Complainant also asks the panel to simply ignore one of the three requirements of UDRP.
Here’s a bizarre cybersquatting dispute…
A New York company called Unplugg, Inc. filed a UDRP against the domain name unplugg.com. The company only has rights in the Unplugg mark starting this year, which is after the domain was registered. In order to win a UDRP, you have to show rights to a trademark that pre-dates the registration of the domain.
So Unplugg makes a couple of novel arguments to try to overcome this.
First, it argues that although it didn’t have rights in the mark when the domain was registered, other companies did. It thinks this should be taken into account.
Second, it says that because it’s obvious the domain owner is cybersquatting, the panel should be able to ignore one of the three prongs necessary to prove a UDRP.
While the panelist got the overall decision correct (it was pretty easy), I am a bit surprised about how Kenneth L. Port analyzed the case. He found the deficiency with the first prong–that the domain matches a trademark in which the complainant has rights. Most panels would grant this to the complainant as the dates of their rights don’t matter. Where the dates matter is the third prong, which is that the domain was registered and used in bad faith. Port has handled a lot of cases so I’m surprised by this.
Also, Port admonishes the respondent for only replying in Korean even when asked to respond in English. Yes, the respondent in this cases needed to respond in English because of where the domain was registered. But the respondent probably doesn’t know English. He didn’t do it to slight the panel.
So let me get this straight: a domainer minds his/hers own business, buys a certain domain and goes about their life.
Then somebody comes and files an UDRP and then they ask the domainer to defend themselves in a language of their choice?
What the hell? Since when is knowledge of English required to own a domain? Something’s not right here…
Andrew Allemann says
Not exactly. It’s based on the language of your registration agreement. So this person could have moved the domain to a registrar that has a registration agreement in Korean. So it’s not that something was wrong with mandating English for this proceeding, it’s just kind of how the panelist responded to the responses being filed in Korean.
‘ it didn’t have rights in the mark when the domain was registered, other companies did. ”
The complainant needs to prove ‘standing’ (relationship or authorization) with the other IP owners.
Why would the IP holders want to give another company rights to the term?
I can not believe the panelist would accept the borrowing of standing from another TM owner if they are not involved in the case.
Andrew Allemann says
“I can not believe the panelist would accept the borrowing of standing from another TM owner if they are not involved in the case.”
Just to be clear here, the panelist did NOT accept the borrowing of standing
The dog ate my homework.
Andrei Mincov | Trademark Factory® says
The beauty of UDRP is that it allows for a very simplified resolution of a very narrow scope of domain name disputes. It has never been designed to address ALL possible situations where two parties are arguing over the proper ownership of a domain name. When the complainant fails to establish that the dispute falls under UDRP, the complainant loses. Even if the complainant comes up with novel excuses for why the complainant should be excused for failing to paint the dispute within the scope of UDRP.