University “seriously misdescribed” website in attempt to win transfer of site.
The University of Cambridge has lost a cybersquatting dispute against the owner of Cambridge.com. The panel found that the University and its lawyers Stobbs IP Limited also “seriously misdescribed” contents of the domain name owner’s website.
Kirkland Holdings LLC bought the Cambridge.com domain name in 2010 for $85,000. It subsequently created a website for Cambridge, United States and Cambridge, UK on the domain name, and has two pending trademarks for the site.
It seems that the university became aware of the respondent and its website after a broker acting on behalf of Kirkland Holdings reached out about selling the domain name. The broker contacted a number of potential buyers in both Cambridges, including the University.
The panel noted that this was acceptable, writing:
Indeed, whereas the term “Cambridge” refers to different and relevant geographical locations, it is plausible that there may be other market players potentially interested in acquiring the disputed domain name. The consequence of this competition for the disputed domain name is the elevation of the price of its transfer.
The University has also filed to try to block the two trademark applications. This parallel proceeding could be grounds to not decide the UDRP. This put the university in the position of having to try to walk back its original remarks about how it wanted a UDRP decision in order to decide whether to proceed with the trademark oppositions. Oddly, the Complainant argued two different things about the parallel USPTO opposition proceedings and the UDRP, noted in a footnote to this passage calling them out on using one proceeding as leverage in the other:
That fact, a generally weak Complaint, the Complainant’s taking contradictory positions on whether a decision in this proceeding will impact its trademark opposition (2), and the timing of its delayed opposition in the USPTO raise an unhealthy aroma that the Complainant brought this proceeding with an ulterior motive – either to bolster its case before the TTAB or to use the UDRP as a second front in a broader campaign.
(2) Compare “The outcome of the UDRP complaint can in no way be prejudicial to the outcome of the trade mark oppositions.” (Supplemental filing, paragraph 2) with “the Complainant takes the view that the outcome of the UDRP will inform them as to whether it is necessary or appropriate to oppose the trade mark applications.” (Id. paragraph 4).
The panel determined that University of Cambridge “seriously misdescribed” the contents of the Cambridge.com website to try to make it look like the site was just a front. The panel noted that the site was much more than than, containing lots of relevant information for visitors to either Cambridge.
The panel wrote that “Sufficient grounds for a finding of abuse plainly exist.” But for some odd reason, it decided let the university off with a warning. Why? I have no idea.
This seems worth highlighting:
“[I]t is plausible that there may be other market players potentially interested in acquiring the disputed domain name. The consequence of this competition for the disputed domain name is the elevation of the price of its transfer.”
Implied conclusion:
Provided “other market players” have a legitimate interest in a domain, the owner’s offer to sell that domain for a significant price – even to someone with some claim to the name – is also legitimate. In that case, domain resale is something neutral to be respected by a UDRP panel and not a sign of bad faith.
Notice that the burden of proof is not to show DEMONSTRABLE interest from “other market players” but merely POTENTIAL interest. And the standard here is common sense. The existence of these “other market players” needn’t be proven beyond a shadow of a doubt. Just so long as it’s “PLAUSIBLE”.
Far-fetched arguments won’t fly – naming a nonexistent future grandchild “Google” in order to cling to a TM-infringing domain, for example. That isn’t plausible.
But I’d say that in the recent case of BART.net, where the registrant lost his domain, he did have a plausible case for the existence of “other market players potentially interested in acquiring the disputed domain”.
Agreed Joseph. The owner of bart.net got a raw deal. I think based on this case he’s win on appeal or in the Federal Court. These panel decisions seem so inconsistent. Now, you have bart.com on Flippa auction and the B.A.R.T confident they can win these UDRP. What comes next?
Great analysis Joseph.
No RDNH?
There are 658 “cambridge” trademark filings in the US, hundreds of registrations with the WIPO, numerous towns using this name, etc. This is a blatant RDNH filing. Every snaggletoothed arriviste at Cambridge knows this, and knows the law perfectly well, because all of them tried to get into Oxford.com beforehand.
We repeatedly see abusive complainants let off with a “warning” when the panel contains one of those whom Harvard Law Review has termed a “trademark activist.” (A gracious euphemism for a hungry arbitrator who is angling for clientele, or who is a corporate shill, and therefore refuses to apply the clear language.) Richard G. Lyon, of SPORTO.COM infamy, was one of the three panelists here, and falls squarely into this category.
It is the role of the presiding panelist to avoid the appearance of impropriety by simply finding RDNH where it applies. RDNH should not be treated as a chit, to be handed out or withheld, in deference to colleagues in the room.
For instance, in the MODWAY.COM dispute you noted in a prior article, presiding panelist Christopher Gibson seemed to offer the offensive excuse that, although the minority’s “retroactive bad faith” line of reasoning (renewal-as-registration) has been humiliated in US courts and disavowed in the UDRP, the hapless Complainant may have relied on the minority’s past error, so no RDNH. Andrew Christie was on that panel—a well-known past proponent of the retroactive bad faith line. Such lip service to one’s colleagues can readily be called corruption, and it destabilizes the UDRP.
And huge losses are being sustained due to laxity on RDNH. Negligent panelists are wet nursing the misconception that Complainants may just as well take a potshot at a valuable domain asset. (Why not. Arbitrators get paid either way.) But grownup losses are being sustained. Respondents are filing in court directly, collecting 100K+, and not bothering with a specious UDRP. Or, failed Complainants are being punished in the six-figures+ by outraged Respondents, if not shut out flat. Such losses are somehow not compassed by these dilettante panelists. But this is not a suburban divorce mediation, and parties are not bickering over a used minivan.
https://en.wikipedia.org/wiki/List_of_most_expensive_domain_names.
RDNH in the UDRP is a necessary caution flag to complainants. The heavy losses complainants are sustaining in and out of court track right back to panelists who shirk their duty on RDNH. And complainants aren’t thanking them for it. Reading this dispute, they may well start turning on them for indemnification.
The panel found that the University and its lawyers Stobbs IP Limited tried to mislead the panel. How very naughty of them!
The panel found that sufficient grounds for a finding of abuse plainly existed but added that a finding of abuse (they must mean RDNH) is always discretionary with the panel. Being discretionary by the panel, they chose not to deem this case as reverse domain name hijacking, but told the complainant and their advocates not to try this tactic again. So slapped wrists then. Ouch! Bet that hurt…. NOT.
Meanwhile the respondent is left nursing a bill for legal fees and the costs for a three party panel just to keep a domain name that the University and their lawyers were trying to steal from them
So there you have it. An open invitation for all future opportunists encouraged by law firms to have a punt at grabbing a valuable domain name and in the process if you misled the panel a teensie-weensie bit in an attempt to make your case look a little stronger, then there is no punishment just a slap on the wrist and told not to do it again.
The UDRP doesn’t need to be reformed. It simply needs to be applied as written. Some panelists need to be kicked off for rogue judgements. Some panelists need to be kicked off for applying their own “re-interpretation” of UDRP policy (they will know who they are). Law firms should either be UDRP arbitration panelists or representatives, but not both. “
And the other shoe drops…
http://ttabvue.uspto.gov/ttabvue/v?pno=91223159&pty=OPP&eno=8