Complainant tries to pull a fast one on arbitration panel.
Today I was reading through the domain arbitration decision for ComPart.com, a domain owned by Vertical Axis. The complainant, a German company called Compart, said that the parked page at Compart.com was showing ads related to its software business.
The complainant specifically said the parked page showed ads of direct competitors, such as software4students.co.uk and 31touchdownloads.com. That would be pretty damning evidence against Vertical Axis.
But then I went to compart.com to see these ads, and here’s what I saw:
It sure appeared that the page was focused on the “part” portion of the domain, as it only showed ads for car parts. Confused, I looked up historical thumbnails at DomainTools and found the same thing. Where could these ads competing with the complainant, that Vertical Axis supposedly set up to divert traffic from the complainant and benefit from its goodwill, be?
Turns out Compart’s lawyers pulled an old trick. They merely typed the word “software” into the search box at the bottom of the parked page and printed out the results page.
This didn’t go unnoticed by the panel, which called the complainant out on it.
(The panel also thought the respondent tried to mislead them because it asserted that compart was both an English and German word, but it is not a German word. I checked with the respondent’s attorney. As it turns out, the assertion that compart was also a German word was due to Google Translator showing the word during a translation. If Translator can’t find the word, it just renders it in the same language. Regardless, intentionally misleading the panel like the complainant’s counsel did is very different from a trivial oversight such as which languages ‘compart’ is a word in.)
The complainant lied. Guess who won anyway? The complainant, despite the fact that the parked page of a generic term didn’t compete at all with the complainant’s business.
(Hat tip UDRPsearch)
UDRPtalk says
Sounds like filing a suit to challenge the decision would be in order.
Johnny says
Holy Moly! Just because someone else had a TM somewhere else it could not be used for a different non-competing purpose?
It sounds to me like they are rewriting trademark laws. WIPO needs to be sued over antics like this.
This ranks up there as one of the worst decisions I have ever seen.
joe says
that’s SICK. pure theft. I seriously don’t know how these panelists can sleep at night.
Kevin Ohashi says
I hope kevin ham doesn’t let it slide. A policy like Compana (has/had?) would probably be in his best interest
jp says
This is ridiculous. I am starting to change any good domain I own to a developed site. The risk of losing your domain from parking it is not worth the reward on such a valuable asset. I have also started filing for my own TMs on some of my better names.
Perhaps the parking companies should get together and file suit agains WIPO & NAF for this crap. It is got to be costing them money. Crap like this hurts every corner of the space.
jp says
On another note, I think it would be interesting of one of the other TM holders of the term compart were to later file a UDRP against this German company and take the name from them, proving that they registered it in bad faith, etc…
Andrew, have you ever come across a domain that has been UDRP’d twice, once taken from the domain holder, and then 2nd taken from the RDNHijacker to another pirate?
UDRPtalk says
@Andrew, do you know if the respondent paid a $2500 upgrade fee to go to 3-member panel?
If so, then the fact that they still lost is truly an insult to the respondent and is a very disturbing trend for legitimate domain owners.
Andrew Allemann says
@ UDRPtalk – yes, it was a three person panel.
SL says
For future domainers who might run into the sleazy tactics perpetrated by firms like this, perhaps it’s worth getting them indexed with these articles. Might help a respondent in the future:
Bettinger Schneider Schramm Patent- und Rechtsanwälte, Germany.
Btw Andrew, excellent job on bringing these issues to light.
Andrew Allemann says
@ SL – I recommend using UDRPsearch.com for just that purpose. You can tag a domain case as reverse domain hijacking (your opinion) and “worst”. This data will be compiled and can be used in the future. I’m working with them to use the RDNH data for my domain RDNH.com.
DomainLad says
If simply parking a domain does not create any rights to the domain, the key question for domainer is what level of site development constitutes “use in commerce” for trademark purposes (assuming of course that the domain is sufficiently distinctive). Is it possible to create a (common law) trademark by developing a simple 3 page site with some relevant content, links and email functionality? Does a developed content site have to generate actual income in order to be considered “used in commerce”? What is the minimum development threshold for creating trademark rights in a domain?
Steve says
Panelist’s and corporations that act like this should be seriously punished. Basically the lawyers in the case committed fraud, the panel acknowledged it and then found in their favor. If this doesn’t make you shake in your boots I don’t know what would. Judges in Canada have in the most part been way more logical and even when applying trademark laws and rulings. I have moved all of my better names to registrars up here. CRAZY, disband and punish these urdp parasites asap.
Steve says
thanks again Andrew for bringing these things to our attention. It gives us all an opportunity to protect our asses, oops, assets. 🙂
Cheers.
UDRPtalk says
@DomainLad – I think it’s a sliding scale. The more your site goes “beyond parking”, the greater your rights are. But as the internet evolves, the “bar” keeps being raised. So what is considered acceptable today, may not be a year from now. So it really boils down to this: You have to keep evolving in order to continue surviving which is essentially “survival of the fittest.”
DomainLad says
@UDRPtalk – Thanks for your reply. I agree that the “development bar” is likely to increase over time. The supply of brandable (i.e. “suggestive” .com) domains is limited and the demand continues to grow exponentially, leading to an ultimate “survival of the fittest” – as you so aptly put it.
While I am keeping an eye on UDRP trends with respect to “legitimate use” rulings, my question is really about “use in commerce” as defined by US trademark law. In other words, since filing a $300 trademark registration for all the “distinctively suggestive” domains in my portfolio is not economically feasible, I would like to develop a basic site blueprint that meets the standard for establishing a common law trademark through “use in commerce.” Is it enough to offer a service (i.e. some content & link aggregation) under a company name? Does a site actually have to produce income in order to be considered used in commerce?
This seems to be the key question for domain investors going forward. As a relative newbie, I would greatly appreciate some input from the domain veterans amongst you….