Majority of panel rules that CEAT.com should be transferred to tire company.
A three person World Intellectual Property Organization panel has handed down a decision over CEAT.com, and it is sure to be controversial.
The complainant is a tire company in India, and the respondent was Kevin Ham’s Vertical Axis.
As one of the larger domain portfolio holders, Vertical axis registers many two, three, and four character domain names.
And although a simple search for “CEAT” returns many results for this acronym, a majority of the panel found in favor of the tire company.
The majority wrote:
The value of the disputed domain name to the Respondent is, therefore, its value as a trademark referring to Complainant and to the several other organizations identified by the Respondent who also use the letters “CEAT†as their marks. As Respondent itself points out and as a search of Acronym Finder reveals, all of the top references provided for the acronym “CEAT†refer to a specific trade association or trademark, i.e. the College of Engineering and Technology, the Code Enforcement Association of Texas, and the Center for Excellence for Airport Technology. It is of no consequence that “CEAT†is a short domain name or that the Respondent is in the business of registering short domain names. Simply because an acronym or domain name is short (such as IBM or NFL or GAP or NAF or SONY or AMEX or INTA or WIPO) does not mean that respondents have an automatic right to register such domain names and use them for PPC parking page.
Among the other reasons this rationale is controversial is that it instills a sense of “first to file a complaint” amongst acronym holders. It doesn’t appear that there’s evidence that CEAT.com was registered to target the tire maker’s trademark. Yet because it was the first to file a complaint, it will get the domain whereas other companies that use the acronym lose out.
Panelist Neil A. Brown gave a well reasoned and long dissent.
Brown summarizes the dispute this way:
The difference between the parties is that the Complainant’s position is that it may use the acronym as a trademark, as it has, but that the Respondent may not use the acronym as a domain name and nor, presumably, may anyone else. The Respondent’s position is that the Complainant may use the acronym as a trademark, the Respondent may use it as a domain name and the two can function in harmony so long as it, the Respondent, does not abuse the Complainant’s trademark rights or act in a misleading or deceptive way. In essence, I support the Respondent’s position on that dispute as it is consistent with the Policy and not contrary to any provision of it.
Brown also opines on acronyms as domain names:
An acronym has its own meaning and a unique value because of its short length, unusual combination of letters and sounds and because it can be used for general identification or branding as is universally practised in the commercial world today. It is therefore appropriate that such an acronym should give rise to a legitimate interest in a domain name provided there is no evidence or inference or even suspicion of abuse by the registrant of the trademark owner’s rights. To hold that such a valuable word cannot be used as a domain name simply because “the domain name is a trademark and has no descriptive meaning†is not supported by the Policy and is a very severe restriction on the right to register a domain name that is not contemplated by ICANN in its policies or practices.
… and more thoughts on registering short domain names:
Indeed, its is not willful blindness to buy a domain name that is an acronym and a 4-letter word that may be of value to a commercial party other than the Complainant who wants a short easy-to-remember word, a catchy word to describe a new company or product or an organization or business the acronym of which spells out the word “ceatâ€. No-one who has been through the soul-destroying process of trying to find a short, phonetic domain name with the right letters could possibly disagree with that view.
Brown also touches on the issue of why it took the tire company over a decade to file the complaint if it thought the alleged bad faith was so bad.
Parking a short domain is always risky. Indeed, had CEAT.com resolved to a page focuses mostly on tires, it would be much easier to find in the tire marker’s favor. But that wasn’t the case here, and Brown got it right.
George Kirikos says
That was a bad decision (I hope they’d appeal in real court).
I think it hurt the respondents that they’ve lost UDRPs in the past. Someone with an unblemished record might have been treated differently by the panelists.
