PicMonkey Inc. filed a complaint with the WIPO Arbitration and Mediation Center on February 26, 2015 for the domain name PickMonkey.com and has been denied the claim by a sole panelist.
Some Facts:
PicMonkey Inc. filed 3 trademarks for PICMONKEY (2) and PICKMONKEY ROYALE (1), all on June 4, 2013.
The PickMonkey.com domain name was registered on May 20, 2004.
The Site:
PicMonkey.com offers photo editing software and is founded by several original members of Picnik, who Google acquired in 2010 and later shut down two years later. You can read some of the companies history here in a GeekWire.com story from 2014.
The Complaint Finding:
The findings in the WIPO case for the domain name PickMonkey.com were:
The Panel reiterates the particular circumstances in this case, specifically that the Respondent registered the disputed domain name <pickmonkey.com> on May 20, 2004, which was 9 years prior to the registration of Complainant’s trademarks. At the time the disputed domain name was registered, the Complainant did not yet exist and no trademark registrations were in existence. Accordingly, the Respondent could not have been aware of the Complainant or the Complainant’s rights. Therefore, the Respondent could not have acted in bad faith in the registration of the disputed domain name.
Accordingly, the Panel finds that the Complainant has failed to satisfy the requirement under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, the Complaint is denied.
You can read the full WIPO case here.
Was this a case of Reverse Domain Name Hijacking (RDNH)? There was no mention of RDNH in the WIPO case.
To note:
The Panels are not entitled to assess whether or not the complaint has been made in bad faith at their own initiative. Such an assessment must be requested by the domain name holder.
as stated in this FindLaw.com.au article.
The Respondent was: Edmunds Gaidis – sia gogle
The Panelist was: Christopher J. Pibus
Note however the Panel recognize that “Respondent’s recent conduct is problematic”.
Although the Panel rightfully found that the domain was not registered in bad faith, they clearly felt Complainant had some basis for bringing a complaint and this was partly the reason we did not fight for RDNH.
Clearly there were significant weaknesses in the Complainant’s case, but I would put this down to his ignorance of the Policy rather than an attempt to harass or bully the Respondent. This was considered with the Respondent at the outset.
Ignorance is not recognized in law and that’s the essence of attorneys’ representations at litigation. I think an RDNH should have been sought in this case.
I agree with your statement, however the UDRP requires more than a Complainant failing to fulfill his burden. In most cases this needs to be coupled with evidence of harassment or other bad faith conduct on the part of the Complainant.
A few recent cases have illustrated this fact; i.e. Bespoke Services Group S.A. v. Garth Piesse where Panel held: “Although the Complaint is weak, it appears that the Complainant may have misunderstood the requirements of the Policy, rather than being motivated by bad faith.”
Furthermore, sometimes a Complainant’s ability to overcome the first hurdle is enough to avoid a finding of RDNH as seen in the case of Kite Solutions, Inc. v. Brandon Abbey / Escrow.com.
The Panel in ACE Limited v. WebMagic Ventures, LLC even went as far as requiring an “extraordinary level” of circumstances to warrant a finding of RDNH. Panel’s are reluctant to make such a determination and so perhaps there needs to be more of a consensus with this issue.
In this case however, Complainant had raised some significant issues (some not covered in the Panel’s short decision) and a weak case does not always translate as an abuse of the Policy.