Open Season on OpenDental.com
Monday, August 10th, 2009
Sloppy decision should worry domain name owners.
The domain name OpenDental.com has been awarded to a software company in a domain arbitration case. The details of the case are startling, and all domain name owners should pay attention.
The key fact is that the registrant of OpenDental.com, a licensed dentist in South Korea, registered the domain name in 1999. The complainant, which operates Open Dental Software, didn’t start using the trademark in commerce until 2003. In fact, the complainant admits this in his additional submission to National Arbitration Forum:
The assertion that, because the initial registration of the domain was prior to the establishment of the trademark Open Dental, it could not have been in bad faith has some merit, but is flawed. Given that the initial registration was not in bad faith, (as indeed Open Dental was not trademarked or in use by either party and that the respondent was considering using the name for a business, there have been additional registration updates that may have been in bad faith.
The complainant refers to “registration updates”, which basically means renewing the domain name. Previous panels have found that renewal of a domain name doesn’t equate to a new registration.
Clearly, this domain could not have been registered in bad faith unless, to use John Berryhill’s famous assertion, the registrant was psychic. (Berryhill was not involved in this case).
But this major issue wasn’t even addressed by arbitrator Daniel B. Banks when discussing if the domain was registered in bad faith. Banks only wrote that offering to sell the domain is evidence of bad faith (even though the complainant initiated discussions) and that non-use of the domain is evidence of bad faith (it’s just a blank page).
Bank’s decision reads like a template response to a domain dispute and is seriously flawed. If there ever was a clear-cut case to get the domain industry riled up, this is it. This is why companies roll the dice with UDRP. They get lucky sometimes.
You can read the complete decision here.
(Hat tip UDRPsearch).