Case contradicts prior rulings involving the same complainant, but the panelist in the other cases probably got it wrong.
Clearwater Systems of Akron, Ohio, has been found guilty of reverse domain name hijacking.
It’s a decision that might make the company scratch its head in light of two recent victories using UDRP.
The present case is for ClearWaterSystems.net, a domain name owned by a water softener and bottled water company in Indiana.
Panelist Richard G. Lyon found that Clearwater Systems (Ohio) failed to prove that Clearwater Systems (Indiana) lacked a right or legitimate interest in the disputed domain name or that it registered or used the disputed domain name in bad faith.
Lyon said the complainant and its counsel, Walker & Jocke, failed to appreciate that UDRP does not rely solely on US doctrine of constructive notice. Since the complainant’s case was based on this doctrine, it failed to apply “applicable law” of UDRP cases, i.e. policy precedent.
“The entire content of the Complaint is that the Complainant has a trademark, the Respondent does not, and therefore the Complainant is entitled to the disputed domain name,” Lyons wrote.
He was particularly harsh on Walker & Jocke, writing:
The foregoing applies all the more to the Complainant’s representative. In the Panel’s view, the Complainant’s counsel should have been aware of or informed herself of the fundamental differences between Policy proceedings and US trademark litigation before filing this case.
Lyon discussed these cases in his response, noting that panelist Gary J. Nelson seemed to put undue weight on the fact that neither respondent responded in those two cases. (Actually, one of the respondents provided a two word response: “That’s stupid!!!”)
Lyon also said that the response in the present case didn’t affect the outcome and he would have found in the respondent’s favor regardless. Essentially, Lyon thinks Nelson arrived at the wrong conclusion.
There’s certainly little difference between the ClearwaterSystems.net case and the one for ClearwaterSys.com. A California company has used the ClearwaterSys.com domain name (which matches its business name) for years. Panelist Gary Nelson has now deprived the company of using this domain name, which it clearly has legitimate rights in. Lyon understands the limited scope of UDRP, Nelson allowed UDRP to be used for a case that’s probably best for the courts. After all, this seems more of a case about trademark rights in a name that has been adopted by multiple companies rather than a case of cybersquatting.
As of now, the ClearwaterSys.com domain name hasn’t been transferred. Perhaps a lawsuit was filed in local court to block it.