Panelists don’t blindly assume respondents are cybersquatting in two recent cases.
Although it’s rare, domain name owners sometimes win UDRP filings despite not responding to the allegations. In these cases, the UDRP panelists actually use critical thinking on the merits of the case to make sure the complainant has met its burden. They don’t assume that a lack of response proves that the domain owner is a cybersquatter.
Domain owners won two recent cases despite not responding to the complaints:
The first case involved CDN giant CloudFlare, which went after the domain name CloudFare.com. In this case, panelist David A. Einhorn noted that the respondent registered the domain name in 2009, prior to CloudFlare’s stated date of use in 2010. Thus, it wasn’t registered in bad faith.
The second case was filed by Allglass Confort Systems, S.L. of Spain against the domain name todocristal.com. Todo Cristal translates to “all glass”, and the complainant uses the domain name allglasstodocristal.com.
The complainant has trademarks for a design mark for “Todocristal Allglass”. But panelist Pablo A. Palazzi pointed out that Todocristal.com is descriptive of the complainant’s business and is generic in nature. Therefore, the complainant didn’t prove it was registered in bad faith. Although Palazzi didn’t come to a determination on rights and legitimate interests, he expressed reservations on this topic due to the generic nature of the domain.
C.S. Watch says
Regarding ‘Cloudfare,’ the US courts have been savage in defending “registration date.” “[i]t is obvious that, under any reasonable definition, the initial contract with the registrar constitutes a ‘registration’… GoPets Ltd. v. Hise, 657 F.3d 1024, 1030, 1032 (9th Cir. 2011), as cited in Vizer v. vizernews.com, Civil Action No. 2011-0864 (D.C. 2012). This reasoning has been extended by a federal district court to transfers to unrelated third parties, Airfx.com et al. v. Airfx LLC, 2012 WL 3638721 (D. Ariz. Aug. 23, 2012).
This domain, along with at least half of all domains, falls under the 9th Circuit (see GoPets, above). So if the panel had transferred it, the complainant would be walking into a 100K court award plus legal fees. That could be catastrophic for some complainants. This NAF panel has saved their bacon.
C.S. Watch says
Cloudfare’s holding contains a line of reasoning that respondents usually forget to present: If the domain predates the trademark at issue, the complaint fails under Policy § 4(a)(i) as well as under 4(a)(iii).
Policy § 4(a)(i) requires that “the domain name registered by Respondent is identical or confusingly similar.” …To what? To the complainant’s fever dream in future spacetime?
The 4(a)(i) language comes directly from the ACPA, 15 U.S.C. §1114(2)(D). So we can bounce over there to confirm our interpretation: “in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;”.
The laxity of panels regarding 4(a)(i) is costing complainants hundreds of thousands in court awards. So now perhaps it is time to address it with some precision and integrity.