There are many other biased paragraphs, e.g. the ridiculous paragraph:
“Furthermore, Respondent’s website includes at the top a general offer to sell the domain name. Even if the Respondent did not have in mind the Complainant to whom to sell the domain name, the Respondent’s general offer to sell the domain name shows that the Respondent knew or should have known that someone with rights in the “Ceat” name would have an interest in the domain name. See Wrenchead.com, Inc. v. Hammersla, WIPO Case No. D2000-1222 (finding that offering the domain name for sale at an auction site is evidence of bad faith registration and use). Thus, the general offer to sell the domain name constitutes bad faith use.”
I think those panelists seem to have ignored the fact that new businesses are created all the time. It simply does not follow that someone else with a pre-existing interest in “CEAT” is the only buyer for that domain name, as the minority panel member Brown rightly argues.
Big companies sell domains all the time (e.g. Microsoft sold the short domain DO.com to Salesforce). It’s not “bad faith” to sell a domain name, or offer it for sale. Nearly any business asset is for sale, at some price, as has been shown time and time again.
Truly poor analysis by the majority — better to take WIPO and NAF panelists out of the equation and go to court, in my opinion.
Steve Jones says
Good grief. What happened to bad faith being one of the criteria? How is bad faith with respect to the complainant proven here?
Domain Lo Mein says
Do they even put these panelists through any training?
It seems only Neil A. Brown has a lick of common sense.
If this were mine it would be going to court appeal for sure.
rs says
They have common sense alright. The other two panelists have law priactices where they make money when complaints are generated. The number of legitimate disputes are down so they have to come up with new types of disputes to keep things going.
Faris Khan says
I do sincerely hope that Vertical Axis are going to sppeal it to a Court . Maybe this blog can find out and let us all know as could be crucial. Without going into names etc, I lost at UDRP ,I then appealed to lower Court and “lost” and then appealed and won. Took nearly 3 years and cost much more than domain is worth but I am planning to do that every time now and F*** the complainants who try and take advantage. I would like to see UDRP stick to strict TM laws and would be fairer.
jayjay says
CEAT.com one day WIPO.com (and it’s targeted intellectual property ads on it’s parked page) the next! 😉
steve cheatham says
Very bad decision on a very generic name. Just sayin.
krx says
This is an eye-opener. If this ruling stands it could be another death knell for parking. My guess is the complainant argued for “bad faith” and won on the basis of ads related to its business appearing on the parked page – which is hard to avoid if you’re going to park it.
But worse, this ruling is basically a negation of the very legitimacy of domaining as an area of business. If offering to sell a domain constitutes bad faith, then it would follow that selling domains in any manner is an illegitimate enterprise. This seems to me to be the main difference between the panelists who sided with complainant and Brown, who did not. Brown seems to believe that domaining is a legitimate enterprise if done in keeping with WIPO policy whereas the other two do not.
Andrew Allemann says
@ KRX – Seems that the complainant said the keywords on the parked page were NOT related to its industry (based on how I read Brown’s decision)
Amanda says
Lunacy. I hope they appeal.
domain owner says
The Lunatics are running the Asylum in this case.
Mr Ham must appeal on principle, because this is blatently not right and totally unfair.
Justice where art thou?
krx says
@Andrew – I just read the decision and you’re right. The panel dismissed that claim, which makes the ruling all the more alarming. They make the case for bad faith based on the fact that respondent “registers large swaths of domain names for resale, often through automated programs that snap up domain names as they become available, with no attention whatsoever to whether they may be identical to trademarks, [and that] such practices may well support a finding that respondent is engaged in a pattern of conduct that deprives trademark owners of the ability to register domain names reflecting their marks.”
So the upshot is it is not okay to register a TM’d acronym domain and use it for a non-infringing purpose, even though there are multiple possible non-infringing uses of the acronym. Instead you must leave names like ceat.com unregistered so the TM holder can hand register it if and whenever they feel inclined to do so.
They also say that using a privacy service and having a for sale link are tantamount to bad faith.
Wonderful.
