iEstates.com

The following is a guest post by Paul Raynor Keating, Esq. Paul is an attorney specializing in the domain space. He has offices in Barcelona and London.

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 (see the related study by Zak Muscovitch).

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.

From this highpoint, the analysis gets only worse. Legitimate interest is found lacking because “using a confusingly similar disputed domain name to host pay-per-click links and pop-up advertisements, whether competing or not, does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶¶ 4(c)(i) and 4(c)(iii).” Of course no mention is made of the descriptive nature of the asserted trademark or of the domain.

The authority for the panelist’s position? Two NAF decisions, Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) and ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007). The panelist was obviously not familiar with either of the decisions. Hewlett-Packard addressed the domain HPCanada.com. HP is obviously a famous, non-descriptive mark and there could be no legitimate interest in using the domain to display links for computer equipment. Alpitour dealt with the domain BravoClub.com. The asserted mark was used for a hotel chain and obviously not descriptive; respondent used the domain for PPC for (surprise….) hotels. Exactly how HardwareResources.org presents a factual or legal scenario that is even close to Hewlet-Packard or Aplitour is a mystery.

Going from bad to worse, Mr. Atkinson next finds bad faith because Respondent offered to sell the domain to the Complainant for a whopping $40.00. Surely this is a joke. The opinion is apparently based on an empty allegation by complainant. God forbid there be any reference to evidence. I am always amazed how far panelists will go to “justify” an expansion beyond the actual text of the UDRP when doing so in favor of complainants. I rarely see this when the issue might favor the respondent. This $40-issue is yet another example. While it is possible that $40.00 was more than the out-of-pocket costs, the rule in this regard is tied to the concept of targeting and registering domain names for the purpose of holding them ransom to a known trademark holder. This case fails the mark by any stretch and by even mentioning the issue Mr. Atkinson opens both himself and the UDRP process to ridicule.

Yet again showing his preference for complainants, Mr. Atkinson finds bad faith registration based upon PPC use with websites that “have featured pay-per-click links, some relating to Complainant’s competitors and some being simply generic” and some that “displayed information about Complainant“. Mr. Atkinson thus finds that the respondent must have registered the domain “to attract consumers and create confusion for its own profit“. This is lumped together with the $40-issue to support a finding of bad faith.

It is telling that the only reference to “generic” was in the Complainant’s allegations. The panelist certainly does not mention the word or deal at all with the descriptive nature of the phrase at issue. The use of a descriptive domain for descriptive purposes has repeatedly been found both legitimate and in good faith. It has long been held that the foundational issue is whether the respondent “targeted” the complainant. Here, the Complainant had no trademark in “Hardware Resources”. The domain was used for – guess what – PPC links related to items long considered to be hardware-related. That Complainant may have appeared in any of the PPC links is the fault of the Complainant who voluntarily selected a less-than-stellar trademark.

The most important lesson to be learned here, however, is not that Mr. Atkinson should abstain from being involved in the UDRP process. The important lesson is that decisions such as these destroy the carefully structured balance of the UDRP process as a whole. Respondents are repeatedly told that they can legitimately register and use domain names for descriptive purposes. It instills little confidence in the “system” when panelists such as Mr. Atkinson issue ill-thought out opinions such as this one.

While panelists aren’t earning the salaries of bankers in New York, this case shows that 20 seconds of thought would have produced the correct result. Trademark disclaimers are there for a reason; without the disclaimer the USPTO would not have issued the registration. It defies logic to permit a registration with a disclaimer and then support a trademark in only what has been disclaimed. Complainants must be held responsible for selecting descriptive trademarks. After all, they do it for a reason – a descriptive mark gives them a leg-up on the competition. If a consumer is looking for “hardware”, coming across a sign for “hardware resources” leads to the assumption that one will indeed find hardware items there. However, having selected such descriptive marks they should not be permitted to use them as a sword to prevent others from doing so.

And, $40 for a domain name? I am not sure who was being sillier; the panelist in using this as bad faith or the respondent who thought it was a good idea to make the offer.

