Domain Name Wire

Domain Name Wire

  • DoorKings.com: this is why you hire a domain attorney for UDRP

    1. BY - Jul 17, 2012
    2. Policy & Law
    3. 6 Comments

    A complainant’s UDRP filing should be pretty simple, if it knows what it’s doing.

    John Berryhill was ready.

    His client, United Marketing Group, Inc, had to prove to a WIPO panel that its domain names DoorKings.com and DKSOpeners.com were registered in good faith after DoorKing, Inc. filed a UDRP complaint.

    So he dutifully explained that, as a reseller meeting certain conditions, United Marketing Group had rights or legitimate interests in the domain names.

    Then something happened: the panel didn’t even consider whether his client had rights or legitimate interests. It granted United Marketing Group the victory because DoorKing’s lawyers messed up.

    DoorKing failed to show that the domain names were confusingly similar to marks in which it has rights.

    Berryhill was sure to point this out the panel, but a competently filed case would have no doubt overcome this. DoorKing had filed trademark applications as early as the 1950s. But one of the earliest trademarks was canceled in 2000 because DoorKing failed to file its renewal. An oversight, DoorKing explained, due to change in trademark counsel.

    No problem for DoorKing. It would have been pretty easy to show non-registered rights to the marks. But it didn’t. It didn’t try, probably because it didn’t understand the nuance of UDRP.

    So the three person panel didn’t consider all the elements of UDRP. DoorKing failed at the first element.

    And that, my friends, is why you should hire an attorney that specializes in what you’re trying to do.

6 Comments
  • Sounds like DoorKing took a Dorking from the UDRP panel. It is interesting to note that DoorKings.com seems to be selling exclusively DoorKing(R) products. Is DoorKing attempting to cut off their own nose to spite their face?

  • John Berryhill says:

    July 17, 2012 at 10:47 am

    I believe the sporting term is “unforced error”.

  • Ms Domainer says:

    July 17, 2012 at 11:49 am

    *

    The Complainant will most likely refile, right?

    There seems to be no double jeopardy in UDRP rulings.

    *

    • @ Ms Domainer – it’s very hard to get a UDRP panel to rehear a case you’ve filed. So I doubt it.

      And even if they prove the first element it won’t be easy to prove the others.

  • I wouldn’t pop the champagne yet.

    From the complainants atty’s site:

    http://www.jmhlaw.com/

    “We are pleased that a U.S. Federal Court recently held that our billing rates are reasonable.”

    So this will no doubt become a court dispute possibly with counsel reducing fees in order to cover any error in the UDRP or save face.

    The question becomes then what is the value of the domain to anyone or to the current owner in how it is being used. How much are they willing to pay to hold onto the name.

  • There seems to be no double jeopardy in UDRP rulings.

    http://www.wipo.int/amc/en/domains/search/overview2.0/#44

    A refiled case may only be accepted in limited circumstances. These circumstances include when the complainant establishes in the complaint that relevant new actions have occurred since the original decision, or that a breach of natural justice or of due process has occurred, or that there was other serious misconduct in the original case (such as perjured evidence). A refiled complaint would usually also be accepted if it includes newly presented evidence that was reasonably unavailable to the complainant during the original case.

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