UDRP panel got BidPal.com case right, but complainant’s lawyers did it a disservice
Thursday, December 20th, 2012
Ultimate decision in case is right, but complainant’s case could have been stronger than it was.
It’s no wonder that BidPal, Inc wants the domain name BidPal.com. It has the decidedly inferior domain name BidPalNetwork.com.
In October it filed a UDRP against the owner of the domain name.
A three member UDRP panel ruled against the complainant, arguing that it did not prove lack of rights/legitimate interests in the domain and that it was registered and used in bad faith.
The decision was correct. But in reading the case, it’s clear BidPal’s lawyers didn’t put the company’s best foot forward.
The panelists focused on the registration date of the domain (2000) being before BidPal became a registered trademark (applied for in 2006 and granted in 2008). It also wasn’t the complainant that got the trademark; the original applicant later assigned it to BidPal, Inc’s predecessor in 2010 and then the company itself in 2011.
Yet whois records suggest the current owner of the domain wasn’t the original registrant in 2000. It looks like the registrant got the domain in late 2006 or early 2007.
And it turns out the original applicant for the trademark is a founder of BidPal, Inc.
So the lawyers could have argued that domain was registered by the current owner after the trademark was filed.
At least from the way the panel wrote the decision, it doesn’t appear that argument was put forth.
Nevertheless, the domain owner could have poked holes in that. The trademark was originally filed on an intent-to-use basis, and it’s clear it wasn’t really put to use until much later. So the decision itself was right (not even considering the “generic” nature of the domain).
I also fault BidPal for saying the respondent makes money from the domain name from parking, saying it was part of Go Daddy’s CashParking program. It appears that the domain is just parked by Go Daddy and is not part of the paid parking program. Interestingly, the panel glommed on to this parking to show that the respondent was using the domain.
This is a case of the right decision being made even considering the full picture, but I think BidPal, Inc. could have put a much better case together.