Displaying posts tagged under "udrp"
Intent-to-use trademark does in complainant.
Neal & Massy Holdings, a business conglomerate operating in the Carribean, has lost a UDRP it filed against the domain name Massy.com. Massy.com is owned by domain investor Gregory Ricks.
Ricks defended himself without counsel in the UDRP. He made a good defense, pointing out that the domain name is a dictionary word that he registered 14 years ago.
He overlooked one key thing, though. Panelist Paul M. DeCicco found this key detail himself, and denied the case in part because of it.
It turns out Neal & Massy recently filed an intent-to-use trademark application for “Massy”. So while it claimed to be commonly referred to as Massy, this intent-to-use application dispels that notion:
In filing the ITU application Complainant thereby admits that it has not yet used the MASSY mark in commerce, but instead intends to use the mark at some point in the future. See 15 U.S. Code § 1051(1)b. The unavoidable conclusion that Complainant had no rights in MASSY when it filed its Complaint is further supported by the fact that Respondent registered the at-issue domain name over 14 years before Complainant’s UDRP filing but Complainant did not complain about the massy.com domain name until now.
DeCicco declined to find reverse domain name hijacking.
Generic word targeted with UDRP filing.
The generic domain name Dune.com has been hit with a UDRP at World Intellectual Property Organization.
The case was filed by Dune Holdings Limited, a London-based seller of shoes and accessories. The company uses the web address DuneLondon.com, so it’s no wonder that it wants the shorter domain name.
When I search for “dune” on Google the first five results are about the science fiction novel and movie. Of course, dune is also a mound of sand, as in a sand dune.
The domain name currently has Tucows domain privacy turned on. The most recent non-privacy whois record showed an owner in California.
Dune.com is parked with DomainSponsor, and I don’t see any ads referring to clothing.
Panelist’s rationale for latest decision directly contradicts earlier ones.
National Arbitration Forum panelist Héctor A. Manoff has found against Restomod, Inc. in a UDRP it filed for the domain name restomod.com.
The decision is probably correct, but how he came to the decision directly contradicts earlier decisions he has made.
In the Restomod.com case, the domain registrant registered the domain name way back in 1999. The complainant didn’t register a trademark until 2002. Even though it claimed first use in 1997, it didn’t provide any proof of that.
Manoff found that Restomod, Inc. failed to prove the first prong of UDRP: that the domain name was identical or confusingly similar to a mark in which it has rights.
Restomod does has trademark rights in the term Restomod. But Manoff pointed out that Restomod, Inc. didn’t show it had rights that predated the registration of the domain name, and thus said it failed the first prong of UDRP.
Manoff points to three cases, all decided in 2003 or earlier, in which panelists considered the date of registration in the first prong. In the instant case he writes:
Paragraph 4(a)(i) of the Policy requires Complainant to show that Respondent’s domain name is identical or confusingly similar to Complainant’s marks. This provision necessarily implies that Complainants’ rights predate the registration of Registrant’s domain names.
Necessarily implies? Is that true? Let’s ask Manoff himself…
I looked up other cases Manoff decided and this decision in the first prong 4(a)(i) contradicts others he has decided.
For example, in 2011 he presided over a case for MonkeySays.com. He denied the complaint, but in the first prong of UDRP he found in favor of the complainant despite the mark being registered after the domain was registered. In fact, he wrote:
As regards Respondent allegations about the date of the monkeysays.com registration, which predates Complainant’s alleged rights in the mark, the Panel finds that this argument is not applicable under Policy ¶ 4(a)(i), and it will be presented under Policy ¶ 4(a)(iii)
Section 4(a)(iii) is the one about bad faith registration.
So in 2011 he said date doesn’t matter for the first prong, only the third. In 2014 he decided that it is a necessity for proving that the domain is identical or confusingly similar to a mark in which the complainant has rights.
In an earlier 2009 case involving imaginit.com, the domain registration date preceded the complainant’s rights by many years. Still, Manoff found that the complainant met the first prong of UDRP. He didn’t address the date issue until later in his decision.
