Complaint was dead-on-arrival because domain was registered before business started.
Domain name attorney John Berryhill has successfully defended the domain name QWIC.com in a UDRP brought by an electronic bike maker.
The case was filed by the maker of Qwic bikes in the Netherlands. It uses the domain name QWIC.nl.
The complaint was dead on arrival as it seems that the domain registrant registered the domain name before the bike maker started its business.
Panelist Alistair Payne addressed this issue, writing:
The basic premise underlying the Policy, subject to a showing of bona fide pre-existing trade mark rights, is “first come-first served”. In this case and based on evidence on the record, the Respondent was clearly first in time. The Panel notes that the Complainant subsequently had its agents make an international trade mark application based on the Benelux application and also obtained the domain names qwic.nl and qwicgb.com. The Panel finds it difficult to believe that the Complainant was not made aware by its trade mark agents in 2006 or 2007 of the Respondent’s ownership for the disputed domain name.
However, Payne did not find the complaint to have been filed in abuse of the policy:
This therefore appears to be a case in which the Complainant has sought to launch a rearguard action to obtain a domain name which it most likely knew from the outset was not available. However in circumstances that the Respondent had never made an actual use of the disputed domain name and that the Complainant could not have been aware of the circumstances surrounding non-use as subsequently described by the Respondent, then a UDRP panel following the Octogen line of reasoning might in other circumstances have come to a different view. In this light it cannot be said that the Complainant had no hope at all of succeeding on its Complaint and as a result, although this is a borderline case, on balance, the Panel has decided not make a finding of reverse domain name hijacking on this occasion.
QWIC.com by DomainNameWire on Scribd
Nat Cohen says
The Octagen line of reasoning is illegitimate and has been discredited for years. It is unfortunate that Payne is permitting Complainants who rely on it to escape censure for a clearly abusive filing.
Those panelists with the arrogance to unilaterally meddle with the policy by issuing the Octagen/Mummygold line of reasoning have perpetrated an ongoing harm. Not only did they enable horrible decisions that are akin to outright theft such as with camilla.com (https://domainnamewire.com/2015/12/11/ica-camilla-com/), in addition they have provided an excuse to present day panels to absolve Complainants who rely on the Octagen interpretation of responsibility for filing abusive complaints which deprived the Respondent in this case of even the slim comfort of a well-deserved Reverse Domain Name Hijacking finding.
This is a statement of the Octagen/Mummygold interpretation from the Mummygold case: “in this Panel’s view bad faith registration can occur without regard to the state of mind of the registrant at the time of registration, if the domain name is subsequently used to trade on the goodwill of the mark holder”
The clear flaw with this line of reasoning is that bad faith intent at the time of registration is nothing other than a finding about the state of mind of the registrant at the time of registration, so it is absurd on its face to say otherwise as the Mummygold panelists attempt to do.
Other panelists showed that they still retained an ability to understand the English language-
“the Panel does not find a compelling Policy or legal basis for retroactively characterizing later abuses as bad faith in the “registration” of a domain name. In company with other panels that have critiqued the Mummygold/Octogen decisions, this Panel is unwilling to overlook the plain language of paragraph 4(a)(iii) of the Policy requiring a conclusion that the domain name has been “registered” and “used” in bad faith”
(http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2010-2011)
That decision effectively shut down the Octagen/Mummygold interpretation back in early 2011, as further stated-
“The fact that so many panelists have declined to follow the Mummygold/Octogen approach argues against an emerging consensus to overturn a long-established doctrine and provides yet another reason for this Panel to decline to adopt the Mummygold/Octogen reasoning”.
(http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2010-2011)
So why is Payne, six years later, treating the reliance on a long discredited, and clearly illegitimate line of reasoning as justification to evade an RDNH finding?
Acro says
Looks like the second Dutch UDRP loss for the “day” (mijndomein.com being the other).
John Berryhill says
Actually, the more interesting question is why is the Complainant, Hartmobile B.V. identified as “Oger Lusink”?
Andrew Allemann says
I was a bit confused by that myself. Does Oger make all of the bikes?
John Berryhill says
No. Oger.com is another case. Someone formatting the document at WIPO made a copy/paste error.
To their credit, WIPO hires many talented people early in their legal careers from all over the globe for renewable two year stints as case managers. Unless the new construction added new office space, they are confined to a bunker like concrete block building that is a cross between a 1970’s college dormitory and a Swedish prison, uphill from the more palatial WIPO digs. I’m sure it makes working there interesting.
The funnier one was gabs.com where the CAC staff published a “decision summary”, which they inexplicably add to panel decisions, which contradicted the actual panel decision. That gang is truly just phoning it in.