WIPO panelist makes a questionable decision.
World Intellectual Property Organization panelist Warwick A. Rothnie has determined that the owner of BTSA.com is cybersquatting and that the domain should be transferred to BTSA Biotecnologias Aplicadas, S.L.
Rothnie’s decision is surprising. You can make a good argument that this was actually a case of attempted reverse domain name hijacking.
It’s a bit convoluted because the domain name is financed by Domain Capital. Rothnie decided that the financing company is the true owner of the domain, which it financed in 2014. But the fact is that the beneficial owner registered the domain in 2003.
Although the Complainant says it existed prior to that, it didn’t register a domain for its website until 2004.
The Complainant has a registered trademark for BTSA BIOTECNOLOGÍAS APLICADAS as a figurative mark. Rothnie found this confusingly similar to the BTSA.com domain name.
What’s quite clear from reading the decision is that the beneficial owner of the domain acquired the domain for its value as a four letter domain, and that is how Domain Capital likely financed it. The decision says the domain was parked but did not show ads related to the Complainant.
That’s not cybersquatting.
The Complainant says it first discovered the use of BTSA.com when it decided to set up a subsidiary in the United States. It tried to acquire the domain and that failed. It then filed the UDRP.
I’d make an argument that this is a case of Plan B reverse domain name hijacking, not cybersquatting.
If nothing else, it’s not a clear case of cybersquatting and I believe Rothnie made the wrong decision.
Plain English, that is messed up! Time to lawyer up.
This kind of panelist should get the boot; pathetic and dangerous;
when they start to sue these “panelists” for damages?
C.S. Watch says
Dangerous is too right.
He’s citing .lu and .it precedent. Talk about unclear on the concept. Are there hundreds of BTSAs in Luxembourg? Because there are hundreds outside of it. Completely different market and population forces. One can’t sentence a gladiator in a different arena.
If it is a country code, then tally ho. Bumble around in your country’s empty legal cabinets and take potshots at what law might work for you. However, if it is a .COM dispute, then your country is three decades late to the discussion. 7.5B people should not be made to suffer loss while you play catch up and preen for relevance.
The WIPO needs a thump for assigning an AU panelist to a .COM dispute in which respondent/complainant/registrar are all effectively US. Panelists who seek to increase filings for their clients or for themselves foment “uncertainty” around an issue. Here that issue is the date of first registration. But there is zero uncertainty in the primacy of the Creation Date in the Whois—not in the drafting records of the ACPA nor in the court decisions.
C.S. Watch says
This Aussie panelist’s pannacotta was all ajiggle in the hope that he would be the first to leave his stamp on .COM domain financing…and he gets it utterly and catastrophically wrong.
The initial 2003 registration rights carry to even anonymous, public aftermarket buyers. You’re theorizing about familial status? You are a child.
Let’s make this very simple—did you see the movie ‘Up?’ That’s called being a ‘holdout.’ https://en.wikipedia.org/wiki/Holdout_(real_estate). A little old man has a house that stands in the way of a large corporate interest. If he can’t sell his house and have his rights transfer to the buyer, than that is a house with a dead little old man in it.
The Creation Date in the Whois is the dispositive fact, as set out in the AirFX case in US federal court. https://casetext.com/case/airfxcom-v-airfx-llc-5. That “creation date/alienable right” rule is settled law which compasses global commerce. It must be applied, or people will be killed.
steve brady says
BTSA is not “confusingly similar” to BTSA. BTSA and BTSA are “exactly the same”. Nobody thinks of a one-and-only BTSA. Except for BTSA RDNH.
Thankfully, Judicial Branch verdicts require more proof than confusing similarities.
Then again, my neighbor lady looks “confusingly similar” to a butcher, maybe I should ask her how much she charges per pound for loin.