Panel re-writes UDRP and “registered in bad faith” requirement.
The heirs of the late Igal Lichtman, commonly known in domain name circles as Mrs Jello, have lost a UDRP decision for the common name Camilla.com.
The case was filed by Australian clothing company Camilla Australia Pty Ltd, which uses the domain Camilla.com.au.
A three person World Intellectual Property Organization panel determined that, even though the domain name was registered prior to the Complainant having rights in the (common name) Camilla, Lichtman somehow registered the domain name in bad faith.
The panel’s argument was that the domain name was registered speculatively “with an open mind to as to the exploitation of trademark rights” in the future.
This is one of the worst UDRP decisions I’ve read. The three-person panel consisted of David J.A. Cairns, M. Scott Donahey, and Christopher S. Gibson.
First, the panel notes:
The Panel accepts that the Respondent did not and could not reasonably have known of the Complainant’s trademark when it registered the disputed domain name in May 2009.
This should be case closed at this point. But then the panel goes on:
The registration of domain names with the intention of ignoring any future trademark rights that might affect the chosen domain names is equally a bad faith registration as is an intention to profit from an existing and established trademark right. In both cases the intention is to profit from the intellectual property rights of another, and to deceive the public in their Internet use.
First of all, Camilla is a common name. Second, since when does the UDRP say this?
In the current case the clear bad faith use is evidence of bad faith registration. The fact that the Respondent has taken no efforts, once the Complainant put it on notice of its trademark rights, to remove the links to the Complainant’s products, is probative that at the time of registration the Respondent was prepared to disregard any rights that might develop from the successful use of the word “camilla” by any business, such as in fact occurred with the Complainant…
…In the present case, the Panel finds that the disputed domain name was registered speculatively with an open mind as to the exploitation of trademark rights, and has in fact been used to exploit the Complainant’s trademark rights.
A horrible re-interpretation of UDRP.
Update: Internet Commerce Association released a statement about the case.