According to a press release out today WIPO  “has been appointed by ICANN as the exclusive provider of dispute resolution services for trademark based ‘pre-delegation’ Legal Rights Objections under ICANN’s New gTLD Program,”

WIPO has a Q&A page on their site about this.

“”The Internet Corporation for Assigned Names and Numbers (ICANN) has embarked on a program of allowing new generic top-level domains on the internet (like .com), an initiative that has worried trademark holders and international organizations. Now the World Intellectual Property Organization Arbitration and Mediation Center is offering services for trademark holders who wish to challenge proposals for new gTLDs later this year.”

“”WIPO “has been appointed by ICANN as the exclusive provider of dispute resolution services for trademark based ‘pre-delegation’ Legal Rights Objections under ICANN’s New gTLD Program”

Basically WIPO will be handling objections to proposed strings filed by Trademark and other rights holders.

Its not going to be a cheap process to object to a string and it should be a nice revenue source for WIPO.

 …

In a UDRP published today, a lawyer domain holder beat back a challenge from The California Milk Processor Board on the domain name GotMilkAds.com

California Milk Processor Board is the owner of the registered trademark GOT MILK?

Its a interesting opinion especially in light of the fact that UDRP’s panels have awarded domain names to this same complainant based off of this trademark and led one domain blogger to recommend to domain holders not to mess with domains that might infringe on the Got Milk trademark.

Here are the relevant facts and findings by the one person panel:

“”The disputed domain name was registered with the registrar GoDaddy.com, Inc. on August 3, 2009.”

“The disputed domain name resolves to a parked web page provided by GoDaddy.com, which contains advertising links (“ads”) to third-party websites offering various goods or services, none of which appear to be related to the Complainant or its goods and services.”

“The Complainant maintains that the disputed domain name is confusingly similar to the GOT MILK? trademark”

“The estimated number of page views of the Complainant’s website at “www.gotmilk.com” exceeds 1.8 million annually.”

“The Complainant further contends that the fame of the GOT MILK? trademark is such that the Complainant’s advertisements are sold as memorabilia on eBay.”

“The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name.”

“”The Respondent maintains that as the parties are domiciled or incorporated in the U.S., and subject to and bound by applicable U.S. law. For purposes of the first element of the Policy, the Respondent argues from several trademark law decisions issued by the Federal Ninth Circuit Court of Appeals that the disputed domain name cannot be considered confusingly similar to the Complainant’s trademark.”

^“Relying primarily on such decisions, the Respondent asserts that online consumers of products are generally quite sophisticated about such matters, and that it is unlikely that a reasonably prudent consumer encountering a domain name that includes a product name would be confused whether the website they have come to is formally affiliated with the product manufacturer. The Respondent further notes that the website to which the disputed domain name resolves contains no content in any manner affiliated or related to the Complainant’s products or services, or those of the Complainant’s competitors. The Respondent further observes that the UDRP decisions relied upon by the Complainant are largely default cases or other cases in which no real substantive response was submitted.”"

“”The Respondent asserts that the Complainant has failed to meet its burden of proof respecting the second and third elements of the Policy as well. “”

“”The Respondent avers that he registered the disputed domain name with the intent to develop a website for the purpose of selling GOT MILK? advertisements, but has yet to make such use of the disputed domain name because of his busy law practice and the development of another website at “www.brotherlylovesports.com”. “”

“”The Respondent notes that, as the Complaint itself points out, there have been significant third-party sales of GOT MILK? advertisements in the U.S. and elsewhere on a daily basis at eBay.com. The Respondent observes that the Complainant has never objected to such sales, and further notes that the Complainant does not sell GOT MILK? advertisements on its own website.”"

“”The Respondent further maintains that he disclosed to the Complainant’s counsel during their discussions preceding the commencement of this administrative proceeding that it was the Respondent’s intent to use the disputed domain name with a website offering GOT MILK? advertisements. According to the Respondent, he has sold various print advertisements and posters, including the Complainant’s advertisements, over eBay for a number of years, and he has offered evidence of his activities on eBay. In view of the foregoing, the Respondent maintains that his intention to use the disputed domain name with a website offering GOT MILK? advertisements demonstrates rights or legitimate interests in the disputed domain name.”

