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An interesting inconsistency in UDRP rulings

This panelist has a different standard for the first element of UDRP.

This morning I was reading the UDRP decision for CallFinder.com.

Panelist David Einhorn got the answer correct — the domain name shouldn’t have been transferred to a company that got a trademark for CallFinder many years after the domain name was registered.

But I was surprised to see that Einhorn found that 800 Response Marketing, LLC failed to prove the first prong of the UDRP. The first prong basically says that the domain name is confusingly similar to a market in which the complainant has rights.

Most UDRP panels won’t consider dates for this first element. If the complainant has rights in the mark, and it’s confusingly similar to the domain at issue, the complainant will win the first prong. The panels deal with the date issue in the third element, registered and used in bad faith.

Not Einhorn. He considers dates in this first element.

Einhorn is consistent in considering dates under the first element of UDRP. If you look at his past UDRP denials, he considers dates multiple times for the first element.

While he gets the answer right, this contradicts recent standards for UDRP cases.

Perhaps it’s an easy way for him to dismiss a case with the least amount of work possible.

In the CallFinder.com case, Einhorn declined to find reverse domain name hijacking. This is surprising after he wrote “Complainant is a legitimate trademark owner who was attempting to improperly apply the Policy to a domain name which pre-dates its trademark rights.”

That sounds like reverse domain name hijacking to me!

Speaking of reverse domain name hijacking, why didn’t panelist Clive Elliott consider it for PacificMountain.com?

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  1. Matt Brown says

    David Einhorn may just be the perfect panellist for Respondents. See his interpretation regarding the first element in FA1302001486522:

    “This provision necessarily implies that Complainants’ rights predate the registration of Registrant’s domain names. See Intermark Media, Inc. v. Wang Logic Corp., FA139660 (NAF Feb. 19, 2003). As Complainant has not demonstrated that its rights pre-date Registrant’s domain names, in spite of having been provided a second opportunity to do so
    in response to the Panel’s Interlocutory Order, Complainant has not satisfied paragraph 4(a)(i) of the Policy.”

    Although this interpretation is not technically true (as you mention the first element is not concerned about the date rights were acquired) in most cases it will lead to the right outcome as seen from the present case. However in situations where Respondent was clearly aware of the Complainant (i.e. publicized merger) but did not have sufficient rights before the domain was registered, would Mr Einhorn even consider this scenario? Interesting…right conclusion…perhaps wrong interpretation? Would certainly select him in future defense cases!

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