Berryhill Beats Back UDRP On SideTrack.com

John Berryhill, Esq just beat back yet another UDRP this time on the domain name Sidetrack.com brought by Side by Side, Inc. /dba/ Sidetrack.

The domain name was owned by generic domain investor, Alexander Lerman one of the newest members of the Internet Commerce Association (ICA).

Its a good and proper decision but more importantly to domain investors in general it contains some good language where the panel expressly adopted the position that bad faith to be found to exist it under policy “there must be bad faith both at the time of registration and subsequently.”

The panel expressly rejected cases that held to the contrary.

Here are the relevant facts and findings by the three member panel which will be published later today

Sidetrack.com was created on September 23, 1998.

The Complainant owns three United States registrations for the mark SIDETRACK in block letters.

1.      SIDETRACK (block letters) registered:  January 20, 2009; filed:  May 22, 2008

2.      SIDETRACK (block letters)  registered:  November 7, 2006; filed:  December 21, 2005

3.      SIDETRACK (block letters) registered:  November 7, 2006; filed:  December 21, 2005

“The Complainant, starting in or around 1982, operates an establishment in Chicago called SIDETRACK which provides bar and nightclub services, and which is directed to the gay community.”

“The Complainant has spent over USD 2,500,000 on marketing and advertising in conjunction with branded goods and services offered under the mark.  This advertising has included local, national, and international newspapers, magazines, and websites.  ”

“Since February 1, 2000, one of the Complainant’s websites is sidetrackchicago.com”.

“The Respondent purchased the disputed domain name in February 25, 2004 in a portfolio purchase of 10 domain names (including <begging.com>, districts.com, does.com, lately.com, merits.com, and others) for a total price of $18,000. ”

“The Respondent is using the term “sidetrack” generally in accordance with its commonly understood meaning in relation to travel, i.e., a diversion or detour from a main course.”

“Since July 2004, the Respondent has used the name to resolve to its web site which provides travel advertising, including links to third-party sites associated with travel.”

“The Panel finds that the Respondent has rights and legitimate interests in the disputed domain name.”

“The Respondent acquired the disputed domain name in a bulk purchase on February 25, 2004 of ten domain names, all of which comprised ordinary dictionary words.”

“Shortly thereafter and prior to the Complainant notifying the Respondent of any dispute over the domain name <sidetrack.com>, the Respondent began using the name in conjunction with his travel-related web site that provided a list of pay‑per‑click links to third‑party websites for travel‑based products and services.

“Under the facts of record, the Panel views the Respondent’s use of its domain name in connection with its site of pay-per-click travel advertisements as bona fide, particularly here given that the Respondent is using the term “sidetrack” generally in accordance with its commonly-understood meaning in relation to travel, i.e. a diversion or detour from a main course, and the Panel on balance accepts that the Respondent had no prior knowledge of the Complainant and its activities until more than a year after the Respondent commenced use of the disputed domain name.”

“Hence, the Panel finds that the Complainant has failed to meet its burden under paragraph 4(a)(ii) of the Policy.”

“The Panel also finds that the Respondent did not register and has not used the disputed domain name in bad faith.”

“From the press articles exhibited to the Complaint it appears that the Complainant has indeed operated a bar/nightclub in Chicago since 1982.  One of the articles in question celebrates the 25th anniversary of the establishment in 2007.”

“However, there is nothing before the Panel to indicate fame or notoriety outside the Chicago bar scene. ”

“Specifically, there is nothing to show why the Respondent in California should have been aware of the Respondent’s establishment in Chicago in February 2004 when the Respondent acquired the disputed domain name. ”

“There is nothing to show that the Respondent is in any way associated with the bar scene in Chicago, particularly gay bars, and might therefore have been aware of it. ”

“There is nothing about the Respondent’s use of the disputed domain name to suggest any knowledge of it.”

“The Complainant purports to produce such evidence, but the Panel finds it does not adequately support the allegations of bad faith use.”

“The Complainant’s contention that the Respondent acquired the disputed domain name with a view to taking advantage of the Complainant’s claimed reputation and goodwill in respect of the Complainant’s trade mark is undermined by the evidence of the Respondent as to the circumstances under which the disputed domain name was acquired. ”

“The documents produced by the Respondent make it abundantly clear that the disputed domain name was acquired as part of a job lot of 10 domain names, all of which were ordinary dictionary words.”

“The disputed domain name has been used consistently to derive pay-per-click revenue from travel-related advertising links, not links focusing on bars and nightclubs.”