Faris Khan says
I even had a trade mark in hand when they took a domain from myself ,and I had not parked or used the domain.As I said in my earlier post, I then went through to appeal court and won the domain back (the problem being that by that time the world economy was in tatters )
The ONLY way to beat these people is play them at their own game, i.e. trade mark your domains ,especially ones you would not wish to lose. If anyone wishes to obtain a TM for their domain/s then I would be happy to act for them on basis of say £400 first TM and £250 thereafter. Possibly could talk for large numbers .That will give you a MINIMUM 5 years protection and depending if domain is used could be 10 years. nokta08 (g mail)
Dan says
what training is mentioned here? The complaintant just hired these udrp lawyers/panel to take the domain name for a fee, so they worked their asses off to do what they were paid for, that easy, it was clear from the start
steven says
>>>Furthermore, Respondent’s website includes at the top a general offer to sell the domain name. Even if the Respondent did not have in mind the Complainant to whom to sell the domain name, the Respondent’s general offer to sell the domain name shows that the Respondent knew or should have known that someone with rights in the “Ceat” name would have an interest in the domain name. (finding that offering the domain name for sale at an auction site is evidence of bad faith registration and use). Thus, the general offer to sell the domain name constitutes bad faith use.<<<
1. the inquiry link on the lander merely says "This domain is listed at DomainBrokers.com. Click here to inquire" .. domain brokers is not an auction site! the term auction itself doesn't even exist anywhere throughout the site
2. on the offer page there is a clearly posted Legal Disclaimer saying.. "The existence of this form does not constitute an offer to sell this domain, and the owner of this domain is not otherwise stating any intention to sell the domain. By hereby submitting a request for information and/or an offer you are acting as the sole initiator of a possible transaction between you and the owner of this domain."
what an injustice..
Steve Jones says
@Steven
I believe a domain being generally listed for sale shouldn’t be considered bad faith, especially when there are tens of millions of domains for sale.
That said, the way that legal disclaimer would work if I understand correctly is to protect against someone making an inquiry/offer and expecting that to mean the domain is sold to them for that amount. It doesn’t protect against the domain being for sale in general – it’s clear by the fact that it’s listed for sale that it is intended to be for sale. I’m no lawyer but the disclaimer as written seems to just say the owner doesn’t have to accept what is offered to them through that form as there is no existing agreement to sell the name at a specific price.
I could be wrong though.
Faris Khan says
@Steve Jones There is obviously no need to accept the terms to see that it is for sale . There is no obligation to accept the terms stated, UNLESS one was to put a Page BEFORE the for sale page stating “I undertake that….” . Then before those viewing the “for sale” page they would have undertaken whatever is stated . I might try that myself. So would have “Accept Terms to Proceed” page and then the “For sale” page after that. Anyone knows exactly how to do this please let us all know.
Faris Khan says
Just a further thought. Could one legally put on 1st lander page something along the lines
“If you proceed any further then this point you undertake that you will keep all material contained on the further pages strictly confidential and you further accept that in the event of any breach of that strict confidentiality you will pay the sum of $25,000 as compensation” etc etc. Would than be legally enforceable , and if they used the evidence contained in further pages in UDRP would they be liable ?.
UDRPtalk says
Did Vertical Axis decide not to challenge the decision in court?
The domain now shows the Indian tire company:
CEAT Limited
Niranjan Bhalivade
Niranjan.Bhalivade@ceat.in
463, Dr. Annie Besant Road, Worli
Mumbai, Maharashtra 400030 IN
Phone: +91.2266616042
Fax: +91.2266606047
Andrew Allemann says
@ UDRPtalk –
Thanks for the update. I guess so. I’m disappointed, but I guess for Vertical Axis is a question of the cost and time vs. value of the domain. Still, I’d think this would be important to overturn for precedent.
Faris Khan says
That a big shame as now this UDRP will be used against all acronyms that someone wants for nothing. Means more cases will go to Court. This is the great unfairness of UDRP in that Complainants are allowed to use Trade Mark’s/TM Laws to file and sustain a complaint, BUT Respondents are not allowed to answer such complaints using TM laws . THAT is unfair and a point that I will try and bring next time I am in Court.