Another win but panel makes an error.
Tucows has successfully defended another one of the domains in the surname portfolio it acquired in 2006.
Marden Group B.V. filed the case over the domain name Marden.com. According to the complaint, Marden wasn’t even founded until 2008 (or at least didn’t file for a trademark until then), some 12 years after Marden.com was registered.
Among Marden’s somewhat incredible claims, as written in the panel decision:
As surnames are often business names and trademarks, a large part of the domain name portfolio acquired by Tucows Inc in 2006 from Mailbank are trademarks belonging to third parties. Such acquisition and registration of the domain names consisting of surnames must therefore constitute registration and use in bad faith.
The Personal Name Service generates revenue in excess of the Respondent’s out of pocket costs for registration of a domain name. As the domain names were registered or acquired for the purpose of selling or renting, or otherwise transferring to the owner of the trademark or service mark (usually the complainant) or to a competitor of that complainant, for valuable consideration in excess of the Respondent’s out of pocket costs directly related to the domain names, such use amounts to bad faith.
So if you own a domain name that makes more than $10 a year then you’re using it in bad faith. Hmm.
Although the panel found in favor of Tucows, I believe it made an error when determining when the domain was registered for UDRP purposes.
The panel determined that the relevant date of registration was 2006 when Tucows bought Mailbank, which had registered the domain in 1996. The panel referred to Paragraph 3.7 of the WIPO Overview 2.0, which it says “makes it clear that the transfer of a domain name to a third party does amount to a new registration.”
But the paragraph notes that:
Panels have tended to the view that formal changes in registration data are not necessarily deemed to constitute a new registration where evidence clearly establishes an unbroken chain of underlying ownership by a single entity or within a genuine conglomerate, and it is clear that any change in WhoIs registrant data is not being made to conceal an underlying owner’s identity for the purpose of frustrating assessment of liability in relation to registration or use of the domain name.
When a company acquires another company rather than just the domain name from another company, this should not be considered a new registration. By the panel’s logic, when Google acquires Zagat, all of Zagat’s domains would be registered in 2011. If Google were to buy one domain from Zagat then I understand making the registration date 2011. But when it’s an entire company that’s different.