In 2008 he presided over a case for iBoxDollars.com. In the first section he wrote:
The iboxdollars.com domain name was registered on June 3, 2005, which is prior to the registration date of the Complainant’s trademark. However, as stated in Digital Vision, Ltd v. Advanced Chemill Systems, D2001-0827 (WIPO Sept. 23, 2001) and other cases, Paragraph 4(a)(i) of the Policy does not require that the trademark be registered prior to the domain name. The fact that the disputed domain name predates Complainant’s trademark registration may only be relevant to the assessment of bad faith pursuant to Paragraph 4(a)(iii), which is considered below.
Only relevant in section iii? Not relevant in section i, like the case he just decided?
So which is it, Mr. Manoff? Can the date be considered in the “identical of confusingly similar” section or just the “registered and used in bad faith”?
All of these cases were handled through National Arbitration Forum (NAF). NAF hires interns to provide suggested decisions/language for UDRP panelists, which the panelist can merely cut and paste into his or her official decision.
That may explain why Manoff contradicts himself. He may not have actually written what was published.
Arbitrator decides that the case was so weak that the complainant just didn’t know any better.
In March I wrote about how Life is Now, Inc., which promotes business coach David Neagle, had filed a UDRP against JustBelieve.com.
Domain owner Greg Ricks has successfully defended the ridiculous UDRP.
The primary determining factor was that Ricks owned the domain name before the complainant started using the term “Just Believe”. That makes it impossible to prove that the domain name was registered and used in bad faith.
Despite finding in Ricks’ favor, Arbitrator Mark McCormick failed to find Life is Now guilty of reverse domain name hijacking. He used what I call the “idiot defense” to let the complainant off the hook: the complainant just didn’t understand the policy, so it’s not their fault:
Because Complainant’s own evidence contains evidence of Respondent’s prior right in the JUST BELIEVE mark, Complainant may simply have been unaware of the significance of that circumstance. Complainant made no effort to conceal it, and the record contains no evidence of harassment or similar conduct by Complainant.
I wouldn’t have let them off the hook so easily. After all, the complainant was represented by counsel (Stephen J. Thomas of Thomas Business Law Group, P.C.). Despite this, the case was basically phoned in. According to the arbitrator himself, the complaint didn’t even make a case that the domain owner lacked rights or legitimate interests in the domain.
Yet Ricks had to take the time to defend himself.
Company effectively admits its original complaint was destined to fail when it makes supplemental filing.
Inbay Limited of the United Kingdom has been found guilty of reverse domain name hijacking in a UDRP for Inbay.com.
The three person panel found that Inbay should have known its complaint would fail from the outset. Perhaps more importantly, it should have known it would fail after receiving the domain owner’s response — yet it decided to file a supplemental filing anyway.
That supplemental filing gave me a chuckle.
Inbay.com was registered in 1998 and Inbay Limited thought the current registrant was the original one. If this were the case then Inbay.com was registered well before Inbay became a company.
Yet in the response, the registrant noted that it didn’t actually get the name until 2007. This opened up the door for Inbay Limited to argue that it was related to some predecessor companies that were formed before the current registrant picked up Inbay.com.
So the company filed a supplemental filing discussing these predecessor companies.
In order to make a supplemental filing you are supposed to show that new information has come to light that you couldn’t possibly have known when making the original filing. Here’s how Inbay Limited justified the new filing:
The stated basis for the introduction and requested admission of the Supplemental Filing was that, as the Respondent had disclosed that its date of registration of the Domain Name was in 2007, not 1998 (as alleged in the Complaint), evidence of the common law rights in INBAY held by the Complainant’s predecessors and allegedly transferred to the Complainant was relevant.
In other words, Inbay knew its original filing was destined to fail, but now it felt like it had something to go on.
Add Inbay Limited to the reverse domain name hijacking list, and another win to domain attorney Zac Muscovitch’s tally.