“”The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name <gotmilkads.com> is confusingly similar to the Complainant’s GOT MILK? trademark, in which the Complainant clearly has established rights.”

“”The Respondent maintains that he has established rights or legitimate interests in the disputed domain name based on the intent to use the disputed domain name in connection with a website offering for sale GOT MILK? advertisements.”"

“”The Respondent has submitted a sworn statement attesting that this was his intention when registering the disputed domain name and he avows that it remains his intention. The Respondent maintains that this constitutes a “nominative fair use” of the disputed domain name under relevant U.S. law, which qualifies as a bona fide use of the disputed domain name in connection with an offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.”"

“”In this instance, the disputed domain name has been used since its registration in August 2009 with a parking page featuring pay-per-click advertising links. The disputed domain name is confusingly similar to the Complainant’s well-known GOT MILK? trademark, such that Internet users looking for websites associated with the Complainant are likely to arrive at the Respondent’s pay-per-click website by mistake. “”

“”Regardless of who may have benefited from this arrangement, the Respondent, as the disputed domain name registrant, ultimately is responsible for the content of the website.”"

“”However, after careful consideration of the totality of facts and circumstances reflected in the record, the Panel is not convinced that the Respondent possessed at the time of registration of the disputed domain name the bad faith intent to exploit or profit from the Complainant’s trademark rights.”

“While, as noted earlier, the Respondent has not used or made a showing of demonstrable preparation to use the disputed domain name with a website offering GOT MILK? advertisements for sale, his claim to have registered the disputed domain name with the intention of doing so is plausible. ”

“There is nothing in the record reflecting that the Respondent is a professional domainer, nor evidence that the Respondent has in the past engaged in a pattern of registering domain names comprised of the well-known trademarks of third parties. At the same time, based on the parties’ submissions there is an established online market that exists and has existed for some time for the sale (resale) of GOT MILK? advertisements. And the Respondent has presented documentation (in the form of a sworn affidavit) supporting his claim already to have sold GOT MILK? advertisements on eBay.”"

“”To the Panel’s appreciation, the issue in this administrative proceeding is not whether the Respondent (or others) has a right per se to sell (or resell) the Complainant’s GOT MILK advertisements. “”

“”Rather, the issue is whether the Respondent consistent with the Policy may register and use a domain name incorporating the Complainant’s trademark for that purpose. In that regard, the consensus view of UDRP panelists is that a reseller or distributor making a bona fide offering of trademarked goods or services using a domain name which contains the trademark has a legitimate interest in the disputed domain name.”"

“”Under the Oki Data decision, a reseller may establish rights or legitimate interests in a domain name incorporating the manufacturer’s trademark if the following conditions are met:

- the respondent must actually be offering the goods or services at issue;

- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);

- the site itself must accurately disclose the respondent’s relationship with the trademark owner; and

- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.

“”Several panel decisions have concluded that the application of the Oki Data criteria may be appropriate under the Policy where the respondent is not purely a reseller or distributor of a trademark owner’s goods or services, so long as the respondent operates a business genuinely revolving around the trademark owner’s goods or services. See National Association for Stock Car Auto Racing, supra; Starwood Hotels & Resorts Worldwide Inc., The Sheraton LLC, Sheraton International Inc., Societe des Hotels Meridien, Westin Hotel Management L.P. v. Media Insight a/k/a Media Insights, WIPO Case No. D2010-0211 (hereinafter “Starwood Hotels & Resorts”). Additionally, panels subscribing to the principles established in Oki Data have determined it may be applicable to both authorized and unauthorized resellers. See WIPO Overview 2.0, at paragraph 2.3.”"

“”As this Panel has previously noted, such an approach is not only consistent with the Policy, but also is consistent with the nominative fair use principles that apply under the trademark law of the U.S., which is relevant here given that both parties are from the U.S. Starwood Hotels & Resorts, supra. Further, the Oki Data approach considers and applies nominative fair use principles not in the broader context of traditional trademark disputes, but with reference to the limited scope of the Policy, and specifically with respect to the a respondent’s use of the complainant’s trademark in a disputed domain name.”"

