Cybersquatting dispute probably shouldn’t have been filed.
A National Arbitration Forum panelist has denied a cybersquatting claim against tolles.com, and I have questions.
I’m perplexed about why the Complainant filed the case and how it argued it.
Tolles Development Company LLC was formed in Nevada on August 8, 2016. Last month, it filed trademarks for Tolles, claiming first use in 2017. Those trademarks haven’t registered yet.
Tolles.com was registered in 2004, so the Complainant needed to argue that the domain had changed hands after the company had common law trademark rights in the name.
And the domain might well have changed hands. The domain was part of Marchex’s portfolio and was acquired by GoDaddy. According to DomainTools‘ historical records, the domain transferred from GoDaddy’s NameFind between July 30 and August 22, 2016.
So the Complainant could have argued that the domain was registered after it had common law trademark rights in the name. Of course, given how soon the domain was registered after the company was formed, it would have needed to show that the Respondent was somehow aware of its plans.
Yet Tolles Development Company provided no evidence of common law rights, just an assertion.
It seems that one of two things happened here. Either Tolle’s lawyer at Dickinson Wright PLLC didn’t look up the historical information, or he knew about it and the client and he decided to file the case anyway. If it didn’t look up historical information, the case shouldn’t have been filed because it shows the domain was registered in 2004. Even if it was aware, it would have needed to show almost instantaneous common law rights or that the domain owner knew about the company.
All of this wouldn’t have mattered, anyway. Once the case was filed the Complainant found out that the domain is registered to the owner of tolles.org. A look at historical Whois records for that domain shows it’s owned by someone with the last name Tolles. This means the owner has rights or legitimate interests in the domain. At that point, the Complainant should have withdrawn its dispute.
John Berryhill says
“I’m perplexed about why the Complainant filed the case”
It’s pretty easy to understand why these cases are so common. If you look at a number of professional commentators on the UDRP and organizations associated with administration of the UDRP, they generally pretend that abusive filings don’t exist.
At WIPO, you can obtain any statistics you want about UDRP cases with a really slick statistical generator that slices and dices UDRP data by any number of criteria. Except one. You cannot obtain, from WIPO, any idea of how frequently RDNH is found or in what direction the trend might be moving. WIPO ignores RDNH outcomes.
The UDRP is promoted as “if you have a trademark, you can get a domain name” and even experts who do CLE presentations, videos, or otherwise profess to teach other professionals about the UDRP tend to minimize or downplay abusive filings.
I have one on my desk, right now, where the Complaint says the Respondent registered the domain name in 1999 and the Complainant was formed in 2021 and registered their US trademark last month.
It was filed by a lawyer who is a well-educated partner in a Chicago law firm.
I actually have another one of this type where, again, the Complainant knows their mark is junior to the domain name, and it was filed by a lawyer with Dentons.
For whatever reason, the IP profession is failing to communicate basic UDRP principles to people who are filing these things, and there seems to be some deliberate action, such as by WIPO mentioned above, to
Nevada says
Tolles Development Company Reno, Nevada, engaged the finest Las Vegas lawyer for their complaint.
Tolles Development Company were represented by John L. Krieger of Dickinson Wright, Nevada.
Amongst many awards, John L. Krieger was named “Lawyer of the Year” by Best Lawyers® for:
• Litigation – Intellectual Property, Las Vegas (2022)
• Copyright Law, Las Vegas (2021)
http://www.bestlawyers.com/lawyers/john-l-krieger/95780
John Berryhill says
Be that as it may, he was beaten by an empty chair.