Two different UDRP panelists reach the exact same conclusions, yet they differ from most previous decisions.
A pair of cases by one of National Arbitration Forum’s most prolific arbitrators, John Upchurch, show continued inconsistencies in UDRP disputes and some other very odd coincidences.
Upchurch ruled against 123Inkjets.com owner LD Products, Inc for the domain names 123inkjsts.com and 1238nkjets.com. In both cases Upchurch decided that LD Products did not provide sufficient evidence of a common law trademark for 123inkjets.com prior to the respondent registering the domain names.
At the same time, panelist Paul A. Dorf also ruled against LD Products, Inc for the domain name 123inkjetx.com, finding as well that LD Products didn’t provide enough evidence to show common law rights.
Now here’s where things get interesting.
First, LD Products has won many similar cases for typos of 123inkjets.com. In those previous cases it was represented by the same lawyer as the latest cases. Did the lawyer get lazy and submit weaker evidence in these cases rather than just copying what he submitted for previous cases? Perhaps. Without knowing I can’t pin this inconsistency on the current panelists.
But there are two odd things about the most recent cases that are pretty easy to pin on either the panelists for National Arbitration Forum.
For all three of the typos, the panelists determined that LD Products didn’t meet the first element of UDRP, which states that the domain name in question is confusingly similar to a trademark the complainant has rights in.
LD Products certainly has current rights to 123Inkjets.com on the basis of a U.S. trademark. Almost all panelists would rule that element 1 had been met because for this element of UDRP it doesn’t matter if the trademark predates the domain registration.
Instead, panelists use the predate issue as a reason to find that the a domain name wasn’t registered in bad faith, the third element of UDRP. So in these three cases, most panelists would have said that the first element (confusing similarity) was met, but that third element (registration in bad faith) was not.
Even John Upchurch has ruled this way in the past. In a case for regencyfireplace.com, Upchurch ruled that the domain name was confusingly similar to the complainant’s mark even though the domain name was registered before the complainant had rights in the domain name. He then denied the case on the basis of the domain name not being registered in bad faith (element 3) because it was registered prior to the trademark. Ditto for NeverColdCallAgain.com.
That a panelist is consistent with himself is troublesome, but I guess that happens after 500 cases.
Now here’s where things get more interesting.
Do you find it strange that two different panelists found the same exact way on these cases yet both were inconsistent with how most panels have ruled?
Well if you look at each panelists findings on the second and third elements of the policy you’ll understand why. Both panelists declined to consider the second and third elements and cite the same two cases for the reason why. Panelists often decline to consider certain elements of the policy when a case is already decided, but they cite a myriad of cases in their rationale. Here both panelists cited the same exact cases.
I can only draw a few rationale conclusions: the two panelists somehow worked together or the same intern decided these three cases.