“However, it is difficult to make an affirmative finding under these principles in the Respondent’s favor, because as noted the Respondent is not presently making any active “use” of the disputed domain name to offer the goods or services at issue – though he certainly claims an intention to do so, which is supported to some extent by the evidence in this case. This is a factor which has given the Panel serious pause for thought in so far as the assessment of the Respondent’s likely intentions on registration of the disputed domain name are concerned. Does the fact that the Respondent’s claimed intentions with respect to the disputed domain name have not yet materialized mean that the Panel should therefore conclude that the disputed domain name was registered and is being used in bad faith because it is passively held? In the circumstances of this present case, the Panel is not prepared to go that far on this record.”"

“”The Panel is not persuaded that the facts and circumstances of this case are sufficiently analogous to those in Telstra Corporation Limited v. Nuclear Marshmallows, supra, to sustain a finding of bad faith registration and use based on the Respondent’s passive holding of the disputed domain name. As the panel in Telstra made clear, a finding of bad faith based on passive holding necessarily depends on the particular facts of a specific case. The Telstra panel relied on several bad faith indicators that are not clearly present in the instant record, (which, unlike the Telestra case includes a submission of a sworn statement) and found bad faith based on a conclusion that “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate”. The Panel is unable to reach such a categorical conclusion in this case for the reasons discussed above.”"

“”The Respondent in his sworn statement denies any benefit from the advertising links on the parking page to which the disputed domain name resolves. The record indicates that the parking page was provided by the registrar GoDaddy.com, Inc., a factor that supports the Respondent’s averment not to be directly responsible for the links appearing on the site. While the Panel does not retreat from the basic precept that the domain name registrant ultimately is responsible for the content on his or her website, the Panel still is not convinced from the overall facts and circumstances in the record before it at present that the Respondent (who does not appear to have a history of cybersquatting) registered the disputed domain name intending to trade on the Complainant’s trademark in order to generate pay-per-click revenue.”"”

“”Finally, whatever the hotly disputed circumstances surrounding the Respondent’s offer to sell the disputed domain name to the Complainant may have been, the Panel also is not persuaded from the totality of circumstances in the record in these Policy proceedings that the Respondent registered the disputed domain name primarily for the purpose of selling the disputed domain name to the Complainant at an exorbitant cost.”"

“”In conclusion, the Panel wishes to note that while it is to some extent, giving the Respondent the benefit of the doubt with respect to its claimed intended use of the disputed domain name, if in the future such use would not materialize, or the use would change in such a way to suggest a clear abusive intent, this may well constitute a relevant consideration in any future dispute brought over the disputed domain name”"

“”In any event, for the reasons outlined above, the Panel finds that the Complainant has, on balance, failed in these Policy proceedings to satisfy the requirements of paragraph 4(a)(iii) of the Policy.”"

“”For all the foregoing reasons, the Complaint is denied.”"

According to a story in The Blog,  boingboing, Francis Gurry, the Director General of the UN’s World Intellectual Property Organization (WIPO) chatted last week about who much better off the Internet would have been “if it had been locked away in patents, and if every user of the Web had needed to pay a license fee to use it ”

Of course WIPO is one of the groups which administer domain name disputes and to see the head of it take such a pro-IP stance as to wish the entire Internet was protected by IP interests and that every user would be force to pay IP interests fees to use the net, it certainly gives you an indication of what domain holders are up against in a WIPO action

You can watch the video for yourself, with Gurry’s talk starts at 0:49:50.

So if you think that IP interests don’t try to overreach with an every expanding wish list of rights, its a video you should check out.

In a three member WIPO decision the 42nd oldest domain name,  Octopus.com was lost in a UDRP.

The domain name had a registration date of 1986 but was acquired by the domain holder in 2006.

The Complainant was brought by Octopustravel Group Limited of London.

Here is the relevant parts of the decision

“The Complainant is doing business as a retailer of hotel accommodation and related services throughout the world and has been trading under the name OctopusTravel since 1999.”

“Accommodation booked through the Complainant and its retailers covered more than 700,000 nights in 2010, and the Complainant’s global revenue amounted to $217.9 million in 2010 with marketing expenses in the amount of $4.8 million.”

