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SmoothMove.com: Worst UDRP Decision Ever?

SmoothMove.com decision may not be worst, but it should be high on the list.

My blood is boiling. I think I just read one of the worst UDRP arbitration decisions ever.

Michael Berkens got screwed, and I hope he takes action.

In this case, Berkens registered the domain name SmoothMove.com in 2003 and has parked it since then. All of the links have been generic in nature.

Then along came Traditional Medicinals Inc, an herbal medicine company that happens to have a trademark to “Smooth Move”. This isn’t the only generic domain name the company tried to grab; it just lost a case for MothersMilk.com.

Berkens’ attorney, Ari Goldberger, argued a number of reasons why this was not a case of cybersquatting. But the panel picked up on one argument: that in the course mass registration of generic dictionary domain names, you’ll also register some generic terms that are also trademarks.

Goldberger’s argument is correct. If you registered Apple.com back in the day, you would have registered a generic term that a fair number of companies also have trademarks to for various uses (including the computer giant). If you then parked Apple.com and showed pay-per-click links about the fruit, you would not be violating the trademark.

That’s essentially what happened here. But the panel seemed to frown on this business model:

Whether or not Respondent knew for sure at the time of registration that the particular domain name now at-issue was the trademark of another seems insignificant. There is no dispute that Respondent knew that at least some trademarks were being registered as a direct result of its purely self-serving policy…

The Panel notes that this is not a case where an entity inadvertently or even negligently registers the mark of another for its own use to support its own business or vocation without any hint that the domain name contains a trademark. Rather it is a situation where the business method of a sophisticated domain name trafficker consciously and to its own benefit disregards with impunity the admitted certainty that it is registering another’s trademark and is happily disposed to trading in such trademarked domain name nonetheless.

Excuse me, but whether or not the respondent knew about the trademark is of utmost importance. Perhaps it wasn’t argued well, but the panel seems to not understand that Goldberger’s argument was that generic terms can also be part of trademarks and used legitimately. It’s not like he was registering CocaCola.com. That’s not generic.

In fact, there are three other companies with some sort of trademark for “smooth move”.

I could understand the panel’s decision if the parked page had ads for herbal medicine, but this case is bunk.

Berkens, I hope you sue.

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  1. Ari Goldberger

    Andrew-

    My client and I agree this a horrible decision not supported by the facts or the law.

    As much as my client would like to speak out about this horrendous decision, I have advised against it at this time. Instead, I am making the following brief comments:

    We agree with you that this may well be one of the worst UDRP decisions ever.

    It is wholly unsupported by the factual record and well-established precedent.

    The arguments set forth in our response and supplemental filings made it patently clear that my client registered smoothmove.com because it was a descriptive term related to a moving service, and that the term is subject to substantial third party use.

    Moreover the term smooth move is certainly generic and is a commonly used term in the English language.

    There was no evidence at all that a single link ever appeared on the web site that related to the complainant’s goods and services. To the contrary the evidence was that only moving-related and generic links were displayed.

    The panel had before them evidence of the archive.org pages from my client’s web site showing years of good faith non-infringning use but completely neglected this.

    There was no evidence that my client registered a single domain name based on it being a trademark.

    As a matter of fact, my client has never lost a UDRP or had a domain taken from him in over 12 years in business, prior to this decision.

    The only evidence was that my client registered domains incorporating common words and descriptive terms. The panel jumped on one statement I made that it should be no surprise that domain names containing popular descriptive terms would be the subject of a trademark, as businesses like to adopt common terms in trademarks. But this coincidence does not mean the domain name was registered because it was a trademark, but rather because it is a valuable descriptive term. There was no evidence supporting that the domain name was registered based on it being a trademark. We noted this posiition is supported by UDRP precedent. The Panel simply jumped on the following statement in our Additional Submission, mischaracterized it, and based the entire decision on it:

    “As noted in the Response, Respondent registers common word and descriptive term domain names. It should be no surprise that many of these popular common terms would be the subject of trademarks but this is because the words are popular, not because Respondent has sought to register domain names incorporating trademarks. There is no evidence supporting such an allegation.”

