Not so kind.
A World Intellectual Property Organization panelist has ruled that the registrant of DoTheKindThing.com can keep her domain name.
The case was brought by Kind, LLC f/k/a Peaceworks Holding LLC, which sells Kind snacks.
The case is notable for two reasons:
1. Kind’s lawyers, McCarter & English, LLP, made some poor decisions in advancing its case.
2. The UDRP panelist recognized the limits of domain arbitration as opposed to courts.
First, for the legal arguments.
Panelist Robert A. Badgley chastised Kind for its contradictory evidence and arguments.
At first Kind argued that the domain was registered just weeks after it first publicized the slogan “Do The Kind Thing” in December 2009, so the domain registration couldn’t be just a coincidence. But in later supplemental filings (and in trademark filings with the USPTO) it claimed rights to the mark going back to 2008.
Also, most of Kind’s evidence is apparently about the Kind mark, not “Do The Kind Thing”.
It bears noting that Complainant’s mark KIND is not confusingly similar to the Domain Name, and Complainant does not assert that it is. One must distinguish between the older, and apparently stronger, mark KIND and the newer, and apparently weaker, mark DO THE KIND THING. Complainant appears to rely chiefly on its main mark, KIND, to establish the likelihood that Respondent was aware if it, but then Complainant tries to shoehorn into its more recent mark DO THE KIND THING the renown that the mark KIND has achieved. The Panel has taken pains to distinguish between the marks and, having done so, finds on this record little or no factual basis to conclude that Respondent was probably aware of the mark DO THE KIND THING when she registered the Domain Name.
The panelist was also disturbed by an email sent by Kind’s counsel to the respondent after the case was filed:
The Panel is also troubled by Complainant’s repeated allegation to the Center that Respondent has acted in bad faith, in view of Complainant’s e-mail to Respondent on May 24, 2012 (weeks after Complainant initiated this proceeding). In that e-mail, Complainant’s General Counsel stated: “I can only conclude that this all may be a colossal misunderstanding and a waste of time, effort and money.” Despite reaching this conclusion, Complainant pressed ahead with the case and even submitted two additional unsolicited supplemental filings with the Center. If Complainant truly believed that Respondent was acting in bad faith, then there would appear to be little or no scope to conclude that a colossal misunderstanding was afoot. The Panel is also disturbed that Complainant, represented by counsel, provided so much evidence of trademark use after the Domain Name was registered, but provided a mere smattering of such evidence before the Domain Name was registered.
As for the limited scope of UDRP: Badgley admits that there’s no way to confirm the respondent’s story about why she registered the domain. But he points out that, under the limited design of the UDRP, its not his place to speculate.
The Panel finds Respondent’s story about her motives and conduct just plausible enough to overcome the paltry evidence of bad faith put forth by Complainant. Given the streamlined nature of proceedings under the Policy, and the lack of discovery or hearings with cross-examination, the Panel cannot accept Complainant’s allegations as proven. It is conceivable that Respondent’s version of events might not hold up to scrutiny in a court proceeding where further truth-seeking opportunities are available, but such musing does not render this a clear case of cybersquatting under the Policy.