Bank tries to get domain registered years before it gets trademark.
Success Bank, an Iowa bank, should stick to the banking business.
The company failed at arbitration to get the domain name SuccessBank.com from its owner, who registered the domain name in 2003. The bank changed its name to Success Bank only in 2007, at which point it filed a trademark for the term. The trademark was granted in 2008. Success Bank uses the inferior domain SuccessBank.Net.
If you register a domain before another company obtains a trademark, it is impossible for the trademark holder to prove that the domain was “registered and used in bad faith”, as required under UDRP.
In his typical wit, the respondent’s attorney John Berryhill noted to the arbitration panel:
The Complainant’s proposition here is that the Respondent has such powerful psychic ability as to be able to predict, in October 2003, that the Davis County Savings Bank of Iowa would change its name to “Success Bank†in December 2007. The Respondent denies such psychic powers.
The panel found that the domain wasn’t registered and used in bad faith, and that Success Bank didn’t establish a prima facie case that the respondent lacked rights or legitimate interests in the domain name.
For some reason the panel didn’t address the issue of reverse domain name hijacking. But its decision does note that Success Bank’s argument in the case was extreme:
The Complainant relies on the argument that once a complainant shows good title in a mark, the burden shifts to Respondent to defend use and bad faith. Complainant seeks to stretch that argument to the extreme. While Complainant has some rights in the SUCCESS BANK mark, those rights are years junior to the rights of Respondent due to registration of the domain. To hold for Complainant would be to say that one could peruse the lightly used or parked domains, initiate a trademark registration application years after the a disputed domain name was registered and then claim UDRP rights in the domain under the first element of the UDRP.
John Berryhill rocks. Another awesome response.
Outrageous! Where’s the huge reverse hijacking fine???? This system is seriously flawed if the “panel” didn’t find the complainant guilty of reverse hijacking.
With decisions like these where is the warning to other corporate parasites to stay away from frivolous domain hijacking attempts.
It seems like these “panels” are working for corporate bandits that were too slow out of the gate to realize the world was changing and they missed many of the boats they should have been on. It appears they will try and become modern day pirates looking to steal assets from legitimate domain owners.
Hopefully Rod Beckstrom can help correct these abuses in the system rather than make it even easier for these bandits with this new dispute system.
I wonder what Mr. Beckstom’s comments on this case would be??
Steve, the more important thing right now is to make sure the rapid suspension scheme outlined by IRT doesn’t go through in a form similar to what it is now.
John is the best …. not to mention he makes it entertaining. Watching him work his magic is quite an experience. And even better is when he wins the case for you.
Thanks for the hard work on this case for me. Thanks for the win!
Ira
Excellent post Andrew.
This panel’s observation:
To hold for Complainant would be to say that one could peruse the lightly used or parked domains, initiate a trademark registration application years after the a disputed domain name was registered and then claim UDRP rights in the domain under the first element of the UDRP.
.. should be quoted by every respondent in a similar position … facing predatory usage of a later trademark.
Well-deserved win, Ira & John.
Ira; could you share what, if any, price they offered to buy it for prior to their filing … or at least an idea/range?
Steve … thanks. John kicked ass on this.
As to the other questions … I prefer not to go into too many
details at the moment. But when I can if it allows I will be happy to share. I can say that they didn’t offer what the domain was worth to me … and it came with a “or else” threat attached. This was a clear reverse hijacking case
brought by a lawyer that had no clue about domain law.
Where’s the consistency?
Sometimes they find for Reverse Domain Name Hijacking, sometimes they don’t. More often they do not call out the complainant on the RDNH . In most of the cases there is no reason for not finding the Complainant guilty of RDNH.
The UDRP is broken, and the IRT is a total all out war waiting to happen.
@ Johnny – I’ll have a guest article about that topic shortly.
Thanks, Ira.
@Johnny
Unfortunately there’s no so-called requirement for decisions to be consistent with one another. As pointed out elsewhere, declaring RDNH might cause some parties to reconsider “doing business” with NAF or whatever applicable UDRP provider.
I do agree UDRP’s in need of an overhaul, if ever ICANN allows another comment period for that. Times have changed, and certain things need to adjust to those changes.
Well done Ira.. now I won’t feel so bad taking you down on the poker table!!.
My guess is I wouldn’t want to be the executive responsible for all this sitting in the board room when the CEO asks ‘when can we start using the new domain name?’ lol
classic example of a company starting out and only now realising when they brand their ’empire’ they have to consider .com as a part of that process. Its really that simple (and powerful)
Thanks but as much as I would like to take credit .. it was John that deserves the pat on the back. I would have liked to have been a fly on the wall when this guy had to explain the loss to the bank. I still laugh about what the guy labeled me … a :Psychic CyberSquatter.
They are stupid.