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.