Perhaps the worst UDRP filing of 2012.
A single member World Intellectual Property Organization UDRP panel has handed down a ruling in favor of the current owner of Beehive.com.
In doing so, panelist Richard W. Page got the decision right.
But he also failed.
This case is one of the most egregious abuses of the UDRP I’ve ever read, and Page should have found the complainant guilty of reverse domain name hijacking even if the respondent’s attorneys didn’t ask for it.
Here are the basics:
The complainant is Beehive.com, LLC. It’s a company that, despite its name, doesn’t own Beehive.com.
The respondent is Alliance Capital Management of New York.
The respondent has owned the domain name for at least a decade, although the parties will dispute when the actual ownership date occurred.
Regardless, it was well before Beehive.com, LLC (seriously, that’s its name) applied for a trademark on Beehive. And when it did apply in March of this year, it applied on an intent-to-use basis since it wasn’t using the mark in commerce.
The complainant’s arguments in the UDRP show it was either completely inept or was trying to hijack the domain. This is pulled directly from the panelist’s summary:
Complainant alleges that its president, Mr. Allan Gleisinger, made a good faith effort to acquire the Disputed Domain Name. Mr. Gleisinger contacted Respondent and was directed to Ms. Mona Bhalla who was appointed as Respondent’s contact to negotiate the sale of the Disputed Domain Name. After multiple conversations, Ms. Bhalla left Mr. Gleisinger a voicemail stating that Respondent would be willing to sell the Disputed Domain Name for nothing less than USD 100,000 and if interested Mr. Gleisinger should return the call and “if not then it was good speaking with you.”
Complainant believes that Respondent, during this apparent good faith negotiation process, attempted to extort an excessive amount of money in association with the transfer of the Disputed Domain Name which Respondent recognized as being extremely important to Complainant. Not only is “beehive.com” the name of Complainant, it is also the principal element in Complainant’s BEEHIVE Mark and the sole source of Complainant’s brand.
Complainant’s business success depends upon its ability to obtain the Disputed Domain Name. Absent that, Complainant will not be able to brand itself and create an online identity. Complainant’s online monetization mechanism is affectionately called “Sting”, maintaining consistency with the beehive imagery. Complainant’s business plan would no longer make sense without control of the Disputed Domain Name.
Complainant concludes that its ability to raise money from investors so far has been adversely impacted as a result of its inability to obtain the Disputed Domain Name associated with Complainant’s identity. If Complainant had the Disputed Domain Name during its efforts to raise capital, it would not have had to give up as much in equity. Respondent has no intent to use Disputed Domain Name, which has been idle for over 20 years.
I’m really at a loss for words. I can’t imagine a company naming itself a web address that it doesn’t own, and then complaining that not owning it is adversely affecting it business.
Beehive.com, LLC was represented by Pistone & Wolder, LLP. Its web site mentions numerous practice areas, but it doesn’t appear to specialize in intellectual property.
If there ever is UDRP reform, it needs to be designed to stop cases like this.
While Richard Page made the right (and easy) decision, he really should have found Beehive.com, LLC guilty of reverse domain name hijacking.
Jay says
Anything for money? Pistone & Wolder LLP have to be unprofessional lawyers to take such case. I think this case is their first and last one in IP field.
Rob says
@jay
not necessarily their last case, nor unprofessional. from their perspective they were very successful: convince a client to take a matter to court for which they will get paid – the result is not relevant. or alternatively the complainant was somewhat successful in that, although they failed to take the domain, they did try and there will be no real consequences for them besides some legal fees.
this sort of thing will never stop until there is some mechanism in place to deter frivolous claims.
xomainer says
This was the funniest text i have ever read…
I’m really at a loss for words. I can’t imagine a company naming itself a web address that it doesn’t own, and then complaining that not owning it is adversely affecting it business.
Preston says
Actually the case the much closer than the commentary above would suggest. In my opinion the Complainant should have won. Clearly, the Panel did not want to set this kind of precedent and the findings intentionally led readers down an incorrect course. Clearly, your ridicule is based on the panelist comments in regards to the finding and not at the specific filings associated with the case. If you were privy to the complaint as well as the reply and surreply’s from the Respondent you would taper your criticism and actually better understand the fundamentals of the case. From my perspective this is an abusive amount of criticism based upon lack of knowledge.
Pistone and Wolder had good reason for taking this case even though the results were not favorable. This is certainly not the laughing stock you make it out to be.
Andrew Allemann says
Preston,
I can’t even imagine what could be in this case that could make it not so egregious. Care to share one fact that would put this in your favor?
Preston says
Andrew,
Based upon your comment above “panelist Richard W. Page got the decision right” I’m surprised that you would require any additional detail. To not have the facts and represent a conclusion seems to call into question your objectivity but then I understand that the headline was just irresistible. It is not my intention to get into a prolonged discussion in regards to this finding because I don’t care. However, I can tell you definitively that Kenyon & Kenyon was not expecting the decision as it was handed down and was pleasantly surprised by the panel’s findings.
The Complainant in this case made Kenyon’s Ms. Lu look like an amateur to the point where their Managing Partner had to step in salvage the effort and even his attempts were pathetic absent any substance. It was clear that the Respondents Ms. Bhalla committed perjury in her declaration on at least one occasion. The only area that was vague was the “use” of the Trademark. Bad faith was proven and Alliance Bernstein is not known as beehive has no IP to suggest current or future intent. Their claimed use was an intranet site (labeled internationalbeehive.com) and one intranet address that was @internationalbeehive.com. There was no bona fide use in commerce the site did not resolve to a public page and I could go on and on.
Anyway, I typically agree with the UDRP findings but in this case the panel went out of its way to elaborate on all three categories (which is unusual) and the bulk of their findings rationale was inconsistent with the facts put forth in the case. The real issue from my perspective was that Beehive.com’s CEO clearly wrote most of the content and made some simple legal terminology errors.
If the company (beehive) resolves the use issue and takes this through the ACPS process they will have a better chance of winning. A jury would have certainly ruled in their favor. Mr. Page did not accurate reflect the key points of the Complainant contentions in own his rationale was inconsistent with the case law the Complainant provided throughout the dispute process.
This one smells fishy to say the least.
Andrew Allemann says
@ Preston –
It is indeed sad if the managing director had to step in to help the lawyer. After all, this is one of those cases in which the respondent will usually win without even responding to the case.
In order for the complainant to win, he would have had to prove that the respondent was psychic and registered the domain name many years ago to take advantage of an as-yet-created business. That’s a really tough thing to do.
Don’t forget that you have to prove all three aspects of a UDRP, not just one.