Berryhill brings it home in ican.com case.
John Berryhill has successfully defended Digimedia’s domain name ican.com in a UDRP brought by Galaxy Rainbow Limited in Hong Kong.
Berryhill pokes a number of holes in Galaxy Rainbow’s case, but really brings it home in the “registered in bad faith” section. For your reading enjoyment:
…the Respondent registered the domain name in 1998 – ten years prior to the earliest evidence of a trademark registration presented in the Complaint. Accordingly, it is not possible for the domain name to have been registered in bad faith. The use to which the domain name has been put during the last 15 years is discussed in the previous section. The Complaint uses the word “preemptively” to suggest that the Respondent had some sort of responsibility to know and predict future events, and that someone else would want the domain name in a dispute filed nearly fifteen years later.
Are we seriously to believe that an adult of ordinary mental capability can make this accusation and expect to be believed, let alone a legal professional with a duty to exercise competence? The Complainant apparently expects this Panel to believe that the Respondent has psychic abilities to “preemptively” know the future actions of others, and registered this domain name in 1998 from its office in Oklahoma, because the Respondent knew that some unheard-of entity would claim trademark rights in Hong Kong in 2008. This type of nonsense should not be tolerated from grownups, and yet the Respondent has to address exactly this type of abject foolishness on a regular basis.
The Complainant has made the insulting accusation that the Respondent is a cybersquatter on the basis of no rational theory whatsoever. The Complainant, knowing that the UDRP decisions are made public, intends its insult to the Respondent to be a public one. The operative facts here on the point of bad faith registration do not differ at all from other cases involving this Respondent,
which any competent Complainant is able to determine in mere seconds from the UDRP search capabilities provided by UDRP providers, or even from a Google search of “Digimedia domain dispute”. The Respondent respectfully requests to know from this Panel whether or not there is any duty of diligence whatsoever binding upon complainants in these proceedings to do even that much, or any
duty of competence to know the basics of the Policy under which a licensed legal professional engages to practice.
The panel copped out on finding reverse domain name hijacking.
John is known for his sense of humor, such samples of caustic response exist in several UDRP proceedings that he has handled. 😀
Some of these latest domain disputes are getting into stupid desperation, like Qwalify.com / Qualify.com. What will be next??
What does it take for someone to be successfully accused of reverse domain name hijacking? Seriously. This isn’t a rhetorical question. Maybe this was the panel’s way of responding to John’s wonderfully caustic argument.
“What does it take for someone to be successfully accused of reverse domain name hijacking?”
A good camera, a long lens, and a discreet view of some of the streets around the Novotel in Geneva.
The amazing part of that decision is not the denial of RDNH – it’s hard to get people to say bad things about their own customers. I think it’s funnier when they deny RDNH in the face of some of the absolutely wacky things some complainants allege or, like Proctor & Gamble – outright lie about.
I always like the justification of “The Complainant proceeded on a misunderstanding of the Policy, and not bad faith”. It’s the UDRP “mental capacity defense” to RNDH – “Well, that guy was just too stupid to be held responsible for it.” If that standard was applied to respondents in UDRP proceedings, practically nobody would ever lose, and I can vouch for a lot of them. (heh, I’ll get a lot of love for that one)
No, the thing that should really raise your eyebrows in the decision is that the domain name had been licensed by the Respondent for several years to an organization that had been using it. After the license expired, the domain reverted back to PPC use.
The crazy part is the panel finding no legitimate interest in an intangible economic asset which had accrued goodwill on the basis of a licensing arrangement, and no legitimate interest in that goodwill which reverted to the licensor.
Oh, I’m sorry, that would be CRAZY if we were talking about, oh, trademarks.
I’m surprised that hotels ever win UDRPs. After all, they don’t have any legitimate interests in the bedrooms they rent out to other people, since the hotel owners aren’t sleeping on those bedrooms themselves.
No – in NO other field of economic endeavor does anyone with a working mind declare, “Oh, that revenue you are obtaining from your license of rights isn’t a legitimate interest.”
That’s it. I’m sleeping in hotels for free from now on, and if they dispute it, I know where I’m going to propose arbitration.
The 3 party panel in the ICAN.com case were: Mr. Zhao Yun, Dr. Shahla Ali and Sir Ian Barker.
Mr. Zhao Yu was also the presiding panellist in the CEEG.com case UDRP Case CN-1100435,
The CEEG.com domain name was registered in 2002. The Complainant did not even exist under the name China Electric Equipment Group Corporation until 2003—nearly a year after the Respondent registered the disputed domain name CEEG.com and filed no trademark for CEEG until 2006. The panel denied the complaint but decided not to find reverse domain name hijacking.”
Even the final words in both the two cases are the same:
“The Panel cannot find that the Complainants knew or should have known it would not succeed and thus declines to find that the Complainants have acted in bad faith, and so the Respondent’s application for a declaration to this effect is dismissed.
For the foregoing reasons, the Complaint is denied. The Respondent’s request for a finding of reverse domain name hijacking is also denied.”
Well that’s a surprise then!
Risk /reward. It’s costs what about $2500 to file a case. Why not risk that because your not going to get a rdnh and even if you do who gives a crap, you don’t win anything but a big yaaaaaa. You lose your out 2500 and the domain owner is likely out 2-4k for legal defense. Something needs to change so if you lose you get the filing fees to cover your defense. We need to form a group and press this topic of balance, anyone doing this or open to discussion ?
its great response! Brilliant
All you guys wanting recompense for frivolous udrps should be prepared to pay complainant costs and added penalties in justifiable instances of cyber squatting
Coins have two sides
How was Texas intellectual property associates punished for causing more than a million dollars to be spent by tm holders on udrps alone
Fair is fair
Either party is liable or neither party is liable
That is a frequent comment in this discussion, and a valid one. However, the prevailing complainant does “get something” out of the process – i.e. the domain name. The respondent is somewhat differently situated since, in all cases, defending a domain name is all cost and no gain, regardless of the outcome.
TIPA was something of a pathological situation, due to their “litigate every loss” strategy. While I haven’t followed the entire saga, I believe TIPA and related parties were eventually unsuccessful in a number of actions brought against them.
The practical problem either way is that UDRP providers are not well situated to transfer payments among the parties. Implementing a bond requirement for the UDRP would not be extremely difficult, but amending the UDRP to have one is, IMHO, not politically viable.
They should have complainant’s have more skin in the game. For example, in addition to the filing fee, they should have to fork over a large sum (let’s say $3-$5k) into escrow. They could use a third party like Escrow.com to do this. If the complainant wins they get the disputed domain name and the large sum is returned. If they lose, then the large sum goes to the Respondent for some type of reimbursement for their time and/or legal fees. Watch how many frivolous UDRPs stop getting filed. The process needs to fixed and updated.
Is there data on how many similar scenarios there have been in past where someone owns a name prior to a company deciding to name a product and file a trademark on the name? Specifically, where owner never had it parked only for sale page and company contacts them they don’t agree on price and then a udrp is filed?
What is typical cost to respond/defend?
Can owner then sue company for damages?
Respondents in a udrp are in bad situations. Nothing to win. Attorney fees, a valuable domain, purchase fee and past renewal fees to lose. Not eqitable And needs to be addressed. I like the Complainant puts up an escrow idea.