclaimer is of course that the Complainant had expressly disclaimed the words “Hardware Resources” if they did not appear with “HR”. Perhaps Mr. Atkinson (or more likely the intern at NAF who may have written the decision?) missed that bit.
Notwithstanding the clear disclaimers, the Mr. Atkinson boldly stated:
“The differences between the mark and the disputed domain name include the deletion of the initial letters “H” and “R” of Complainant’s mark, the removal of the space between the terms, and the addition of the generic top-level domain (“gTLD”) “.org.” The Panel holds that removing letters from a mark does not differentiate a disputed domain name from the mark.”
Had Mr. Atkinson (or his associate) taken 20 seconds of time he could easily have discovered that the elimination the “HR” was in fact material for the simple reason that Complainant held no trademark rights in their absence. Actually, come to think if it, the disclaimer would have been printed in the trademark registration certificate that Complainant surely produced.…





