Case sheds light on Pool.com lawsuit against former registrar partner.
A National Arbitration Forum has awarded the domain name Dingbats.com to the complainant in a case against a Pool.com entity. What makes this case interesting is not that Dingbats is a generic term (don’t make me start writing in dingbats!), nor that the complainant bought the rights to a trademark for Dingbats for watches just recently, nor that the domain was originally owned by the previous trademark holder who let it expire over five years ago.
OK, so those are all interesting. But what’s more interesting is how expired domain name service Pool.com came to own the domain name. In its response, “Pool.com In Trust” explains that it was awarded the domain name in a lawsuit against one of its former domain registrar partners.
According to Pool, it registered the Dingbats.com domain name on behalf of a customer in 2004 and placed the domain with a partner registrar, Best Registration Services. Pool writes that the registrar originally put the domain in its customer’s name, but then stole the domain name back. Pool was forced to give a refund to the customer (along with other customers who were affected). Pool sued Best Registration Services, and a court awarded Pool a collection of domain names that were stolen by the registrar after Pool.com won them for its customers.
Crazy, huh? Almost as crazy has awarding this domain name to the complainant.
SamLevine says
Nat Arb Forum is a criminal organization. Why do they keep appointing panelists who are famous for asinine decisions?
jorge says
Because of who is “paying” to file.
Domain Investor says
Quote –
“Pool writes that the registrar originally put the domain in its customer’s name, but then stole the domain name back.”
Pot calling the kettle black.
Pool would like to re-auction and re-auction the same domains, year after year.
Jim Davies says
Did I miss it, or does the panel totally fail to consider in its reasoning the question of whether the respondent acquired rights by way of being granted the domain under a court order?
It also seems to fail to address the issue of the domain being generic and so the facts being indicative of it not being a bad faith registration.
Andrew Allemann says
@ Jim Davies – I don’t think you missed anything.
Jim Davies says
@AA Thanks for confirming that!
It means that I think the expert missed a number of important issues he should have dealt with in order to provide sufficient reasoning for his decision. The decision sets out how the points had been pleaded. The list of rights in 4(c) is not exclusive and merely dealing with those that appear on the list in the policy is not enough when other rights have been claimed. To deal with the matter properly, I think the panellist was obliged to address the rights claimed as a result of the acquisition for value of the domain and the court order relating to it.
Likewise, the panellist should have explained how he came to prefer the view that the domain was not descriptive/generic and so he was entitled to reject the registrant’s argument that they valued it and registered/sold it for that reason. There are a few meanings given on Wikipedia – none of them relate to a brand of watch.
Whatever one thinks of services like pool.com, this is a very disturbing decision in my view. In fact, one might be tempted to say the panellist was being a bit of a dingbat! 😉
Paul Keating says
Jim,
Take a look at the reasoning used in both Legitimate Interest and Bad Faith. The panelist said the domain was offered to an undisclosed third party for sale. That was not even alleged in the complaint. If you want some interesting reading read the cases this “panelist” actually quotes. He not only takes the language out of context he down-right makes it up.
The UDRP is intended to deal with registrations that target the trademark holder. How can that be said to exist here given the nature in which the domain was acquired.
There was no Canadian tm even applied for when the litigation to recovery the stolen domains was undertaken. Respondent only obtained control over the domain in June 2009 due to issues concerning the bad registrar being de-accredited and enforcing a foreign judgment in the US at the registrar where this domain finally ended up. The C&D was received in July and the complainant’s unsolicited offers were rejected. The non-use is bs. The domain was put into PPC and there was not a single link even remotely dealing with the complainant’s products (sunglasses).
If I had my guess this decision was written by a dingbat inside of NAF and given to the panelist who simply signed it. Given the nature of the “citations” to authority, I have my doubts that the panelist read the proposed decision or the cases being cited.
Steve M says
Great additional points, Jim.
Pool’d win this in a US court.
BidNo says
This panelist’s decision smells so badly you have to suspect money changed hands (i.e. bribery). Let’s hope Pool takes to federal court.
John Berryhill says
Who made the call to go with a single member panel on that one?
The “legitimate interests” section is sort of funny. “Complainant contends…”, “Complainant contends…”; it’s as if the Respondent wasn’t there.