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UDRP panel gets AustinPain.com decision wrong

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)

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  1. Acro says

    There is also a separate trademark is for “Austin Pain Therapy.”

    Since this was a three member panel, it’d be interesting to see how each member has delivered decisions individually in the past.

  2. Mike says

    The TM that Acro refers to predates the establishment date (2001)of the “Complainant” but I think someone at the Complainant business is somehow connected with that earlier company.If you do search for “austin pain” it does show several relevant domains. But in any event the decision stinks ,and the TM was not in anyway involved so how on earth they managed to find TM rights is beyond me, but does not surprise me. More and more UDRP and pre UDRP disputes are going to go to Court im sure.

  3. Nat Cohen says

    I agree that the panel got this wrong.

    The decision contradicts itself. The panel finds that HugeDomains was probably not aware of the Complainant when it registered the domain.

    “it accepts as more likely than not to be true Respondent’s claim that, at the time it registered the disputed domain name, it had no knowledge of Complainant or of its trademark. ”

    That should have been the end of the story. It is impossible for a domain owner to register a domain in bad faith effort to target a particular company when it isn’t even aware of that company.

    The panel here makes the old fallacy that if someone registers a domain to sell at a profit then he/she must be targeting a trademark holder – whether the domain owner knows it or not.

    This ignores that generic domains have inherent value and that there are plenty of companies who pay good money for generic domains who have no trademark rights to those domains.

    That three panelist signed off on this nonsense demonstrates the shoddy state of the UDRP. I’m not surprised that this is a NAF decision.

  4. George Kirikos says

    Nat wrote: “That three panelist signed off on this nonsense demonstrates the shoddy state of the UDRP. I’m not surprised that this is a NAF decision.”

    Too true. NAF, of course, was forced out of credit card arbitrations:

    http://www.businessweek.com/investing/wall_street_news_blog/archives/2009/07/big_arbitration.html
    http://www.businessweek.com/stories/2008-06-04/banks-vs-dot-consumers-guess-who-wins

    yet they remain in the domain name dispute business. That says a lot about the poor oversight by ICANN. This has been brought to ICANN’s attention repeatedly, yet ICANN does absolutely nothing.

    • Nat Cohen says

      Yes, George, as we know ICANN is guilty of a dereliction of duty when it comes to the UDRP. ICANN’s mandate is to operate the domain name system so that it is secure and stable.

      Yet they have abandoned oversight of the UDRP and have allowed for-profit corporations like the NAF to turn the UDRP into a tool for stealing domains on behalf of NAF’s clients – the companies who pay NAF to decide UDRP cases for them.

  5. Steve says

    The sooner ICANN’t moves away from this kangaroo arbitration system the better. Time and time again decisions like this prove the system is setup to steal generic names from their rightful owners. If Huge had the named parked and it was showing ads from the “complainant” they would for sure lose it. Damed if you do, damned if you don’t.

  6. anton says

    A disgraceful decision, the owner should have had the right to get at least $50 for this domain.

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