    That statement was based on the holding in the 3-member panel decision in HP Hood LLC v. hood.com, No. 313566 (NAF Nov. 9, 2004). The Response contained the following quote from the Hood.com case:

    “It would be hard to find a common word that is not part of someone’s mark, hence the policy requires some degree of intended targeting of the mark owner, some level of abuse directed specifically toward that victim. This reflects the UDRP’s respect for the fact that trademark law does not prevent non-trademark uses of such words by people other than the mark owner.”

    The Panel completely ignored the Hood.com case, which has been followed on many occasions. Instead the Panel twisted our reliance on this precedent, turning the reasoning upside down to come up with the following radical conclusion, calling Mike’s registration of common word and descriptive term domains names:

    “the business method of a sophisticated domain name trafficker consciously and to its own benefit disregards with impunity the admitted certainty that it is registering another’s trademark and is happily disposed to trading in such trademarked domain name nonetheless”

    This warped reasoning essentially collapses the UDRP into one question: Is there a trademark? Such a result flies in the face of numerous decisions finding quite to the contrary as was argued in the Response.

    As we continue to digest this decision, we will be refraining from any further public dialogue about the decision, but stay tuned…

  2. domain guy

    well to begin with this is why domain owners should do all their own legal work.berkens has paid thousands of dollars and now has nothing.in response as to filing a federal case this is a big deal and if you loose you have to pay the other sides legal fees thereby now supporting 2 attorneys.and you have to design your response for summary judgement.the burden of responsibilty has now shifted to bergins because of his attorney and the failed
    udrp response. not to mention the udrp adds
    legal goods and services that are not even on the uspto register. this is why you have to eleminate these attorneys and directly punish every one of these trademark holders more than 6 yrs ago in a federal trial a trademark does not guaranty the holder a unamious and complete control of any word symbol and word and design element.and in more than 10 yrs you have not seen one update to trademark law reguarding domains. the uspto just issued a half assed paper on domain names a complete failure. this trademark system is designed to earn huge funds for lawyers and place undue burden on domain holders.

  3. Johnny

    The word “trafficker” stands out. They make him sound like everything he does is illegal. This is similar to when they label domain owners as “serial registrants”…. associating us with killers and child molestors. I’ve seen this bogus terminology attached to us several times now.

    Somebody is biased against domainers on that panel for sure. I say that b/c this decision is so far out in left field that one can’t make dumb decisions like this unless one hates domainers or domain investors, or someone is paying you under the table.

    I’d swear these panelists should be investigated. It’s almost like organized crime taking away our buinesses.

  4. K

    The Respondents argument is understandable but it is also flawed.

    1. Smooth Move was registered two years before and was in use almost 30 years prior to smoothmove.com’s registration by the Respondent.

    Filing Date: October 18, 2000
    Registration Date: December 18, 2001
    Register: PRINCIPAL
    FIRST USE: 1974
    FIRST USE IN COMMERCE: 1976

    It’s true that this is a generic word combination. It is also true that generic terms can earn Secondary meaning through several key factors including long established use. The Complainant has this on their side.

    We always like to argue the fact of a domain being registered before a TM has been established. This case shows us the opposite. The Complainant had established almost 30 years of usage which earned them the opportunity to register under Principal instead of Supplemental and get it.

    It matters not how many companies hold TM’s for the same term. What is important is which one is first in protecting those rights.

    Lawyers will always argue only those facts which benefit their client. No more, no less. They never take an unbiased view unless they are commissioned to do so.

    In this case the Respondents best option is to file in Federal court against the Complainants TM. They would need to argue the other elements which would show Secondary meaning are not supported. The biggest hurdle will be 30 years of usage.

    This was a equitable decision considering all the facts. The panels reasoning though was flawed at best and biased against Ari at worst.

    Both parties better get ready to lay down some real money in Federal court (50-100K). I would say negotiate and settle between the parties.

