Panelist used the wrong dates in finding RDNH, but the complainant might not have known.
A single-member National Arbitration Forum panel has found Tupelo Honey Hospitality Corporation to have engaged in reverse domain name hijacking for filing a cybersquatting dispute against TupeloHoney.com.
Panelist M. Kelly Tillery found in the complainant’s favor for the first two prongs of UDRP but found that the domain name was not registered and used in bad faith. Furthermore, he found that the case was reverse domain name hijacking because the domain owner registered the domain in 1998, two years prior to the complainant’s stated first use of the term.
Actually, the domain owner of record change to the current registrant in 2008. Prior to that, it was registered in the name of someone in Alabama. Assuming there’s no explanation for this change other than a change of ownership, the registration date would be considered 2008 for the purposes of UDRP.
Domain owner Reggie King was represented by attorney Steven L. Rinehart. Rinehart has been admonished by panels for misleading them about when domain names were registered.
TupeloHoney.com is not the first case in which Rinehart made a misleading statement about registration dates (at least based on the UDRP provider’s summary of the case) and not been called on it.
This is one of the reasons complainants should hire a domain name attorney familiar with looking up historical domain ownership records.
Panelist Tillery wrote:
Complainant knew when it initiated the action that Respondent’s registration of the domain name predated its First Use of any TUPELO HONEY® mark by almost two years. That one undisputed fact was then and is now fatal to this Complaint and supports this Panel’s finding of reverse domain name hijacking.
In some ways, I think this finding of reverse domain name hijacking is still justified. After all, since Tupelo didn’t challenge the registration date, it must have thought that the domain was actually registered by the current owner in 1998, so pushing forward with the case showed bad faith.
Still, I hope that misleading dates do not force panels to call into question the information they are provided by respondents about registration dates.
Nick says
I agree, the reverse domain name hijacking finding was still justified.
C.S. Watch says
‘Tupelo Honey.’ 1971 global hit by Van Morrison. How old are these people? *spits off side of porch*
Jimmy Hoffa says
Hahaha. This made my day!
C.S. Watch says
“Actually, the domain owner of record change to the current registrant in 2008. Prior to that, it was registered in the name of someone in Alabama. Assuming there’s no explanation for this change other than a change of ownership, the registration date would be considered 2008 for the purposes of UDRP.”
*tires screeeech*
This is an important issue, let’s get the floodlights out. The date of ‘new domain owner of record’ is not the relevant date. The date that applies in this dispute is the ‘original registration date’ in the Whois. Because the raison d’être of the ACPA is ‘targeting.’
There are no drops on this name. No drops. So the rights of the original registrant carry all the way through to present day—and they carry right through to the present owner, even if he or she is an unrelated party who bought it on the open market. (Airfx.com et al v Airfx LLC 2012 WL 3638721 D Ariz Aug 23 2012.)
The Registrant, Complainant, and registrar are all USA. If this goes to federal court, the AirFX decision supra hands this name to the Respondent. AirFX treads the only logical course, since domains are not kidneys–they can be sold. This position prevents nonsensical slippery slope sloppiness. Doesn’t take a lot of navelgazing to reach this conclusion. If there are any backwater jurisdictions on the globe dragging their heels on this point, they’re just embarrassing themselves before they eventually plod the trajectory.
Registrants have always rightfully operated on the assumption that thinking fellers and panelists alike know that one might want to change one’s Whois name over the course of twenty (20) years. And they have the right to do so without being harassed in a UDRP to the tune of many thousands of dollars.
Maybe a registrant wants to start a home biz, use privacy protection, etc. If the framers didn’t feel that way too, then they would have said so and there would have been a mechanism to formally publish name change data from the outset.
And the ‘original registration date’ (date since last drop) has historically always been the fact used in disputes. It was made concrete and it is public, because the ACPA/UDRP framers knew it would be the fact at issue, and intended it to be so.