“The Complainant provides its services on the Internet at “www.octopustravel.com”.

“The Complainant is the registered owner of numerous trademark registrations for “OCTOPUSTRAVEL”, inter alia International Registration No. 823144 OCTOPUSTRAVEL registered on November 24, 2003 (hereinafter referred to as the “OCTOPUSTRAVEL Mark”). The Complainant’s trademark covers services in international classes 39, 41, 42 and 43.”

The disputed domain name was first registered in 1986 and was acquired by the Respondent on June 9, 2006.

The disputed domain name has been used in connection with a website providing information on octopi and travel related advertising.”

“The first point to be dealt with is the identity of the Respondent.”
“The Complainant named a total number of ten Respondents all allegedly being related somehow to the disputed domain name, including Alexander Rosenblatt and Yana Belkova. ”

“According to the information in the concerned registrar’s WhoIs database, the disputed domain name is registered in the name of Mr. Alexander Rosenblatt only. As per the Respondent’s plausible contentions, Alexander Rosenblatt is an alias of Yana Belkova. Therefore, the Panel will treat Yana Belkova aka Alexander Rosenblatt as sole Respondent in this proceeding. The Complainant’s contentions regarding the relations of the other alleged Respondents to the disputed domain name are irrelevant.”

“The disputed domain name consists of the term “octopus”, which is included in the Complainant’s OCTOPUSTRAVEL Mark”

“The fact that the Complainant’s trademark contains an additional element, namely the word “travel”, does not hinder a finding of confusing similarity.”

“”Based on the evidence before the Panel, the Panel cannot find any rights or legitimate interests of the Respondent. ”

“Although the disputed domain name consists only of a generic term, the Respondent has not provided any persuasive evidence under paragraph 4(c) of the Policy for the following reasons:”

“The website available at the disputed domain name contains advertising links to the Complainant’s competitors (i.e., bookings.com). ”

“It is well established that there is no bona fide offering of goods and services where the use of the disputed domain name for such offering constitutes a trademark infringement.”

“Furthermore, the Respondent has not shown that she is commonly known by the disputed domain name or is making a legitimate noncommercial or fair use of the domain name.”

“In addition, the Respondent, having once worked for the Complainant, was obviously aware of the Complainant at the time when she purchased the disputed domain name and therefore registered the disputed domain name in bad faith. ”

“The mere registration of a generic word as a domain name will only be sufficient in and of itself to create a legitimate interest if the domain name is registered in good faith ”

“Panels have recognized that mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase (which may be generic with respect to certain goods or services), may not of itself confer rights or legitimate interests in the domain name.”

“Normally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning (and not, for example, to trade off third-party rights in such word or phrase).”

“Finally, the Panel is not satisfied that the website at the disputed domain name can seriously be considered as providing bona fide information on octopi; rather, it strikes the Panel as (at least) pretextual The generic use of “octopus” could well be plausible if for example combined with credible other supporting evidence, but even a superficial Google search reveals that the text about the cephalopod species that appears on the Respondent’s website appears wholly copied from other sites.”

“Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.”

“The Panel finds that the Respondent registered the disputed domain name in bad faith.”

“As noted above, the Respondent registered the disputed domain name in 2006, by virtue of an acquisition from a third party. It is well established that a transfer of a domain name to a third party amounts to a new registration under the Policy”

“The Respondent, a former employee of the Complainant, admitted that she was aware of the Complainant at the time when she purchased the disputed domain name.”

“In the absence of the Respondent having established rights or legitimate interests in the disputed domain name, her claims of having no intention to capitalize on likely confusion with the Complainant’s trademark lacks persuasiveness in the circumstances.”

“As to bad faith use, by using the disputed domain name in connection with a website offering advertising from the Complainant’s direct competitors, which constitutes an infringement of the Complainant’s right in its OCTOPUSTRAVEL Mark, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant’s website to its own for commercial gain. Such use and exploitation of trademarks to obtain commercial profit from the diversion of Internet users has in many decisions been found to be use in bad faith under paragraph 4(b)(iv) of the Policy.”

“Accordingly, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been met.”

