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Two New Cases Show What’s Wrong with UDRP

Two cases show why we need UDRP reform.

National Arbitration Forum has handed down two recent domain name decisions that show what’s wrong with UDRP.

This isn’t an attack on National Arbitration Forum, as its panelists got both of these cases right. In both cases they found that the registrant had rights or legitimate interests in the domain names and that they weren’t registered in bad faith.

What’s wrong about these cases is that the respondents even had to take the time (or money) to respond. Both cases were frivolous because the domain names were registered prior to the complainants getting any sort of trademark rights in the term.

Take a look at the decision for RapidInsight.com. In this case the respondent registered the domain name in 2000 and even formed an LLC by the name Rapid Insight, LLC. Then the complainant formed a company later and settled on the domain name RapidInsightInc.com.

Of course the domain without Inc.com is better. So, ten years hence, the complainant filed his case.

The other case is for eCotton.net. The respondent registered this domain name back in 1999 and even created a web site at the address. In 2008 the complainant filed a design mark for eCotton, and followed that up with what is now a pending registration for the word mark eCotton in 2010. He claimed first use in commerce in 2000 (which is an awfully long time to wait to file for a trademark). But even if the complainant first used the eCotton mark in commerce in 2000, it was still after the domain name was registered by the respondent. That means it was impossible that it was registered in bad faith.

UDRP needs reforming. There need to be some changes to protect both complainants and respondents. One of my suggestions is to have an automatic check that throws out any case where a complainant does not claim it had rights in the mark prior to the respondent registering the domain name. This disproves bad faith registration and merely harasses the respondent who must take the time (and perhaps money) to respond.

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  1. Einstein says

    Meanwhile they need to be shamed with “sucks” and “thieves” sites, win or lose. Put all the documents online, full names and everything.

  2. Deke says

    If the NAF and WIPO want to look the other way while the UDRP panelists conduct themselves in a manner that is simply a gross negligence of their UDRP duties, just so that the NAF can get more filing fees, then we all have to come together, file suits, and reform or dismantle the UDRP and the NAF/WIPO, and start anew.

    We need a Domainer Escrow, whereby an extra dollar or so is added to every auction on SnapNames, NameJet, GoDaddy Auctions, BoxCar, BargainDomains, etc…. as a fund to protect domain owner rights.

    It really would not be that hard to get some folks on board, would it?

  3. mansour says

    Don’t forget that the WIPO organization, with the Case Managers and the Panelists they choose, are one big family. And before the Case Manager assigns the case to the panelist, he knows exactly what the outcome will be regarding the domain name. Some of those panelists make in excess of $100,000 a year, and many panelists decline the appointment if it is against the rich and powerful, since they do not want to lose an important customer by making a decision against them.
    ICANN has no interest in helping those who do not have a voice or they do not fear.

    The only way to make it fair for everyone is for ICANN to add a new provision whereby if the respondent wins, the complainant should pay his attorney fees and $1,000 penalty, and also the respondent should have the right to have a third panelist, paid for by the complainant for his own defense.

  4. Landon White says

    Yes,

    It should be a “requirement” that…

    ‘obvious frivolous claims

    shall be dismissed as …
    not being in compliance with the,
    basic rules and guidelines.

    The question now, as Deke, Mansour and Andrew mention…
    is how does one can initiate this
    reform beyond just being observational.

    (also, a monetary penalty should also apply of course without saying)

  5. Joey Starkey says

    “We need a Domainer Escrow, whereby an extra dollar or so is added to every auction on SnapNames, NameJet, GoDaddy Auctions, BoxCar, BargainDomains, etc…. as a fund to protect domain owner rights.”

    Im in!

  6. nancy says

    I registered a domain 6 years before a similar term (possessive) was trademarked. They did, as it turns out, have a biz by that possessive name prior to my registering the singular domain, but had registered what I consider an inferior domain 5 years before I registered mine. I had truly never heard of their business, and did not register in bad faith – only really found out about them when I decided I would sell this domain name. I’ll probably get it taken away from me.
    I’d contribute to that fund! great idea

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