2 members of a 3 member UDRP decided to terminate a UDRP filed by SDT International limited company of Belgium (SDT) on the three letter .com, SDT.com from Nat Cohen’s Telepathy, Inc. who was represented by Wiley Rein LLP.
The three member panel spit in its decision with 2 members voting to terminate the the proceeding since Telepathy has already filed a federal lawsuit seeking a declaratory order that Telepathy’s registration of SDT.com did not violate the trademarks of SDT
The third member Tony Willoughby, the Presiding Panelist, filed an excellent dissenting opinion saying he would have dismissed the complaint and found Reverse Domain Name Hijacking.
Here is what the majority had to say:
“”By a majority the Panel has decided to terminate this administrative proceeding.
The court proceeding launched by the Respondent in the United States District Court for the district of Columbia seeking relief under the United States Anticybersquatting Consumer Protection Act is a legitimate action, not something dreamt up by the Respondent to frustrate this administrative proceeding.
The issues at the heart of this proceeding, namely the parties’ competing claims to the Domain Name and whether or not the Complainant is guilty of Reverse Domain Name Hijacking, are at the core of the court proceeding.
Moreover, the court is in a far better position than the Panel to adjudicate those issues in that the court litigation will provide the parties with the opportunity for “the exchange of discovery, examination of witnesses, presentation of reply arguments, and examination and cross-examination of live witnesses, all of which are unavailable in a proceeding under the UDRP.”
The Panel sees no merit in suspending this administrative proceeding.
Suspension could lead to extensive delays depending upon the course that the litigation takes.
Instead, the Panel believes that it will be more appropriate to follow the course taken in a number of similar cases, namely to terminate without prejudice to the right for the Complainant to seek to refile the Complaint following termination of the District Court case or in the event that the Court decides in favour of the Complainant.
As the Panel majority believes that all matters should in the first instance be resolved in the District Court case, the Panel does not address the Respondent’s request for a finding of abuse of this administrative proceeding.
For the foregoing reasons, this administrative proceeding is terminated pursuant to the Rules, Paragraph 18 (a), without prejudice to the right for the Complainant to seek to refile the Complaint in the event that the Court decides in favour of the Complainant, but does not direct that the Domain Name be transferred to the Complainant.
Richard G. Lyon
A Dissent was filed by Tony Willoughby the Presiding Panelist
“With the greatest respect for my co-panelists I dissent from their decision.
On the papers before the Panel I would have dismissed the Complaint and found the Complainant guilty of Reverse Domain Name Hijacking.
I would have come to this conclusion solely on the case put before us by the Complainant.
Is it appropriate that a respondent who has signed up to the Policy should be able to prevent a complainant who has filed a complaint in due form under the Policy obtaining the decision for which he has paid the appropriate fee?
The Complainant followed the form of the Policy in filing a complaint asserting, in line with paragraph 4(a) of the Policy, that the Domain Name is identical to a trade mark in which it has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith. At the same time it lodged the appropriate fee for a panel decision.
Ordinarily, in my view, a complainant in such circumstances is entitled to a decision for which it has paid under a regime to which a respondent has contractually submitted.
While it is true that in circumstances where there are concurrent court proceedings, a panel has a discretion to terminate or suspend, in my view that discretion should only be exercised where for some reason there is a difficulty in the panel coming to a decision under the terms of the Policy, e.g., because there are conflicts of fact which cannot easily be resolved without the benefits of discovery, cross-examination etc. In my view the merits of the case are clear on the face of the Complaint.
In this case the Complaint is fundamentally defective in that there is no evidence of any substance to support the claim to bad faith registration and use.
The Complainant’s prime contention in this regard is that the Respondent registered the Domain Name in 2003, eight months after the Complainant’s trade mark rights were applied for, with knowledge of the Complainant’s trade mark rights and with the intention of selling the Domain Name to the Complainant.
First, the Respondent did not acquire the Domain Name until November 2006, so none of the pre-November 2006 screenshots showing PPC links at parking pages is relevant.
Secondly, there is nothing about the Respondent’s subsequent use of the Domain Name linking it in any way to the business of the Complainant.
