Panel awards generic domain name to company with questionable trademark rights.
A National Arbitration Forum panel has ordered the transfer of the domain name AustinPain.com, and I believe it got the decision wrong.
The case was filed by Austin Pain Associates* against HugeDomains.
The three person panel had to twist and rationalize UDRP rules in order to find against HugeDomains in each aspect of the UDRP.
Reading the case, it’s apparent that Austin Pain Associates provided little evidence of long running trademark rights to the term “Austin Pain”, even after invited to submit more:
It alleges that it is commonly known by the name AUSTIN PAIN but essentially all of the supporting material provided with the Complaint and in response to the Panel Order shows use of the assumed business name, AUSTIN PAIN ASSOCIATES.
Then things get silly. The panel writes:
Nonetheless, if it can be said that Complainant has trademark rights in that name, then Panel is of the view that Complainant has trademark rights in the truncated form, AUSTIN PAIN, since the word “Associates” adds nothing more of value to the expression “Austin Pain.”
It can also be said that it would be much harder to trademark “Austin Pain” than “Austin Pain Associates”, so what the panel determined here is highly questionable.
On the issue of Rights or Legitimate Interests, HugeDomains argued it’s in the business of reselling generic domain names. It pointed out that it has registered austinelectrolysis.com, austinmeditation.com, and austinneurologist.com, along with names such as augustapain.com, bocaratonpain.com, and centralvalleypain.com. HugeDomains claims to have registered 235 domain names that begin with the word “Austin” and 354 domain names that end with the word “pain.”
The panel found this wasn’t enough to show rights or legitimate interests in the domain:
…the issue is not the legitimacy of Respondent’s business model but whether it has a legitimate interest in the disputed domain name. Put another way, the legitimacy of Respondent’s business does not, of itself, create rights or a legitimate interest in a domain name corresponding with the trademark of another. If that trademark is generic, it might say something of the bona fides of the domain name registrant for the purposes of paragraph 4(c)(iii) of the Policy, but the mere genericness does not create a legitimate interest in a domain name if it corresponds with the trademark of another. Whether this issue has been approached as a matter of “willful blindness” of third-party rights, or constructive knowledge of those rights, the same result has followed and so it follows here. Panel finds that Respondent has no rights or interests in the disputed domain name.
Interestingly, HugeDomains may have had a better defense had it actually parked the domain. HugeDomains sends traffic to landers offering domains for sale and these landers don’t include pay-per-click links. Had the company sent it to a lander with ads for pain doctors in Austin it would have created a good defense that it was using it for its advertising value of the generic use.
On the issue of registration and use in bad faith, the panel found that HugeDomain’s registration of the domain name falls under 4(b)(i) of the policy, which states:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
There’s no doubt that HugeDomains registered the domain to sell it. The question is who they had in mind when registering it.
The panel writes:
It therefore remains only to consider whether it had these intentions apropos Complainant “who is the owner of the trademark or service mark or to a competitor of Complainant” and it stands to reason that is the only class of persons to whom the domain name would have interest.
Perhaps only the complainant or a competitor would be interested in the domain name because it’s a term describing a type of service in one location.
Yet the fact that competitors would be interested in the domain is because it’s generic. The panel confuses merely “end user” buyers with all possible buyers for the domain. I’d argue that others would be interested in buying the domain name due to its generic nature. For example, I might want to buy it to create a directory of pain clinics in Austin.
By the rationale of this panel, someone can form a practice called Austin Psychology Associates and thereby have rights to “Austin Psychology” (because remember, the panel said “Associates” doesn’t add much) and get AustinPsychology.com. Ditto for the domains HugeDomains told the panel it owns, such as austinelectrolysis.com, austinmeditation.com, and austinneurologist.com.
You can tell that the panel had a lot of consternation in deciding each prong of the UDRP. Since the UDRP was designed to handle clear cut cases of cybersquatting, I think the panel of Debrett G. Lyons, the Hon. Charles K. McCotter, Jr, and Houston Putnam Lowry erred in this case.
(*The complainant is officially listed as Austin Pain Association, but the rest of the UDRP refers to Austin Pain Associates)