Jobetty LLC, dba Mudpuppy’s Tub & Scrub lost its attempt to grab the domain name mudpuppies.com
The three member panel of Nathalie Dreyfus, Sandra J. Franklin and Diane Thilly Cabell basically threw the case out finding the Complainant’s trademark was filed some 9 years after the domain name was registered.
However on the issue of Reverse Domain Name Hijacking the panel found:
“Respondent submits that the Complainant has abused the UDRP proceeding by filing the claim and that “Reverse Domain Name Hijacking” should be awarded. In the Panel’s view such assertions are speculative comments and do not justify any finding or decision by the Panel.”
Well why not?
If you have to have three elements to win a UDRP and you clearly don’t even have a valid trademark that pre-dates the domain registration and in this case it was 9 years after, how did the Complainant not bring the case in bad faith?
Its the definition of bad faith.
Bringing a UDRP on a trademark on a domain name registered 9 years before you registered your trademark is attempted legal theft plain and simple and should immediately result in a RDNH ruling
Also it should be noted that only a “majority of the Panel is of the view that Complainant must have trademark rights preceding the date when the domain name in issue was registered.”
That means one of the panelist thinks it could be fine to hand over a domain based on a trademark registered after, in this case well after the domain was registered.
That is scary.
Here are the short facts and findings of the panel:
Complainant has a registered trademark for MUDPUPPY’S with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3977432, registered June 14, 2011, filed October 28, 2010).
Respondent’s late husband, Jon Wichmann, registered the mudpuppies.com domain name on October 22, 2001. On January 28, 2008, Jon Wichmann changed the registrant information of the disputed domain name to the Respondent’s name, Katarzyna Bieniek.
A majority of the Panel is of the view that paragraph 4(a)(i) means that a Complainant must have trademark rights preceding the date when the domain name in issue was registered.
The Complainant should establish trademark rights before the disputed domain name’s registration in order to prove that the Respondent was aware of the Complainant’s services and wanted to take benefit of the trademark’s notoriety.
If the Complainant does not meet the requirements of this paragraph, he cannot succeed.
The domain name registration dates back to October 22, 2001. The Complainant’s trademark registration was filed on October 28, 2010 and registered June 14, 2011.
There is no evidence before the Panel that the Respondent was aware of the Complainant’s activities at the time when the disputed domain name was registered, at least 9 years prior.
Therefore, the Panel cannot establish that the Respondent targeted the MUDPUPPY’S trademark in order to obtain benefits by redirecting the Complainant’s consumers to their competitors.
As the Complainant has not brought any proof or argument in support of common law trademark rights dating back to 2001, the Complainant failed to establish the requirements of the first element under the ICANN Policy.
In order to prevail in this proceeding, the Complainant must prove all three elements under Paragraph 4(a). As the Panel concludes that the Complainant failed to prove the first element, listed in Paragraph 4(a)(i), this means that the Panel does not have to consider whether Complainant has proven the remaining elements contained in Paragraphs 4(a)(ii) and 4(a)(iii).
“Respondent submits that the Complainant has abused the UDRP proceeding by filing the claim and that “Reverse Domain Name Hijacking” should be awarded. In the Panel’s view such assertions are speculative comments and do not justify any finding or decision by the Panel.”
Having not established the first element required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Not to mention the trademark and the domain do not even match, not even in meaning. One is plural the other possessive. Ridiculous, is there a validation or audit process that you know of on these UDRP’s?
I understand from someone I know that Nathalie Dreyfus’s firm has just issued a UDRP for a client . This is where Bias becomes something to be looked at, bias towards Complainants generally because they are ,usually, large company’s likely to be clients or potential clients ,whereas Respondents are usually, im sorry to say, not large companies (apart from a few).
There is no a validation or audit process at all.
Just like anyone can sue anyone for anything anyone can file a UDRP.
So you can file a UDRP against Google on the domain Google.com based on a trademark registered yesterday on the term womenwithballs.com
Mike, is it ethical to use your blog to promote type-ins of your parked domains?
Tsk, tsk
The complainant in this case was represented by legal counsel Christopher Wimmer of Emergent Legal
Nathalie Drefus Presiding Panelist in this case (and who makes a living from representing UDRP Complainants) was the same Nathalie Drefus Dissenting Panelist in the bespoke.com UDRP case. Again no RDNH decision. Quelle surprise, Nathalie! In the bespoke.com UDRP case the panel said that the complainant represented by legal counsel had “misunderstood the UDRP policy” even though the legal counsel were UDRP experts. Yeah right!
Something has to change. Is ICANN asleep?
Nathalie Drefus should recuse herself from EITHER acting for Complainants in UDRP’s OR acting as a Panelist, she should NOT be allowed to continue in both conflicting roles. What happens when she uses one of her previous UDRP decisions as basis for allowing another UDRP win for a Complainant, or when she takes work from the Company she decided UDRP for ?. The whole UDRP process is now so polluted that is no longer has the same validity it may have had in beginning.