Thirdly, the only other evidence to which the Complainant points are (a) the previous cases under the Policy where the Respondent has been cited as a respondent; and (b) the terms of the correspondence quoted in section 4 above. According to the Complainant (a) is indicative of the Respondent’s familiarity with proceedings under the Policy and (b) is indicative of the Respondent’s knowledge of the Complainant’s trade mark and its value.
I have looked at the previous decisions cited by the Complainant.
There are nine of them.
All the complaints apart from one failed.
In some of them the Respondent’s business model was found to give rise to a bona fide business offering and in some of them there were findings of Reverse Domain Name Hijacking against the former complainants.
The case that succeeded against the Respondent seems to have been a marginal one.
The cited correspondence took place in 2014, apparently at the instigation of the Complainant and is of no assistance in determining the Respondent’s motives in November 2006.
The Complainant, having cited the previous cases, must have been aware of the results favourable to the Respondent and should have disclosed those results to counter the obvious inference that the Respondent had a propensity for bad faith registration and use of domain names.
The Complainant having searched DomainTools for screenshots showing use of the Domain Name, had ready access to the DomainTools Whois History research tool which makes it very clear that the Respondent only acquired the Domain Name after a date in October 2006. In my view these were material non-disclosures.
In my view, the Complaint was fundamentally defective, the certification at the end of the Complaint that to the best of the Complainant’s knowledge the Complaint was complete and accurate was false and the Complaint should never have been filed.
In my view this is a clear case of Reverse Domain Name Hijacking. Moreover, I regard paragraph 15(e) of the Rules as a mandatory provision. Having found that the Complaint was brought in bad faith Paragraph 15(e) requires the panel to so declare, irrespective of whether the Complaint is terminated or suspended.
In coming to these findings I am applying what I understand to be the Policy and the Rules, nothing else. Specifically, even if I could (which I most certainly cannot), I am not seeking to apply the provisions of the United States Anticybersquatting Consumer Protection Act, nor am I seeking to restrict or influence the court in any way. As the distinguished panelist said in Marker Völkl (International) GmbH v. Tucows.com Co, WIPO Case No. D2012-1461:
“With full respect for the jurisdiction of this and any other competent court, this Panel believes that a failure by the Panel to address the merits of the case before it, would serve to frustrate the intended effect of the Policy, to which the Respondent as domain name registrant has submitted on its part. Consequently, the Respondent’s request to suspend or terminate this proceeding is denied. Naturally, it is for the Ontario Court to make its determination on the facts and issues before it under applicable law.”
Good decision by Tony Willoughby too bad the other two members did follow and dismiss this mess of a complaint and find Reverse Domain Name Hijacking, rather than punting to the Federal Court
On another note I think every domainer should read the offer and response from Telepathy including the terms of the offer of Telepathy which I think I may steal parts of and use in my own responses, its excellent:
On July 11, 2014, the Complainant sent an email to the Respondent in the following terms:
Your domain sdt.com received the following offer at SecuredOffers.com. Please respond to the offer within three business days.
Offer Price: $1000
Name: David Monticelli
Address: Boulebard de l\’Humanité, 415
City: Brussels State: Belgium
Phone: 0032 2 332 32 25
“Agreed to the following statement: yes By submitting this offer, I confirm that neither I, nor my organization, claims a legal right to the registration of the domain listed above. If I am inquiring on behalf of another entity, I confirm that this entity does not claim a legal right to the registration of the domain listed above and that I am authorized by such entity to make this representation.”
The Respondent responded the same day as follows:
“Thanks for your interest in our sdt.com domain name. SecuredOffers forwarded your offer. As you know, choosing the right domain is a critical strategic decision. A company’s domain name is its online brand and identity.
The three-letter dot-com domain that matches a company’s initials is the ideal online identity. It provides an intuitive and powerful brand.
For the right company, with the right vision, the lifetime benefits of owning a three-letter dot-com domain are worth well into the six-figures. This valuation is confirmed by dozens of sales at this level.
sdt.com can be obtained for $185,000. It may also be available for license through a lease-to-own arrangement.
Please feel free to contact me if I can provide further information.”
Excellent job Nat.