Case represents a big victory against radical UDRP ideology.
A World Intellectual Property Forum panel handed down a UDRP decision on March 1 that could reverberate for a while and finally put to rest some recent shenanigans with UDRP.
If you aren’t a UDRP junkie you may not appreciate it. But if you are, read on…
The case pitted Xbridge Limited v. Marchex Sales, Inc. over the domain name simplybusiness.com.
Xbridge operates business insurance company Simply Business, which uses the URL SimplyBusiness.co.uk. It started using the name Simply Business some time in 2005.
Marchex acquired the domain name with Yun Ye’s portfolio at the beginning of 2005. It monetized the domain name with pay-per-click ads including some for insurance.
This isn’t merely a case of Xbridge v Marchex. The lawyers and panelists involved add to the intrigue.
Xbridge was represented by Waterfront Solicitors. One of Waterfront’s Partners is Matthew Harris, who handles UDRP cases for WIPO. Marchex was represented by John Berryhill.
The three panelists: John Swinson, Andrew Christie, and Frederick Abbott.
I’ve written a lot about Andrew Christie. His main claim to fame is that he changes up the UDRP requirement that a domain name be “registered and used” in bad faith to “registered or used” in bad faith. In other words, if you register a domain before a trademark is established you can still lose a UDRP.
Given Harris’ deep knowledge of the UDRP process, his firm advanced Christie’s idology:
On a proper reading of the Policy, all the Complainant need show is that the disputed domain name has been used in bad faith and there is no need to demonstrate registration of the disputed domain name in bad faith (see e.g., City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE, WIPO Case No. D2009 0643).
This was important because the domain name was registered before Xbridge got its trademark. Xbridge had to convince the panel to take Andrew Christie’s view.
All three panelists agreed the domain name was confusingly similar to Xbridge’s mark and that Marchex has no rights or legitimate interests in the domain name. They also agreed that Marchex was recently using the domain in bad faith given its links to insurance advertisers.
But given that the name was registered prior to Simply Business becoming a mark, 99.9% of panelists would say it wasn’t registered in bad faith.
This probably set up quite a fight within the panel. It took them a long time to decide. By rule the decision was due on February 3, so the decision was several weeks late.
Swinson and Abbott agreed that the domain wasn’t registered in bad faith. Christie of course dissented.
But this case could be a big one when it comes to arguing against Christie’s ideology (called the “Octogen Trio” for a series of cases where this methodology was emphasized). Swinson and Abbott dedicated nearly five pages to painstakingly tearing apart the Octogen argument. They even provide six reasons why a certain aspect of this ideology is wrong.
You can read their dissection of Octogen here (pdf).
Do you find it somewhat troubling that a UDRP panelist (or a firm where one works) also files UDRP cases? I do. I know Harris isn’t the only panelist who’s been in both roles. But I would think there could be some conflicts here. Could this loss affect how a lawyer/panelist deals with one of the other panelists or defending lawyers in a later case?