DomainKing.biz UDRP loss can help domainers on the receiving end of a UDRP.
Earlier this month domain investor Rick Schwartz lost a UDRP–as the complainant.
Schwartz filed a UDRP against a domain name registrar over the domain DomainKing.biz. Schwartz has a trademark for Domain King in the U.S. and Europe.
The domain registrar mostly operates in South Africa and the Philippines, offering domain names such as .co.za and .ph.
I wasn’t sure which way this case would go when it was filed.
The panelist determined that the domain wasn’t registered in bad faith. He said that the respondent likely was generally aware of Rick Schwartz because he would have visited DomainKing.com before registering the .biz version, but probably wasn’t aware that it was being used in a trademark sense.
Nat Cohen, who has been on the receiving end of a number of frivolous UDRPs, saw a gift in Schwartz’s loss. He commented:
Rick may have inadvertently done a favor for domainers as there is helpful language in the decision:
“Further, even if the Complainant was able to demonstrate that the Respondent most likely knew that the term “Domain King” was being used in a trade mark sense, that would not be the end of the matter. The question would still remain whether the Domain Name was registered to take some unfair advantage of the Complainant’s use of this term.”
Panelist Matthew Harris is saying that even if you are aware that a term is being used as a trademark it may still be okay to register it as long as you are not taking unfair advantage of the trademark holder. This is exactly what domain owners have been arguing since the beginning of the UDRP…
You can view Nat’s full comment here.
I seriously doubt the respondent chose the domain DomainKing.biz to take advantage of Rick Schwartz’s trademark. It’s doubtful that DomainKing.biz’s customers in South Africa and the Philippines are aware of who Rick Schwartz is.
This is also a case in which the respondent was using the domain name for a business. Transferring the domain would cause a disruption to what is, by all accounts, a bona fide business. Frankly, that should never happen in a UDRP.
If you set aside the requirements of proving cybersquatting in a UDRP, keep in mind that the overarching goal of UDRP is to handle cases of clear-cut cybersquatting.
Is DomainKing.biz a case of trademark infringement? Perhaps, and that can be litigated in the courts. UDRP probably isn’t the right forum.
While this sucks for Rick, domain name owners can now point to this case when they are on the receiving end of a UDRP complaint. It might just help the owner of a generic domain successfully defend the domain in the future…