This is a pretty blatant “Plan B” UDRP filing.
Movius Interactive Corporation of Johns Creek, Georgia, represented by Smith Risley Tempel Santos LLC, has failed in its UDRP attempt against the domain name Movius.com.
The domain name is owned by branding firm Dynamo.com, which registered the domain name many years before the complainant started using the mark.
From the get go, this seemed like a reverse domain name hijacking case. Consider that panelist Robert A. Badgley said the crux of the complainant’s case was this paragraph:
Precluding a finding of bad faith on the part of the Respondent simply because the Complainant began using its trademarks after the original registration of the disputed domain by the Respondent enables purveyors of cybersquatting models to scrape the valuable .com top level domain for as yet unused domains and stockpile them for little investment in the hopes that one or more of the domains will result in a windfall sale sometime in the future. Such speculative registration efforts are abusive and run counter to the spirit of the Policy, if not in direct violation of it.
It would seem the complainant’s lawyer isn’t very well versed in UDRP.
After noting that the domain name was registered well before when the complainant had rights in the mark, Badgley wrote:
As such, even those ardent adherents to the principle that a domain name registrant is under some type of affirmative duty to ensure that a prospective domain name would not violate another’s trademark rights could not quarrel with Respondent’s conduct in this case.
Badgley then blasts the complainant for trying to invoke the Telstra v. Nuclear Marshmallows case:
Complainant’s attempt to liken this case to the seminal decision in Telstra v. Nuclear Marshmallows, WIPO Case No. D2000-0003, borders on the risible.
Risible means laughable.
and…
Although the Telstra case, like this case, involved “passive use” of a domain name, Telstra is so distinguishable from the instant case that it is should be obvious. For starters, the TELSTRA mark was established before the subject domain name was registered. Further, the TELSTRA mark was undoubtedly famous, whereas the record in this case is devoid of any attempt to show, much less an actual showing, that the MOVIUS mark is famous.
After calling this claim laughable and obviously incorrect, considering that the complainant tried to buy the domain before filing the UDRP, and given the timeline of the domain registration, wouldn’t you think Badgley would find Movius to have engaged in reverse domain name hijacking? Nope.
“The Panel declines to find that this misconceived Complaint was brought in bad faith, and hence the Panel makes no finding of Reverse Domain Name Hijacking.”
That finding is risible.
The complainant was represented by attorneys Smith Risley Tempel Santos http://www.srtslaw.com.
As sole WIPO panelist Robert A. Badgley sums up: “Respondent clearly was not in bad faith in this case”
Smith Risley Tempel Santos aren’t divorce or traffic offence lawyers – they are Intellectual Property and Transaction Lawyers. That is what they do.
As specialist Intellectual Property and Transaction Lawyers, Smith Risley Tempel Santos would have known that this UDRP case could not succeed, yet this case was still brought causing the respondent significant costs to defend.
So why no RDNH, Robert A. Badgley ???????????????????????????????
Yet another WIPO whitewash. Robert A. Badgley keeps his position as WIPO UDRP panelist. ICANN is asleep. Why are we not surprised?
Why would this panelist fail to find RDNH? Because if abusive filings like this one slowed down, then the cash and careerist benefits to panelists would slow down. “The answer to every question is money.” –Henry Ford
This is not a legal gray area. In AirFX, the DC held that it was unreasonable to file a claim under the ACPA where the domain was registered before the mark. And the award was over 100K in attorneys’ fees.
The UDRP exists solely to unburden the courts, and the ACPA bright-line rule, which serves a century of trademark law, is that the mark must pre-date the domain registration:
“…(i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; AND
(ii) registers, traffics in, or uses a domain name that –
(I) in the case of a mark that is distinctive AT THE TIME OF REGISTRATION of the domain name, is identical or confusingly similar to that mark;
(II) in the case of a famous mark that is famous AT THE TIME OF REGISTRATION of the domain name, is identical or confusingly similar to or dilutive of that mark;…”
So the complainant has the very simple duty to check whether the domain was registered before the mark, and if it was, then one must to kleenex and a cab ride home. It is endgame. Do not pass go, do not steal $5,000 to $10,000 in legal fees from a domain owner.
If in any way, at any time, the UDRP fails to serve the ACPA bright-line rule, then they are operating counter to Federal law and counter to their mandate to unburden the courts.
And an RDNH finding costs the abusive complainant nothing–it can only help shepherd future complainants and protect future respondents. This makes a panelist who fails to find RDNH where the domain predates the mark at best self-serving, and at worst, venal.
Venal means open to corrupt influence.
According to Robert A. Badgley’s webpage http://www.karballaw.com/badgley.htm :
“Mr. Badgley also counsels and represents clients on Internet liability issues. He has represented several clients in ICANN “cyber arbitrations” involving domain name ownership disputes.”
Law firms should either be UDRP arbitration panelists or representatives, but not both.
In the YourNeighborhood.com UDRP case, the complainant didn’t attach the trademark registration as an exhibit, and sole panelist Robert A. Badgley decided that Complainant represented by patent & trademark lawyers Gearhart Law was “trying to pull a fast one”.
Robert A. Badgley, didn’t even consider a “Reverse Doman Name Hijacking” decision even though he stated: “The manifest falsity of that statement persuades the Panel that Complainant was trying to pull a fast one.”