By Steve Levy
If you walk into a car dealership and ask the sales person to “please fix my backyard faucet” you’re going to get a very confused look in response. Sure, maybe you use your home’s plumbing, by way of a garden hose, to wash and wax your car, but that’s not something that they’re going to help you with at the Mercedes showroom. And so, it is with domain name disputes under the Uniform Dispute Resolution Policy (UDRP). This policy, first applied in 1999, was created to address the abusive targeting of trademarks in domain names. That’s it. The Policy was not designed to address instances of infringing website content where the domain name itself is not targeting the brand. For relief against that type of abuse you’ll need to either submit a takedown to the hosting provider or, in a worst case, file a case in court claiming trademark infringement.
Unfortunately, this limitation was not understood by a representative who bills itself as “a full-service intellectual property law firm”. In a recent decision denying a complaint against the domain name knp376.com, the Complainant asserted that it ““is the owner of the mark TEXT MECHANIC registered in the USA for Software as a service” and it claims that the website of the disputed domain name shows content that infringes on its mark. Now, you may already be scratching your head since par. 4(a)(i) of the UDRP requires that a brand owner prove that a disputed “domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights”. This section makes no mention of the website to which the domain name resolves. In this case, the panelist found that “The Domain Name consists of the character string ‘knp376’ and the gTLD .com. The Domain Name does not bear any resemblance to the Complainant’s trade mark TEXT MECHANIC.” Since the Complaint didn’t even pass this initial threshold test, the panel didn’t even bother to analyze the remaining elements of the UDRP under pars. 4(a)(ii) and (iii) relating to rights and legitimate interests and bad faith registration and use.
The Complainant was also found to have engaged in reverse domain name hijacking (RDNH) which is an abuse of the Policy by a brand owner. And adding insult to injury, the panel noted that “[t]he Complainant is an established business which has successfully used the Policy before in an unrelated case to obtain the transfer of a domain name”. This means that either the Complainant, and its counsel, should have known better, or the current complaint was filed in a terrible error. Either way, this firm must now explain to its client why time and money was wasted on this UDRP case and why the next step may be filing the case in court. A denied UDRP case cannot be refiled unless there’s new evidence that could not have been known at the time of the original complaint. There’s no easy second bite at the apple after simply filing a flawed complaint.
So, what’s to be learned from this sad story? Always retain the best and most experienced representative to file your UDRP complaints! With over 600 winning cases in the books, FairWinds is simply the best in the business. It just doesn’t make sense to visit a car dealership for help with your home’s plumbing and there’s also no excuse for making such obvious mistakes as claiming rights to a trademark that has nothing to do with the terms in a disputed domain name.