“The Panel points out that, although the disputed domain name has been first registered back in 1986, the Complainant’s trademark registrations predate the Respondent’s acquisition of the disputed domain name by many years. Furthermore, although the disputed domain name may have a substantial value based on its generic meaning, this for itself is no basis to deny the Complaint. Even if a domain name is generic, there is always the possibility of a trademark infringement and the registrant of such domain name, especially one with such clear prior knowledge of a relevant rights holder’s trademark rights, has to be aware of this.”

So a generic domain gets taken in a UDRP from a trademark on a longer term that incorporates Octopus.

You would have to assume this domain was not a cheap acquisition in 2006 and the loss of the domain is a harsh penalty.

While WIPO recently reported somewhat misleading that “Cybersquatting hit(s) record level“, the National Arbitration Forum reported their numbers today. They also report a higher amount of filed cases for 2010, up to 2,177 from 1,759 in 2009. Only 1,819 of the cases were actually heard by panellists, the remainder were settled beforehand.

When looking at Cybersquatting you need to put the numbers in relation to numbers of registered domain names and only look at those cases where a transfer or cancellation was ordered as a result of the dispute.

[via Press Release]

(c) 2011 DomainNameNews.com (2)

In a recent decision in the dispute for the domain name Evoq.com, the WIPO panel let the original registrant keep the domain name. However the 3-person panel did not agree how exactly the “bad faith” criteria should be applied. The panel was not clear whether it mattered if a domain name was registered in bad faith when compared to the complainant’s trademark, or if this criteria could be applied against any existing trademark.

From the decision (emphasis added):

Faced with the fact that the Domain Name was registered in 2004, well before the Complainant was formed in 2007, the Complainant argues that the Domain Name was registered in bad faith directed at General Motors, which had announced a concept car called “Evoq” in 1999.

Some members of the Panel are inclined to conclude that, to prove bad faith registration, the Respondent must have had a bad faith intention with respect to the Complainant’s mark. However, the Panel does not need to reach a definitive conclusion on that issue because, even if bad faith directed at third parties could constitute bad faith for the purpose of this requirement, the Panel does not find the existence of any such bad faith on the evidence in this case.

So while the panel clearly thought that the domain owner did not register this domain in order to infringe on the complainant’s brand, at least one panelist thought it may have been infringing on another companies’ brand and thus could potentially constitute a bad faith registration.

In a conversation with DNN, Zak Muscovitch of DNAttorney commented as follows:

Zak Muscovitch at DomainConvergence

The Complainant’s position is absurd. The Complainant argues that the Respondent should be found to have registered the domain name in bad faith, even though the Complainant wasn’t even in existence at the time the domain name was registered, because the disputed domain name was registered after  an unrelated third party; General Motors, acquired trademark rights. The fact that the Complainant was able to adopt EVOQ as a trade name and trademark for its communications and branding business years after General  Motors acquired trademark rights,  in ostensible “good faith”, means that  the Respondent was equally able to register the domain name in good faith notwithstanding General Motor’s limited rights. What is good for the goose is good for the gander. EVOQ is a name that could lend itself to any number of business endeavours. This is a case of attempted domain name hijacking in my opinion, pure and simple.

[Thank you safesys/DBR]

(c) 2010 DomainNameNews.com

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According to an ICANN announcement published yesterday, all UDRP providers must accept electonic filings by UDRP claimants and respondents as of March 1st, 2010. The original rules had required UDRP providers such as WIPO to provide hard copies of the entire complaint. As of March 1st they will only be required to forward a hard copy notice that a UDRP complaint has been filed.

ICANN | Announcement Regarding Implementation of Modification to Implementation Rules for Uniform Domain Name Dispute Resolution Policy.

(c) 2009 DomainNameNews.com

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European Domain Registration

Despite being clearly limited in scope, the purpose of the UDRP continues to be ignored by experienced panelists. The result is an ever-expanding environment for domain disputes that exists completely far from any legislative or judicial oversight.

