Panelist’s rationale for latest decision directly contradicts earlier ones.
National Arbitration Forum panelist Héctor A. Manoff has found against Restomod, Inc. in a UDRP it filed for the domain name restomod.com.
The decision is probably correct, but how he came to the decision directly contradicts earlier decisions he has made.
In the Restomod.com case, the domain registrant registered the domain name way back in 1999. The complainant didn’t register a trademark until 2002. Even though it claimed first use in 1997, it didn’t provide any proof of that.
Manoff found that Restomod, Inc. failed to prove the first prong of UDRP: that the domain name was identical or confusingly similar to a mark in which it has rights.
Restomod does has trademark rights in the term Restomod. But Manoff pointed out that Restomod, Inc. didn’t show it had rights that predated the registration of the domain name, and thus said it failed the first prong of UDRP.
Manoff points to three cases, all decided in 2003 or earlier, in which panelists considered the date of registration in the first prong. In the instant case he writes:
Paragraph 4(a)(i) of the Policy requires Complainant to show that Respondent’s domain name is identical or confusingly similar to Complainant’s marks. This provision necessarily implies that Complainants’ rights predate the registration of Registrant’s domain names.
Necessarily implies? Is that true? Let’s ask Manoff himself…
I looked up other cases Manoff decided and this decision in the first prong 4(a)(i) contradicts others he has decided.
For example, in 2011 he presided over a case for MonkeySays.com. He denied the complaint, but in the first prong of UDRP he found in favor of the complainant despite the mark being registered after the domain was registered. In fact, he wrote:
As regards Respondent allegations about the date of the monkeysays.com registration, which predates Complainant’s alleged rights in the mark, the Panel finds that this argument is not applicable under Policy ¶ 4(a)(i), and it will be presented under Policy ¶ 4(a)(iii)
Section 4(a)(iii) is the one about bad faith registration.
So in 2011 he said date doesn’t matter for the first prong, only the third. In 2014 he decided that it is a necessity for proving that the domain is identical or confusingly similar to a mark in which the complainant has rights.
In an earlier 2009 case involving imaginit.com, the domain registration date preceded the complainant’s rights by many years. Still, Manoff found that the complainant met the first prong of UDRP. He didn’t address the date issue until later in his decision.
In 2008 he presided over a case for iBoxDollars.com. In the first section he wrote:
The iboxdollars.com domain name was registered on June 3, 2005, which is prior to the registration date of the Complainant’s trademark. However, as stated in Digital Vision, Ltd v. Advanced Chemill Systems, D2001-0827 (WIPO Sept. 23, 2001) and other cases, Paragraph 4(a)(i) of the Policy does not require that the trademark be registered prior to the domain name. The fact that the disputed domain name predates Complainant’s trademark registration may only be relevant to the assessment of bad faith pursuant to Paragraph 4(a)(iii), which is considered below.
Only relevant in section iii? Not relevant in section i, like the case he just decided?
So which is it, Mr. Manoff? Can the date be considered in the “identical of confusingly similar” section or just the “registered and used in bad faith”?
All of these cases were handled through National Arbitration Forum (NAF). NAF hires interns to provide suggested decisions/language for UDRP panelists, which the panelist can merely cut and paste into his or her official decision.
That may explain why Manoff contradicts himself. He may not have actually written what was published.