A recent UDRP decision begs the question, do big companies get the benefit of doubt in UDRP?
Most UDRP arbitration filings are against small time domain owners. So a recent case caught my eye because the respondent was a major media company, Scripps Networks. Scripps networks owns HGTV, Food Network, and DIY network among others.
The case was brought by Automotive Networks Corporation over the domain names WheelsTV.com and MyWheelsTV.com. Scripps won because the panelist found that Automative Networks didn’t have trademarks for the terms prior to Scripps’ registration of the domain names in 1998-1999.
That makes sense, but something caught my eye. The panelist determined that Automotive Networks should lose the case because it didn’t fulfill part one of the UDRP: “the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights”
Correct me if I’m wrong, but wouldn’t most panels find in favor of the complainant for the first requirement if they have a trademark in the terms regardless of when the trademark was obtained? I’ve read many cases similar to this one where the first requirement of the UDRP would be considered fulfilled, but then the complainant would lose the third requirement that “the domain name has been registered and is being used in bad faith” since it pre-dated the trademark.
The panelist decided that the first requirement wasn’t fulfilled and didn’t consider the second and third requirements.
I have a feeling that if the case were against a domainer instead of a big company there would have been a lot more srutiny and perhaps the first requirement would have been met. The domainer would have had to win by proving in the third requirement that he or she registered the domain before there was a trademark.
I also found it interesting to see a big company make allegations against the complainant that it was trying to essentially steal property: “[Complainant] knowingly chose to adopt a mark without what it now claims would be key assets. In short, Complainant is attempting to take by force that which was not available to it when it selected its mark.”
Big companies as complainants seem to miss this point a lot.
If the first requirement had been met, I suspect the panel would have railed against a domainer under requirement three because Scripps offered to sell the domain name to Automotive Networks.
What do you think?