In the recently decide Deutsche Kreditbank AG v. DKB Data Services (USA), Inc. D2009-1084 (WIPO Sept 30, 2009), the respondent registered a three letter domain name (dkb.com) in 2001. NB: DomainTools (my favorite research tool) shows a record creation date in 1996. During this period the domain had been registered with a single registrar with only 2 name-server changes in seven years. Evidently the domain had not been used recently. The panelist, Mr. Swinson, accepted the statement of the complainant’s private investigator’s that the respondent was dissolved after it had merged with another company in 2002. Mr. Swinson concluded that the dissolution, followed by non-use was sufficient to transfer it to the complainant. (Obviously, the panelist did not know that the company was a client of “The Mill House Inn” in Long Island.  It will also be a disappointment to cfsoftware who will no doubt have lost a customer.) Whether the “investigator’s” statement was a sworn declaration was not disclosed in the decision. Notwithstanding the apparent dissolution, however, the respondent did maintain the registration. Is this “cybersquatting”? According to this panelist, it is.

Respondent’s default meant the complainant’s allegations were not challenged. Nevertheless, an unchallenged complaint does not entitle a panelist to issue decisions that are so obviously contrary to the purposes of the UDRP. In case it has escaped anyone, the UDRP Policy was designed to deal only with the limited problem of “cybersquatting”. “Cybersquatting” is the “deliberate, bad faith, abusive registration of domain names in violation of others rights.” (WIPO Final Report, 1999, p29). Numerous decisions confirm that it is NOT designed to resolve trademark disputes, business disputes, contract disputes, employment disputes etc. Such “complicated” matters fall outside the scope. The Policy is not designed to decide who has a “better” right to a domain, but merely whether a registration is abusive according to certain standards.

In Deutsche Kreditbank, the panelist first found a lack of legitimate interest because none of the paragraph 4(c) descriptions of a possible legitimate interest could apply and, of course the Respondent, who was no longer in business, obviously had not provided any evidence of a bona fide use. The most troubling aspect, however, was the panelist’s fabrication of bad faith registration based on the Telstra decision. The panelist concluded that the current use was “passive” thus supporting a presumption of original bad faith intent.

The panelist’s application of Telstra leaves much to be desired. He openly doubted whether the complainant’s mark was well-known, holding that it was reasonable to conclude that the U.S. located respondent did not know about the German bank. Normally, if a respondent is unaware of the complainant, much more is required to show the kind of deliberate intent required for a finding of “cybersquatting”. The panelist then concluded that despite the fact that the respondent once was an existing company, it was not possible to conceive the respondent using the domain in any legitimate way. Finally, the panelist held that although the respondent may not have intentionally concealed its identity, it was not possible to contact him on a given address and respondent did not provide a response. Ultimately, Mr. Swinson justified his illogical decision by pointing out that the respondent “in all likelihood” was dissolved and thus the domain name would be of limited value to its operation as a business. This final point clarifies the inappropriateness of the entire decision.

The fact that the respondent had existed when the time the domain was registered is conclusive evidence of the absence of bad faith registration. The statements by the complainant’s investigator – that the respondent had been dissolved – are an admission that the respondent had in fact existed. The continued registration clearly indicates that a valid property right remained in the hands of the respondent. Dissolution does not cause property rights to evaporate – they transfer to the proper successor in interest. The lack of use here is irrelevant.

This decision typifies the continued expansion of the UDRP well beyond its intended scope. Without judicial oversight it is impossible to effectively challenge such wayward panelists and guide the UDRP process so that it is truly equitable. While Telstra may have been created to deal with a particular difficult factual situation, that decision itself went beyond the bounds of the UDRP. While the rationale of Telstra may be justified by the limited circumstances it was intended to address, the Deutsche Kreditbank decision shows the danger of a system where panelists with little or no judicial sense apply “precedent” to justify a decision to award a domain name to the person with a “better” use.

Decisions like Deutsche Kreditban only encourage trademark owners to try to use the UDRP to obtain domains that they are not in any manner entitled to but desire nevertheless. They are but another reason to encourage the establishment of an appeals process (or at least an ombudsman) or to require a regular peer review of panelists.

Author Paul Keating, ESQ. is a California attorney who is lucky enough to both live and work in Barcelona, Spain.

(c) 2009 DomainNameNews.com

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