Panel says Qualify.com wasn’t registered in bad faith to take advantage of Qwalify, Inc.
Greg Ricks has successfully defended his third UDRP dispute in under a month.
Ricks previously defended JustBelieve.com and Massy.com, and today WIPO issued a decision in his favor for Qualify.com.
I wrote about the Qualify.com filing at length in February, so you can read the gist of the complaint here.
A key to the case was that Ricks registered the domain name more than a decade before Canadian company Qwalify, Inc. started using its similarly-sounding name.
Qwalify believed that the domain name had been transferred multiple times, including after it filed its trademark application for the name Qwalify. Thus, it believed that Qualify.com was registered as a typo (ahem) of Qwalify.com. (Amusingly, it also argued that the removal of whois privacy to show Ricks’ name after the case was filed was also a transfer.)
I’ll give Qwalify’s attorneys some slack on the issue of when the domain was transferred to the current registrant and assume they don’t know how to use DomainTools to research its history. Yet when the panelist presented evidence of Ricks’ ownership of Qualify.com dating to at least 2003, Qwalify responded by saying it still wasn’t convinced.
It even argued that a 2004 whois record was in the name of someone named “Bryan”. Apparently they don’t know how to read an address:
Bryan
TX, US
77808
Just google the zip code to verify.
The panelist summed up:
There seems no reason to select the date of transfer to the privacy service “Fundacion Private Whois” as the date of transfer to the Respondent Mr. Ricks, other than that this assists the Complainant in asserting that the Respondent acquired the disputed domain name after the Complainant had come into being.
Panelist Andrew D. S. Lothian did not finding reverse domain name hijacking because he found Qwalify and its attorneys confused by similarities in this case and another brought against Ricks.
Greg was fortunate that he got one of the more experienced and thoughtful WIPO panelists, namely Andrew Lothian, deciding the matter. Had one of the “lesser” panelists been assigned, Qwalify’s attempt to “roll the dice” on a meritless claim might have worked.
Using three panelists and a lawyer is probably advisable for most people, but fortunately Greg did a good job representing himself.
Andrew you left off JustBulbs.com. 4 out of 4 wins this year and no lawyer.
Ah, that’s right. That was a double jeopardy case, too.
This company messed up by not doing the radio test, then when they are being confused against a generic term they try to punish the .com holder, why didn’t they go after the .biz? This is so blatant and wrong, but somehow it is tolerated, rolled the dice with a 1 panel ruling, really this sort of stuff should be squashed without extreme evidence.
This story states that a domain robber fails to rob a domain from its owner, Mr. Ricks. I have to say that filing to WIPO is an efficient way to rob some domain names for those robbers.
I can only hope that people thinking of using Qwalify will first search for them online and discover this evidence of incompetent unscrupulous greed.
May they lose customers in perpetuity!
Greg is a very knowledgeable and seasoned domain owner. And, he has been through a number of UDRP’s over the years. However, I think he is pushing his luck by being is own lawyer. In the past, I believe he has used one or two of the more notable IP lawyers.
I acknowledge it takes money out of his pocket to defend a complaint by utilizing a premier IP lawyer. (Plus requesting a 3 member panel.) But, it will pay dividends in the future.
He has many great domains which makes him an easy target. 4 out of 4 is an excellent record. But, many times the pendulum quickly swings in the opposite direction before one realizes it.
I suspect his rationale is that if he loses he can always sue to stop the transfer.
By the same token, though, many UDRP fact patterns are similar to one another, and Greg has seen quite a few. Of course, the facts of these things all have their own peculiarities, but if you just look at success rate, he’s been doing better without lawyers – and I was one of them So there you are.
My guess is a lawyer may have made stronger RDNH arguments. Then again, I don’t know how much that matters to Greg. After all, winning is the most important thing.
As a general rule, I don’t “make RDNH arguments”. The UDRP rules require the panel to call it when they see it. I am not going to fall into the game which some panelists have set up that it is somehow a proposition to be “proven” by the Respondent. I will recite the rule, point out a few key facts, and ask the panel whether they endorse the professional standards demonstrated in the complaint.