Dissenting arbitrator says many domain arbitration panels are missing the point.
A recent WIPO domain name dispute for RuggedSwitch.com was found in favor of the complainant (read case). But one of the three arbitrators on the case –Diane Cabell — dissented, and her dissent puts into words the frustrations many people have about how UDRP cases are being handled:
The Complaint should fail under Section 4(c)(i) because the Respondent was using the Domain Name to offer bona fide goods and services prior to notice of the complaint. Complainant’s remedy is in court, not here.
This is a dispute between two competitors from different countries. The term “rugged switchâ€ is a descriptive term used in their industry. Respondent registered the Domain Name for the purpose of using the descriptive term to describe the goods it was selling. That use is a legitimate interest. At the time the Domain Name was registered, Complainant held one design mark registration in Canada and, according to its US mark registration, had begun using the term as a mark in the US a few months earlier but it is not clear from the record that it had perfected any rights nor had it yet applied for a US registration. Design marks are distinguishable from text marks. Design mark rights exist only in combination with the design. A domain name contains no design elements. At that point in time, it would seem that Respondent violated no trademark rights when it registered the Domain Name.
Moreover, Complainant’s later US mark applications were rejected as descriptive for switches. Complainant amended its application to eliminate the class of goods involving switches and was subsequently issued a registration. This again, reinforces the lack of any mark rights sufficient to prevent the use of the term as intended by the Respondent.
Before the UDRP was developed, the domain dispute policy applicable to “.comâ€ domains gave sole and exclusive right to a domain name to the owners of trademarks, regardless of the type of mark, its jurisdiction or of any competing rights that a domain registrant might have (local rights to use, design versus text, common law mark rights, reseller, etc.). The UDRP was designed to address that inequity and to allow panelists to frame decisions on the equities in each case including recognition of local rights and privileges. It was designed to address the fairly limited situation of cybersquatting in which a knowing registrant specifically targeted a known mark owner in an attempt to extract value directly from that owner’s mark.
Today, many panels will find proof of all three of the Policy’s elements simply from the existence of a mark of any kind with arguments that any mark is by definition identical or confusingly similar, that any use by any party other than a mark owner can only be illegitimate, and that bad faith necessarily exists if there is no legitimate interest.
That takes us back to the beginning, which I find disheartening.
If you track UDRP cases, it’s worth noting that the lead arbitrator on this panel was Matthew S. Harris. He’s been involved in some other questionable cases lately, including aubert.com (which was owned by Tucows and also had a dissenting opinion) and unofficialblackberrystore.com.