    • Andrew Allemann

      K – From what I can see, SmoothMove.com doesn’t benefit from any confusion as it doesn’t have any links related to Smooth Move’s products at all.

      I’m sure Berkens will pay for a lawsuit. He doesn’t want his reputation tarnished. As you know, once you lose one of these other complainants jump on those cases.

      • Andrew Allemann

        K – I should clarify why it matters what was on the page. The trademark is likely only for a particular field of use, which wasn’t violated with this parked page.

  5. Lou Mindar

    Very bad decision. I hope Mike continues to fight this. He has a good case and I would hate to see this UDRP decision stand and be used as precedent in future cases.

  6. Taboo

    Although this is terrible news for Mike, we have a time line of unjustly transfers to prove how absurd trademark court is. WIPO means nothing except to support corporate greed, and I believe everything that has happened to domainers in the past years has all been manipulated and skewed to coincide with rich companies and their lawyers. VIVA LA GRATIS INTERNET.

  7. K

    Hi Andrew,

    Confusion is in the name component of the domain itself, not how it was used. The Principal TM was granted before the domain was registered. That is the highest hurdle to overcome. Had the domain been put to use as a noncompeting site/entity the Respondent would have had a more defensible argument.

    Parking has always been considered weak usage across the board. You’re setting yourself up for disaster by leaving any domain of value in that position.

    Once a TM has been granted after the opposition period it’s very difficult to get canceled. This will be an uphill battle for Mr. Berkens. I wish for him the best.

    • Andrew Allemann

      K – The confusion issue by the domain only applies only to the first hurdle of a UDRP (confusingly similar). The content of the site can be applied to the last two hurdles.

  8. C

    Agreed, this is a horrible decision. Parking may be weak usage… but it is FAIR usage and no company has the right to swoop in on that just because they ‘trademarked’ a extremely common phrase.

    Best of like to Mr. Berkens on this not only bad decision, but wrong decision.

    Thanks to Andrew for the article.

  9. K

    Andrew,

    Paid links on a parking page are not considered content. That is diluted reasoning. Usage, yes. Fair use? Against an prior established Principal TM with 30 years of usage. That would be a tough argument. If you can’t overcome that then bad faith falls in line.

    UDRP is not a court of law and holds NO weight within Federal court. This is the next step and the Respondent must be able to show that either the TM was granted improperly and should be canceled or that it has diluted over time.

    • Andrew Allemann

      K – right. What I’m saying is that if the pay-per-click links were related to herbal medicine, then the complainant could say that the domain specifically targeted its trademark.

      One interesting thing to watch on this one…did the complainant choose Berkens’ address or his registrars address as the jurisdiction in case of a lawsuit?

  10. Johnny

    If I had a empty lot in downtown Manhattan and let a hog dog stand owner sell hot dogs there and a newspaper stand sell newspapers, is that not usage?

    I think paid links is usage no matter what anyone or court says. It’s just a bastardization of the situation to allow someone to steal property from rightful owners.

  11. Andrew Allemann

    One interesting thing about MothersMilk.com. The respondent didn’t even respond to the case and won! So it would seem that if Berkens hadn’t made an argument that the panel decided to beat it up about, Berkens would have won. That’s where I see the bias.

  12. Steve M

    If it were only the domain, this would not be worth Mike going to court over.

    But; as already pointed out up comments; if he let’s it stand, it could make such claims easier to win against others of his names.

    As I’m sure Ari and Mike are already discussing, should they decide to take it to court, they might as well include a challenge to their trademark.

    Though that would be a tough argument to win, by threatening their valuable TM, it might in the least bring them to the bargaining table.

    And saying he’s a “domain name trafficker”?

    What is that; like a drug trafficker?

    That’s not only crap…it’s smooth move crap.

  13. ohio civil engineer

    domain guy:

    If I’m not mistaken, the plaintiff can be held responsible for the legal bills of the defense, provided the defense wins and the plaintiff was shown to have filed the claim in bad faith. (I could be wrong)

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