Domain Name Wire

Domain Name Wire

  • Did “Netbank” lie, or was it just inept in this UDRP?

    1. BY - Sep 14, 2012
    2. Policy & Law
    3. 4 Comments

    A quick look at archives disproves a UDRP complainant’s statement.

    UDRP complainants and their lawyers make all sorts of claims when filing UDRPs. Sometimes they make assertions that are false, and sometimes these are honest mistakes. But at what point does it become deliberate? And at what point does not using freely available tools to verify complaints become problematic?

    Take the decision just handed down by WIPO against NetBank for the domain name bancanet.com.

    (I should note that I’m not sure exactly who the complainant, identified as Netbank Inc, is. You’ll recall that NetBank was an early internet bank that was shut down by regulators in 2007. Netbank.com now forwards to another bank, but that bank is located in San Diego while the complainant in this case is identified as being in Phoenix.)

    Here’s what NetBank had to say (as the panel explained it) about Banco Nacional de Mexico and the domain name, which Banco Nacional registered in 1999:

    With regard to bad faith, the Complainant argues that the disputed domain name is not used and has apparently never been used since its registration, that the disputed domain name was registered by the Respondent in order to prevent the Complainant from reflecting its marks in a corresponding domain name, that the Respondent has engaged in a pattern of the above-described conduct (continuously renewing the disputed domain name without using it), and that the disputed domain name was registered primarily for the purpose of disrupting the business of the Complainant, who is a direct competitor of the Respondent.

    I’m not a lawyer. But in 10 seconds I was able to disprove this initial statement about the domain name never being used. Just go to screenshots.com/bancanet.com and you’ll see this:

    Sure looks like the bank used this domain name, right? It clearly calls its online banking BancaNet. It has since shut down the URL due to security issues.

    Maybe they hadn’t heard of Screenshots.com. But everyone knows about Archive.org, and you’ll find plenty of similar archives of the site there.

    In the end the panel didn’t even consider this issue because the complainant didn’t show rights to the term NETBANK and Banknet, despite claiming registered and common law rights.

    The only live U.S. trademark application I can find for Netbank is an intent-to-use filing from Bank of Internet USA, which is where Netbank.com currently forwards. The only live U.S. registered mark for Banknet is registered to Mastercard.

4 Comments
  • John Berryhill says:

    September 14, 2012 at 10:45 am

    “And at what point does not using freely available tools to verify complaints become problematic?”

    That’s a good question. I am more frequently seeing UDRP complaints in which a few moments of research, using well known resources, would have corrected a mis-statement made by the complainant, or otherwise cured a mis-impression.

    One of the weird ones currently pending involves a domain name which was subject to a prior UDRP decision several years ago, and still belongs to the same registrant.

    Now, it’s pretty weird to read a UDRP complaint which cites to a number of UDRP decisions to establish various arguments, but somehow manages to miss the previous decision specifically about the disputed domain name and the same registrant.

    What seems “normal diligence” to one group of folks, might be magic to another group of folks. So, while you have UDRP panelists who appear to lean toward, “Well of course anyone would check the trademark register in (some obscure country),” the notion that a complainant should bother to do some basic research is alien to them.

    More often than not, mis-statements are due to error, ignorance, or some other human failing, than they are due to active evil intent. But quite often it strains one’s sense of charity to extend the benefit of the doubt.

  • I agree with you, John, and it would be nice if the UDRP system had a a Rule 11 type sanction, which would impose money sanctions on the law firm/attorney and its client for not doing their homework before bringing a lawsuit but the chances of that happening are probably as great as the ICANN Policy being amended to permit respondents to recover their costs when a domain transfer is denied.

  • “not doing their homework before bringing a lawsuit”

    Why would the UDRP process want to reduce the quantity of filings?

    If the UDRP procedure changes, it will be in favor of the complainants and complainant’s lawyers.
    Presently, the fox is guarding the hen house. Do you really think they will permit a loss of legal ground?

    I’m sure the losing law firm still received their time charges.

  • John Berryhill says:

    September 16, 2012 at 3:13 am

    I tend to agree with you there.

    There are good arguments either way. Process can only be improved so much before you reach a point where the primary problem of what amount to intractable problems of judicial philosophy emerges.

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