Steve Levy ⬥ 15 November
When I think about receiving a UDRP complaint I recognize that there are some valiant causes to be defended and many hopeless cases to be conceded. Confusing the two can be rather expensive for a respondent, as was the case here.
The Two Sides of the UDRP Complaint
The matter started out routinely enough in relation to the domain Glashuette-original.watch. A demand letter was sent to the Respondent by The Swatch Group, owner of the nearly 90 year old GLASHUETTE ORIGINAL brand for luxury wristwatches. A reply email was soon received from the Respondent’s lawyer in Hong Kong explaining that his client would happily transfer the domain in exchange for a particular model wristwatch from the brand owner. This model retails for US$29,000. There was some further correspondence between the parties during which the Respondent’s counsel repeatedly explained that his client “is prepared to consider anything but not money” in what seemed to be an attempt to avoid triggering section 4(b)(i), seeking “valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.” Finally, Respondent asked for payment of a few hundred dollars plus a donation of $30,000 to certain charities. Swatch explained that it already donates considerable sums to charities of its own choosing and gave the Respondent a short deadline to transfer the domain or face a UDRP complaint.
The complaint was filed in due course and, in its response, the Respondent’s counsel submitted an extensive dissertation (with about one hundred pages of attached exhibits) on how its settlement requests were quite reasonable since the Respondent is a collector of fine things such as watches and domain names. He went to great lengths to make the point that Swatch didn’t obtain this domain during the sunrise period and so the Respondent was entitled to assume that it was appropriate to register the domain himself (although it resolves to a pay-per-click website with links to various competitors in the wristwatch industry).
The UDRP Decision
In its rather brief decision, the Panel characterized this defense as “wholly misguided” and found “Respondent’s story as to why he registered the domain name unconvincing.” To the contrary, his offer to transfer the domain in return for a watch valued at US$29,000 is evidence of his intent to profit from the domain. Even his request for $900 was far in excess of Respondent’s likely out-of-pocket expenses incurred in registering the domain name.
So the lessons from this case are:
First, if a client asks you to defend a UDRP claim first, make sure you’re familiar with UDRP precedent and not just the plain language of the Policy.
Second, when it is absolutely clear that your client is going to lose, regardless of how innocent he may claim to be, advise him of this fact and tell him to voluntarily transfer the domain.
If he insists on retaining you to fight an obviously losing battle, then either tell him to find another lawyer or, if you’re more like the Respondent’s counsel in this case, put in tons of irrelevant evidence and then send your client a bill that will hopefully make him think twice before he barrels ahead to register any further infringing domain names (oh, and then try to collect on that bill….)