Panelist doesn’t address domain name owner’s evidence.
Earlier this year I was dumbfounded by the actions of panelist Bruce Meyerson in a UDRP case at National Arbitration Forum. He literally asked the complainant to change its argument so he could find in its favor.
Meyerson just decided another UDRP case at NAF that calls his judgment into question.
The case involves fashion company Guess?, which is familiar to anyone who grew up in the 80s.
Earlier this year, a UK resident registered the domain name Guess-IT.net with plans to use it for an e-cigarette company. She registered a trademark for a logo using the name and established the business with the government. The domain name pointed to website builder Wix, but had not launched yet.
Guess? took offense to the registration, suggesting that “IT” stood for merely “information technology” and “there is no conceivable use of the subject domain name by Respondent that would be legitimate”.
The domain name owner, who was not represented by counsel, filed a two-paragraph explanation with NAF. She also attached copies of the trademark and corporation documents.
Given the expense and effort of the trademark and business formation, wouldn’t you say she has rights or legitimate interests in the domain name and it wasn’t registered in bad faith?
Not according to Meyerson. In fact, he doesn’t even address the trademark and business filing in his decision!
This decision stinks.
Thanks to David Lahoti at UDRPsearch for bringing this case to my attention.
Mike says
So is she appealing to Court ?
Joseph Peterson says
What standard is he using? Does he decide in favor of the complainant in all cases? Or does he simply decide which of the 2 sides has the older brand with the deeper pockets and infer that they alone are legitimate?
Another Reply says
I feel really sorry for the respondent. She is going to have a frustrating next few days. Bruce Meyerson is a legal bully and a crook. The guy is a wezzle.
Dave Lahoti says
I don’t believe the complainant owns any of these:
GUESSIT.COM
GUESSIT.NET
GUESSIT.ORG
GUESS-IT.COM
GUESSITAPP.COM
GUESSITGAME.COM
GUESSITNOW.COM
GUESSITALIA.COM
GUESSITALL.COM
GUESSITALY.COM
GUESSITGETIT.COM
GUESSITGRABIT.COM
GUESSITOUT.COM
GUESSITPIC.COM
GUESSITRIGHT.COM
GUESSITRIGHTANDWIN.COM
GUESSITSLOVE.COM
GUESSITTOWIN.COM
GUESSITWINIT.COM
GUESSITXO.COM
Verity Gravitas says
Is there a search tool to search on all domain names (including cctlds) registered starting with the word GUESS?
Is http://www.GUESS.xyz owned by the complainant?
Zac says
It would appear that the panelist, if it is indeed this person below, should be (and perhaps is) well qualified
https://www.mediate.com/people/personprofile.cfm?auid=313
Given his experience, it would appear he is taking a very literal approach to interpretation of the registration of the Whois record (the person perhaps incorrectly using their own name rather than the company name) and/or classifying the e-cigarette in the same class as fashion good (that it perhaps may be).
If it is the latter, I’m further quite concerned as it appears the panelist believes he can bypass the process of having the class-issue decided without a hearing in an appropriate IP tribunal/court process.
Regardless of basis, given the significant costs of the respondent in acquiring their mark, it would have been proper for the panelist to explicitly state his motives and reasoning further. It could well be that the intended effect by the panelist may be to save the respondent further costs down the track (given he may be well versed on IP law), but it appears the effect this is to have is to confuse the respondent, and at worse deny them due process.
Having said the above, I have known for material to be misplaced within a physical file (of about 2000 or so pages), so it could be a simple matter that he didn’t see the respondents trademarks, but I would doubt that submissions would be that large in this case; hence why the registration details may have been a primary basis to disregard the mark, so as to avoid the issue of class…
I’m not sure if the panelist is at liberty to clarify, but I would be keen to hear his reasoning further. I’m now quite keen to read the other decision that you’ve referred to.
Andrew Allemann says
@ Zac – The respondent provided just a short, one page response with pictures of the trademark and business registration. In this case, it couldn’t have been “lost”.
Zac says
Thanks for that clarification Andrew; but regardless, the trademark would have been likely been by the company and not the individual. If so, strictly they’re two separate legal entities. It would appear that she’s the one that’s registered on the whois record, not the company. So as the respondent she has no claim with the trademark in this instance.
Again, I’m not saying his interpretation is the correct one as many panelists may accept an incorrect whois record as an error and immaterial given the trademark.
If I was responding to such a case I would certainly request three panelists (if possible). Again, I think his decision should have minimally been explained further.
Andrew Allemann says
In fact, the trademark was under a partner’s name. So that could have been a point of contention had it been considered.
It’s worth mentioning Meyerson’s write-up mentions that the respondent claimed the trademark and business filing. It’s under the “respondent’s contentions”. I’m just amazed he doesn’t discuss it in his actual decision.
Zac says
I’ve just read the Videolink article. It would appear that decision is fundamentally flawed for the primary reason the respondent would not have had an opportunity to respond to the amended argument, resulting in a denial of due process for the respondent. It may have been proper to instead let the complainant fail, advise them of the renewal in bad faith argument, then let them refile in federal court so that way the respondent could argue their case (which I would imagine they could easily win).
Fido says
Firstly, many of you are referring to the defendant, Ruwan Asela Perera Pathirage, as ‘she.’
