Panelist respects the limited scope of UDRP.
The UDRP, a quick and inexpensive dispute resolution policy for cybersquatting, is limited in scope. But over time some panelists have tried to make it more of a court, bending the lines to find in favor of complainants even when it’s not a clear-cut case of cybersquatting.
Which is why I find William R. Towns’ decision in a recent case so refreshing.
Ticket Software LLC, which operates a site at TicketNetwork.com, filed a complaint to get TicketSNetwork.com.
I’ll let these lines from Towns’ decision in favor of the respondent speak for themselves:
…where a respondent registers a domain name consisting of “dictionary†terms because the respondent has a good faith belief that the domain name’s value derives from its generic or descriptive qualities, the use of the domain name consistent with such good faith belief may establish a legitimate interest…But the domain name must have been registered because of, and any use consistent with, its attraction as a dictionary word or descriptive term, and not because of its value as a trademark
…In addition, the TICKETNETWORK mark when used with the Complainant’s online ticket exchange service does not have a high degree of inherent distinctiveness, and to some degree might be considered descriptive in relation to that business. The Policy was not intended to permit a party who elects to register or use a common term or terms as a trademark to bar others from using the common term in a domain name, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the trademark owner.
…And while the Respondent is using the disputed domain name to attract Internet users to a website with advertising links to online ticket providers, this is not inconsistent with the use of the disputed domain name in a descriptive sense
…it is paramount that panels decide cases based on the very limited scope of the Policy. Id. The Policy provides a remedy only in cases where the complainant proves that the domain name “has been registered and is being used in bad faithâ€.
Thank you, Mr. Towns.
Yes, we love the decision. Hope there are more like him that see generic domains in the same light.
Awesome! Very level-headed, and correct.
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Bloody brilliant.
That finally set the precedent.
I do love it. However, I expect a ridiculous argument which goes directly against that from another panelist soon enough since these guys don’t actually follow any sort of precedent.
I am going to print it and frame it.
Sound reasoning.
Its about time a panel worked out of real reasoning and not an automatic contempt for domainers.
Someone mentioned that this sets precedent, but have any of these cases been won based on that?
The scary thing is that nothing surprises me anymore when reading about these udrp cases, as they are always won or lost by what seems like nothing more than a coin toss.
Overall a fair and well balanced decision that applies the UDRP as it is written.
One part of the decision bothers me however. It is the view that a domain owner must be ignorant of a trademark use in order to register a generic domain in good faith.
As Towns writes:
“at least in circumstances indicating that the respondent was not aware or reasonably should not have been aware of the complainant’s rights in the mark”
This assumes a trademark owner has presumptive rights to any generic domain. Does a generic domain become off limits for registration if the prospective domain owner is aware that a trademark exists on the word on which the domain is based?
For example, let’s assume I want to buy the domain splash.com or thrive.com or splendid.com. I do a trademark search and I find that several companies have trademarks on these domains.
I go ahead and buy these domains, but I am careful not to use the domains in a way that infringes on the existing trademarks.
Does the fact that I am aware of trademarked uses make my purchase a bad faith purchase?
The answer should be “No” because it is not the awareness of the existence of a trademark that should matter, but whether my use trades off the goodwill of a trademark owner.
Towns articulates this well:
“Thus, where a respondent registers a domain name consisting of “dictionary” terms because the respondent has a good faith belief that the domain name’s value derives from its generic or descriptive qualities, the use of the domain name consistent with such good faith belief may establish a legitimate interest.”
This is sufficient. It is unnecessary to add the comment in the decision about awareness of the mark.
It may be that Towns merely meant that there can’t be bad faith if the domain owner isn’t even aware of the mark.
The analysis would become more complex if it was established that the domain owner was aware of the trademark use before acquiring the domain.
Nevertheless, domainers could be happier with Towns’ decision if he didn’t mimic the language in many other decisions that suggests that awareness or “constructive notice” of a trademark puts a domain off-limits and if a domainer goes forward with registering the domain with knowledge of the trademark that this could constitute bad faith.
I think if the intention was to be fraudulent it should not be permitted under any circumstance. If the person is operating in the free market however I guess it is OK as long as it is not the intent to misrepresent or be fraudulent to the web searcher. I have a lot of respect for Ticketnetwork.
What you failed to mention was the real reason the complainant lost, the fact that the domain was registered a full 3 years before the TM.
Don’t get me wrong, I like the reasoning on the other part but you have to realize that this case would have been completely different were it not for this fact.
Finally, a sound judgement. We still are not there, there are still judges that award domains away from their rightful owners for “holding”….
Well if they had the domain for 3 years prior I understand but it is a shame when someone gets a domain for the soul purpose of scamming the original marketing company.
I do not know all the facts but there is plenty of business out there for all of us