Tucows loses UDRP for Marker.com (but it ain’t over yet)
Friday, November 16th, 2012
Domain name already subject to court case.
World Intellectual Property Organization panelist David Perkins has ruled that Tucows’ registration of Marker.com is cybersquatting, and the domain should be transferred to Marker Völkl (International) GmbH. Marker Völkl owns the domain name marker.de.
But don’t expect the domain name to be transferred to the maker of ski equipment anytime soon.
Marker filed the case in July and Tucows sued for declaratory judgment in August. Since there’s an ongoing court proceeding over the issue, the UDRP decision won’t result in a transfer.
Typically, a panel will decide not to hear a case that is subject to a current court proceeding. But this is the second time I know of in which a panel has ruled against Tucows despite a court case.
Tucows got the domain name as part of its Mailbank acquisition of surnames. Its defense is mostly about how the domain was registered as a surname and is used to offer email addresses to customers.
Marker argued that sponsored links on the page were for ski products.
Perkins’ decision is quite nuanced. But for me it comes down to this: could you reasonably argue that this domain name was originally registered to infringe on Marker Völkl’s mark?
It doesn’t take half a brain to figure out that’s not the case. This domain has much more value for other uses.
Sometimes I think panelists try to prove a point or technicality rather than thinking about the overall purpose of UDRP.