Panel gets decision right, but misses mark on RDNH.
Burn World-Wide, Ltd. d/b/a BGT Partners of Miami, Florida, has lost a UDRP case to get the domain name BGT.com from Banta Global Turnkey Ltd, which is now part of RR Donnelly.
The facts of the case are pretty egregious. Banta was founded well before BGT Partners and even registered the domain name before BGT Partners was formed. The three person arbitration panel found that the domain name wasn’t registered and used in bad faith. But shockingly, it did not find that BGT Partners attempted reverse domain name hijacking by bringing the case.
Up front, the panel wrote that the circumstances of the case would normally constitute RDNH:
Such a finding would normally follow having regard to the longevity of the Respondent’s registration of the disputed domain name, commencing many years before the Complainant adopted its trademark.
But then it tries to rationalize why that isn’t the case here:
A number of considerations, however, lead to the conclusion that such a finding is not warranted in the present case.
First, in addition to its use for the portal, web mail and ftp server services historically provided by the Respondent, the disputed domain name has resolved since 2007 to the website which mirrors RR Donnelly’s general website which promotes a range of goods and services much wider than the activities historically conducted by the Respondent. This change was consequent on RR Donnelly acquiring Banta Corporation. It is arguable, as the Complainant contends, that the usage in relation to at least some aspects of that website may infringe the Complainant’s rights. The Panel, however, expresses no concluded view on that question in view of its findings above. Nonetheless, the Respondent has not adequately explained why the disputed domain name resolves to such a general website rather than one related to the specific services comprised in the Respondent’s business.
Moreover, the Complainant was not in a position to ascertain that the Respondent was continuing to provide its services through the disputed domain name as it would appear that knowledge of the specific subdomains being used by the Respondent, and possibly appropriate passwords, was required.
Thirdly, the Octogen and Mummygold cases could be seen as at least opening the door to the Complainant’s claim.
That’s pretty weak. Note the mention of the Octogen cases that the complainant brought up. This is the newly popular theory amongst some panelists that a domain name doesn’t have to be registered in bad faith; only used in bad faith.
Ed Muller says
Andrew,
I have a TM for “Computer Operated Machine” under a DBA for COM which is part of my Fine Dining Corporation.
CNET has been flaunting “Computer Operated Machines” in direct violation of my TM. CNET owns several weak, unrelated TM but none for COM. I demand COM.com be handed over to me immediately. Perhaps Cnet acquired this domain with a valid purpose but it is clear they have failed to explain why they continue to have Computer-related material on their forward CNET.com website.
I would also like lots of money to compensate me for obvious damages to my credibility, which was stellar up until today.
Mansour says
There should be a rule from ICANN that in order for WIPO to accept a case, that the complainant shows they have registered the trademark prior to the registration of the domain name. This would save a lot of money for the respondent, the complainant and everyone involved who have spent their time working on the case, and the proof should be a condition for the case to be accepted by WIPO for arbitration. I know WIPO will never do that; they like the $1500 fee paid by the complainant. It is a great source of money for them and their lawyer friends.
Tim says
It’s about time we all come together and sue the NAF and WIPO.
Pat says
WIPO is a joke because ICANN is a joke.
Unfortunately, neither of them has any motivation whatsoever for cleaning up their acts. So expect much worse to come.
Sometimes tight government regulation to control abuses really is the answer (just ask anyone in the Gulf).
Shuwix says
Pat: Even if domain is “rented”, it has attributes of property.
If I will lose any domain due some moron with no law education, I will hit court. Nobody can take my property unless judge says so or law strictly define that situation.
If anyone lose domain due to junk decision of panelist, I would sue exact panelist for damage caused.
If those morons have to pay back damage caused from their own pocket, they will think twice before copy/paste old decisions.
Louise says
@ Pat, ICANN has motivation to clean up its act, because I’m going after it with my website, RecoverDomainName! No disrespect intended – there are many hard-working administrative people who accomplish much as ICANN, just the higher-ups seem overcome by overtures of the largest Registrars.