Panelist admonishes company for not backing up its common law trademark claims.
A UDRP panelist has found that Veracyte, Inc. attempted to reverse hijack the domain name genomedx .com.
The company claimed common law trademark rights in the term arising from the use of the term by a predecessor in interest that was acquired in 2021.
There are two interesting aspects to this case.
First, panelist David E. Sorkin found reverse domain name hijacking because the company made inadequate pleadings to back up its claimed common law trademark:
Complainant submitted no evidence of the acquired distinctiveness required to support a claim of common law trademark rights, and the predecessor in interest through which Complainant claims to have acquired such rights appears to have abandoned the putative mark several years ago, prior to its acquisition by Complainant. Under the circumstances, and noting that Complainant is represented by professional trademark counsel, the Panel concludes that Complainant or its counsel must have known that it did not have a colorable claim under the Policy.
Second, the Complainant said that the domain was registered to a former employee.
Complainant states that the disputed domain name genomedx.com was registered by an employee of GenomeDx Biosciences on November 7, 2006, and was used by the company for a website promoting its GENOMEDX testing products. Complainant alleges that this employee subsequently transferred the account associated with the domain name to another employee (apparently Respondent), who later left the company without transferring the account or providing Complainant with access to the domain name…
It’s not clear from the decision if the identified registrant is indeed a former employee of the company. Sorkin didn’t address this issue, but it would have caused the case to fail on the third prong of UDRP: that the domain was registered and used in bad faith.
This exact scenario is one identified in the recently completed WIPO-ICA UDRP review, which notes that some have asked for limited exceptions to the registration and use in bad faith requirement of UDRPs.
Companies occasionally file UDRPs against former employees who they claim are holding domains hostage. The claims fail because the domains were originally registered in good faith while the employee worked at the company.
Another scenario where this comes into play is when a licensee or dealer registers a domain name and its contract with the trademark holder is later canceled.
The WIPO-ICA UDRP review noted that these circumstances are rare and said the issue could be examined in a later ICANN review.
Knobbe, Martens, Olson & Bear, LLP represented Veracyte, Inc. in the dispute.
Leave a Comment