M/s. Core Diagnostics filed UDRP against domain name registered a decade before it was founded.
World Intellectual Property Organization panelist Richard Hill has found M/s. Core Diagnostics, owner of CoreDiagnostics.in, guilty of attempting reverse domain name hijacking.
The Indian company started its business in 2011 and registered its trademarks in 2012.
Still, it filed a UDRP against the owner of corediagnostics.com, who registered the domain name in 2001. The registrant has been using the domain name to promote its medical devises.
In other words, this was a dead-on-arrival UDRP filing. Here’s how Hill explains his decision on RDNH:
The Respondent notes that his registration of the disputed domain name far predates Complainant’s claim of rights in the CORE DIAGNOSTICS mark. The Complainant knew this because it produced the WhoIs record for the disputed domain name as an attachment to its Complaint. Thus the Complainant should have known that it was unable to prove that the Respondent registered and is using the disputed domain name in bad faith.
It’s cases like this that remind me of a simple plan to reduce frivolous UDRP cases: the complainant must check a box verifying that its rights predate the domain registration date.
“The Complainant knew this because it produced the WhoIs record for the disputed domain name as an attachment to its Complaint. Thus the Complainant should have known that it was unable to prove that the Respondent registered and is using the disputed domain name in bad faith. ”
ROFL , some people .
Did they even have a case to begin? I checked the USPTO database but did not find any TM registered under “Core Diagnostics”. The closest were CORETEK DIAGNOSTICS and CORETEK DIAGNOSTICS, INC, both dead. Any idea, Andrew?
It’s an Indian company, so I wouldn’t expect them to have US trademark.
Andrew, since .com is under the US jurisdiction, I thought USPTO is the source to use to determine whether any TM infringement is involved. Otherwise, how can you be sure if a domain name has any TM infringement? Is there a global TM database which you can use to determine the TM infringement issue?
Kassey, under UDRP it is not the USPTO that ultimately governs what is/is not a trademark. A trademark anywhere in the world, and even an unregistered one, can be used.
The panel will take into consideration if the domain owner should have been aware of it when s/he registered the domain name. For example, someone in Korea may not have been aware of a U.S. trademark on a term. This requires the judgment of the panel. If the infringed brand is Coca-Cola, it will be hard to prove you weren’t aware of the brand. If it’s some generic sounding brand, “I had no way of knowing” is a lot more compelling.
Thanks for the detailed explanation, Andrew. Then, what do all these domain gurus mean when they say “Don’t buy TM domains.” when there’s no comprehensive way of checking all TMs in the world?
You’ll never know for sure if there’s a TM on something. But you can stick to domains that seem generic in nature, i.e. descriptive or general things. You can also do some cursory checks for trademarks if something seems non-generic.
Good point. Thanks Andrew. Always enjoy reading your site almost everyday. So much insight! Keep up the good work.
Thanks