“At one point in the Complaint, the Complainant appears to accept the possibility that the disputed domain name may not have been registered in bad faith, but contends that the subsequent bad faith use is sufficient to get the Complainant home under paragraph 4(b)(iv) of the Policy.  ”

“As already indicated, there is no credible evidence of bad faith use, but even if there had been, for the preponderance of UDRP panels, proof of bad faith registration of a domain name is a crucial requirement.  ”

“The position has most recently been explained in Poundland Limited v. Dealz.com, WIPO Case No. D2012-0918 in the following terms:

“The Panel finds the key issue in the present case is whether the Disputed Domain Name was registered and used in bad faith under paragraph 4(a)(iii) of the Policy.

“Therefore, the Panel prefers to move directly to addressing that third element of the Policy.”

“In Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011 (“Mile”) the Panel stated that ‘the consensus view since the Policy was implemented in 1999 has been that the conjunctive ‘and’ indicates that there must be bad faith both at the time of registration and subsequently’.”

“This view has been challenged in some recent decisions, which treated “registration” and “use” as a unified concept.

“The panel in Mile addressed the Mummygold and Octogen approach as follows:

“If a consensus developed that a line of prior decisions had reached the wrong result, and if panels generally adopted a new approach on an issue, this Panel also would be open to considering whether a new approach was appropriate, both substantively under the Policy and in order to promote consistency.”

“However, the Mummygold/Octogen reasoning has not prompted any such consensus; to the contrary, a number of decisions have expressly considered and rejected it.””

“The Respondent denies that at date of acquisition of the disputed domain name he had prior knowledge of the Complainant and its Chicago establishment. ”

“There is nothing before the Panel to suggest that that denial should be disbelieved.  On the contrary, the evidence of the Respondent supports the Respondent’s claim that he acquired the disputed domain name for the purpose for which he has consistently used it, namely to derive revenue from travel-related advertising links.”

Comments

  1. Anon says

    but more importantly to domain investors in general it contains some good language
    —-

    Which means absolutely nothing to a body that doesn’t bind itself by precedence.
    Run this same case in front of another panel, you might get the same ruling for an entirely different reason, or a different ruling via the opposite interpretation of the facts above.

    No consistency in the UDRP process is why it’s just totally pointless to ‘care’ what any given decision says. Hooray for the people who kept from getting screwed, but the decision-making entity itself is so intensely flawed, it doesn’t matter for anyone else.

  2. BrianWick says

    Anon –
    My gut tells me Tony Willoughby leans quite a bit more toward the Complainant – so I think this language John Berryhill got out of the guy has a little substance than the usual coin flip

  3. Joseph says

    Interesting, the Panelists assigned by both parties are perfectly well known to each other and are the part of the same law firm.

    Namely, according to WIPO webside, panelist Karen FONG happens to be Managing Partner at Rouse Legal, London, United Kingdom. At the same time, panelist Tony WILLOUGHBY happens to be the Senior Partner at the same Rouse Legal (formerly Willoughby & Partners/Rouse & Co. International).

  4. John Berryhill says

    Joseph,

    Good picki up. Since the Respondent picks their three nominees first, we thought it was kind of strange that one of the Complainant’s picks was from the Rouse firm. It’s not clear whether Mr. Willoughby is still at Rouse though. So, we were concerned that perhaps the Complainant’s counsel may have been aware of some sort of issue between Mr. Willoughby and Ms. Fong. Eventually, we figured it was just some sort of fluke.

    By far, most UDRP complaints are filed with the default single member panel option. So even if the complainant’s counsel has filed a lot of cases, which is also not usual, they generally don’t have a lot of experience choosing or ranking panelists. It’s really not a question of whether a panelist tends to sympathize with complainants or respondents in some general sense. What is important isatching panelists to key issues indicated by the facts and, in general, selecting panelists who are careful thinkers.

  5. Meyer says

    “generally (complainant’s legal counsel) don’t have a lot of experience choosing or ranking panelists. ”

    John, I’m sure the legal community share notes about the different panelist. I also believe there are some websites that rate the different panelist.

    Bottomline – John, you are still one of the best at presenting a solid defense on the behalf of domain owners.

  6. John Berryhill says

    “I also believe there are some websites that rate the different panelist.”

    There was one, and may still be one, which only ran up to 2004 decisions. But that’s exactly the kind of misguided thinking I’m driving at. Whether a panelist has gone X% one way or another is a function of what cases that panelist has received. You can have a panelist with a 100% transfer record, and that number is completely meaningless if it just happens that panelist received a lot of cases which were fairly simple no-brainers. Between two panelists who have transferred every name they’ve seen, you have to go back and look at a good sample of decisions to unwind the thought process they used to get there.

    It’s a really simplistic approach.

  7. says

    Hello MHB,

    Only the legal system could devise such a Catch 22. Devise a first come first serve leasing system that can be rescinded by an easily manipulated whim of opinion , that is held accountable to nothing for attempting Thievery.

    This is a cruel Joke,or is it just me?

    Gratefully, Jeff Schneider (Contact Group) (Metal Tiger)

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