Strictly speaking, if this comes up in court, the original registration date ‘ever,’ regardless of drops, will carry the day. Because, again, the complainant is trying to assert rights to an asset because they were ‘targeted.’
Also, does the UDRP have the investigative tools to find out if a name that has never been dropped is still owned by the same people? No. Fortunately they don’t have to. All they have to know is the Whois reg date. Simple. That’s not some happy accident on the part of the UDRP framers.
Thus and so, you can’t file a UDRP just because there has been a name change since the Whois registration date. ‘Casting sleazy aspersions’ is not recognized as grounds for a costly UDRP dispute. Certainly not if in rem or in personam jurisdiction lie with the US. And complainants can certainly expect federal judges to bill them should they try that abusive maneuver.
If a complainant doesn’t have a mark that predates the registration date posted in the Whois, then that complainant must take his or her crocodile tears to federal court.
As it was in the beginning, so shall it ever be.
christopher brennan says
c s watch, i am old enough to remember van morrison, and if your dissertation on reg date for udrp purposes holds then i commend you for an excellent piece
C.S. Watch says
Compliments of the day, Squire.
It holds, it was held:
‘…if an original owner’s rights associated with a domain name were lost upon transfer to “another owner,” the rights to many domain names would become “effectively inalienable,” a result the intention of which was not reflected in either the structure or the text of the ACPA.’ (Airfx.com et al v Airfx LLC 2012 WL 3638721 D Ariz Aug 23 2012.)
If the domain was registered ANYTIME by ANYONE before a complainant came to be, that is proof that the domain has some inherent value apart from the complainant’s use. The complainant does not have the right to a windfall of all of that value against all comers.
About half of all domains are under US jurisdiction. The UDRP exists solely to unburden the courts. Not to f things into a cocked hat. http://tinyurl.com/ycoxlgxm.
Steve says
I liked the original “Tupelo Honey” eatery in Asheville, NC. but then it went chain-franchise — and the shrimp & grits lost its bite and the drinks got watered down, and per this case, the company has become reckless.
Steven Rinehart says
Zak Muscovitch told me today I ought to comment on this article and defend myself, so I am. I’m the attorney who represented the respondent in this case. I felt like Andrew Alleman’s comments were rushed in this article. UDRP commentators and many UDRP attorneys take it for granted that the registration date of a domain in dispute under the Policy has to be the date the domain last changed hands. I acknowledge that many panelists have interpreted the Policy this way (while the Policy itself and ACPA do not say it) and that the WIPO Overviews seem to take this for granted as well, but to say that issue is settled or that all panelists universally interpret this to be the case is not accurate, nor is it the way that federal judges in the U.S. view the issue in Arizona or Virginia (the jurisdictions that deal the most with cybersquatting issues). It is also not a logical way of interpreting law (though it is a logical way of increasing revenue from UDRP filing fees).
In the case at issue here, look closely at the decision. The panelist himself recognizes that the registration date under the Policy may not be the date the domain was last transferred but may be the creation date, despite the domain changing hands. In the decision, the panelist finds that “Respondent or its predecessor in interest registered a domain name in good faith when it registered the domain name prior to a Complainant’s Trademark Registration.” This statement is nothing if not a recognition that the effective registration date under the Policy may be the creation date when an earlier party (a predecessor in interest) had the domain – a position I have taken four times I can remember in UDRP cases. Other panelists have recognized this likewise be the case, but it seems like nobody but me and those panelists take note of it. Other cases in which the panelists have recognized either that the registration date is the creation date, or that it may be, include the following cases of which I am aware (and I would assume additional cases exist):
– Jenna Massoli v. Linq Entertainment, D2012-2502 (WIPO Feb. 15, 2005) (cited by The Arbitration of Celebrity Domain Name Disputes, Hon. Neil Brown (2008));
– Cummins, Inc. v. P. Compton, FA0403083 (Nat. Arb. Forum March 1, 2005);
– Ellen G. White v. Cary Mayo, FA1076568 (Nat. Arb. Forum Nov. 2, 2007);
– Marcas y Franquicias v. Marchex, D2012-1572 (WIPO Oct. 30, 2012);
– Agros Trading Confectionary v. David Michaels, D2016-1827 (WIPO Nov. 20, 2016) (in which a predecessor-in-interest defense was made, but rejected);
– Rock Bottom Restaurant v. Duane Reade, D2000-1014 (WIPO Nov. 21, 2000);
– Car Advisory Network v. Journal Communcity Publishing Group, D2008-0717 (WIPO June 27, 2008); and
– Albir Hills Resort, S.A. v. Telepathy, Inc, D2012-0997 (WIPO July 19, 2012).
