Panel refuses to hear case due to lawsuit.
Tucows (AMEX: TCX) appears to be joining a chorus of domain name owners who are bypassing UDRP and filing lawsuits in response to domain disputes.
In a recent case DNA (Housemarks) Limited, owner of the Dunlop brand famous for automotive tires, filed for arbitration at World Intellectual Property Organization (WIPO) to get the domain name Dunlop.com. Dunlop.com is part of OpenSRS Personal Names Service, which uses thousands of personal last names to offer customized e-mail addresses. Tucows acquired these domain names when it acquired NetIdentity in 2006.
After Tucows filed a lawsuit in Ontario Court in order to keep the domain name, it informed WIPO and requested the current case be suspended. DNA argued the case should go forward, but the panelist decided this would be meaningless as its decision wouldn’t be implemented and the matter deferred to the courts.
Tucows’ NetIdentity domains have landing pages that describe the e-mail service but also include pay-per-click links. On the Dunlop.com page a message has replaced the pay-per-click links:
…We passionately believe that our use of each of our shared domains is a lawful and non-infringing use. The domain names that make up our Personal Names Service are critical business assets, and we will and do defend them when forced to do so.
Of course, we greatly prefer communication over litigation, so if you feel that you have a genuine trademark or other legal concern related to our use of one of these shared domain names, please write to (removed email) and we will be more than happy to assist you.
Please note that we have a long and successful history of defending our legitimate use of our 40,000+ shared domain names and the many clients who use these domains for their email and web address. This is the same portfolio of domain names that was reviewed and judged to be a non-infringing use of common surnames in Avery Dennison Corp. v. Sumpton, 189 F.3d 868 (9th Cir. 1999), and we continue to win UDRP claims that are filed against our shared domains.