I would also point out that federal judges in U.S. district courts who’ve considered the issue in depth view the notion that registrants cannot transfer their registration rights with skepticism. Whether a federal jurisdiction views a domain name as IP or just a contract right (some are split when judgment creditors try and seize a domain as an asset), domain names as IP are still transferable under the framework that exists. For UDRP panelists to hold otherwise is tantamount to holding that all the value that a registrant has in their property may be simply nullified unilaterally by another party who registers a trademark ex post facto. This is contrary to U.S. law and to some interpretative case law holding the registration date is the creation date. Even if the UDRP cases cited above holding that a registrant can have rights through a predecessor-in-interest did not exist, to say that I cannot argue in good faith that registrants have such rights wrongfully presumes past UDRP cases are binding on new UDRP panels, which they are not.
Those UDRP panelists who do not believe a registration date carries over all still believe that trademark usage of an early registrant does carry if accrued and assigned. In cases under the cases in which the creation date of a predecessor is considered irrelevant to a bad faith registration analysis, earlier trademark usage by the earlier registrant which has been assigned to that user’s successor-in-interest is relevant and considered dispositive under a legitimate interest analysis/bad faith use analysis in many cases. I draft domain name purchase agreements to contain an assignment of both rights, and even the question of what type of earlier use results in accrual of common law rights (sometimes concurrent to the complainant’s) and/or to priority use is very debatable. In Virginia, where a lot of these cases end up, the Eastern District frequently finds that simply having a generic landing page with cost per click ads gives rise to alienable common law rights on the part of registrant (e.g., Gong Zheng Jin v. 001HH.com, Case No. 1:14-CV-1120 (E.D. Va 2015). Some cases in Virginia have concluded that simply redirecting traffic is use giving rise to common law rights (e.g., Huang v. Yinzhong Xie, Case No 1:14-CV-903 (E.D. Va 2015). There are others and if someone wants to pay me for my time, I’ll create a list of them all. While I admit the issue is arguable both ways and I have argued it both ways, the point is that a respondent to a UDRP case can claim in good faith through its predecessor-in-interest rights in both the registration date and earlier use, even when the usage of the domain might be characterized as passive under traditional UDRP analysis. I could also direct you to some TTAB cases about this that are relevant (and some appellate cases on tacking).
Finally, I have faced the situation several times defending UDRP cases where the Complainant itself has claimed the creation date is the registration date. I don’t think in those situations respondents are under any obligation to refute that assertion with all this case law or to pay to pull the historical Whois records to assist the complainant when the complaint claims the creation date to be controlling – especially when respondents are barely able to afford a minimal defense. In the absence of the Whois history, there hasn’t even been reason for me to question that the creation date is the registration date sometimes when other issues in the case are forefront and the Complainant says nothing or little about it. In the case, the registration date was not disputed, and in the complainant changed its own allegations about the registration date/creation date issue after the response had been filed in an additional submission. In the other case, if I recall the panelist determined the registration date from an exhibit to the original complaint (which was not the operative complaint, rather it was the amended complaint which was the only filing I even received from my client). In analyzing all of these cases, I think it is apparent that a registrant can make a good faith claim through its predecessor-in-interest and that UDRP panelists have recognized that along with federal courts.