That’s a man’s name, therefore it is ‘he.’
Zac, you refer to the “significant costs of the respondent in acquiring their mark.”
I’m not sure why you think that ‘significant costs’ are involved, because the total fee for a UK trademark is just £200 – around $300.
And submitting a trademark is as simple as you can imagine, even a ten year old could do it. You submit your design or wordmark to the Intellectual Property Office, wait about four months (for two of which the mark is published for ‘opposition’ purposes) hope nobody opposes it and if so, bingo – it’s automatically registered!
There is also no requirement to be legally or professionally represented, and I can see nothing to suggest this respondent was.
Indeed, a little research shows that prior to being granted his trademark earlier this year, the respondent was involved in a rather dubious application, which he subsequently withdrew:
https://www.ipo.gov.uk/tmcase/Results/1/UK00003077240
As you can see, it’s exactly the same except for the bit inside the circle.
The trouble for Ruwan is that ‘his’ original ‘logo’ stole the already famous and registered trademark of England’s national football team, well-known in Britain as ‘The Three Lions,’ a stylised characterisation of the Royal Arms of England.
Despite the fact that he only included two of the three lions, in exactly the same format and colour along with the Tudor roses (an obvious copy and paste job) it doesn’t appear that it got past The Football Association, as the application was opposed and subsequently withdrawn, see:
https://www.ipo.gov.uk/tmcase/History/1/UK00003077240
Nine days after the opposition, which was filed on 11th February this year, the applicant submitted the following application – with a totally different inner element featuring no lions – which was subsequently granted:
https://www.ipo.gov.uk/tmcase/Results/1/UK00003095376
I agree that the panellist should have found that the respondent DID have rights in ‘Guess-it,’ as the trademark does exist, however, unlike the rest of you lot who are pouring your hearts out for the poor lady, sorry, man – I have little sympathy.
As for Guess? Inc., it’s a rubbish domain name, so I can’t see why they were so bothered by it.
Andrew Allemann says
Fido,
The respondent was Priyanka Thalawattage. Priyanka is a women’s name, hence “she”.
Zac says
@Fido – I should clarify that when I refer to costs, I refer not only to monetary costs but also costs for time, including design, choosing classes etc; and I’d hasten to add there probably were worse domains they may have filtered through before registering this one. Also, from additional comments on this topic there appears to be a history of time spent by the respondent.
In any event, I too don’t personally consider this domain to be of much value.
The problem is that all decisions set precedent, and this can affect future decisions, so it is proper to criticize those decisions that are believed to be incorrect, and certainly highlight such cases so that future defendants don’t fall into the same trap.
Fido says
Andrew,
Apologies, howeber I read the decision and had rather assumed that the sole panellist was correct when he summed up the respondent’s argument: “Respondent registered the “Guess-It” trademark with the United Kingdom Intellectual Property Office” and that they were one and the same person.
I also assumed that what you wrote was correct – that: “She registered a trademark for a logo using the name and established the business with the government.”
Clearly, then, it wasn’t the respondent who registered the trademark like you and the panellist state, or if it was, they are for some reason in different names of different sexes.
Yet if the panellist did assume and believe (correctly or incorrectly) that they were the same person, then he has even less reason to defend his decision.
On the basis that the respondent and the trademark owner are two different people (but obviously linked in some business sense) then I stand by my comment and still believe that the panellist should have given weight to the association between the trademark and the domain, via the two people.
The Guess company can dislike the trademark all they want, the fact is that it exists and they should have opposed it at the time if they find it dilutes their brand. It is possible to make an application for a trademark’s revocation but I can’t really see what strong grounds they have, seeing as Guess isn’t known for e-cigarettes.
Also interesting to note that Guess in its response doesn’t appear to have queried the identity of the trademark owner and whether or not it was linked to the respondent.
Which begs the question, a second time, why did Guess care so much about this godawful domain – and also the godawful trademark!?
Andrew Allemann says
I could have written it more clearly given the different name on the trademark.
At any rate — your last sentence sums it up. It’s almost as if they expected a particular attack or improper use from this domain name. Maybe someone in their IT department really did think it was registered to resemble information technology, and would be used in a phishing attack. I might think that if it weren’t for the efforts the domain name owner and partners went through.
C.S. Watch says
@Fido. Hon Y Soit Qui Mal Y Pense.
Richard the Lionhearted can dig himself up and defend his design copyright on his own time and dime. And any black hat cybersquatter would have a good laugh at the suggestion that a $300 dummy TM reg should be filed to protect such unobtainium as ‘guess-it.net.’ But it’s good of you to analyze bad faith. Bruce Meyerson did not extend that courtesy to the Respondent.
We are the Whos in Whoville hollering at a Phoenix retiree who has ‘left the building.’ What happened here is plain. Bruce Meyerson has handled 940 UDRP disputes. (What IS that–twice more than anyone else?!) Scanning his decisions, the UDRP to him is a blind cow strapped to a milking machine which he shows up to pet once a year.
The salient points are these: The Respondent has an ‘unAmerican’ name, the Complainant is an American behemoth, and the Panelist has barely set a toe outside out of the pale confines of Phoenix, AZ in his 60+ years.
Some other salient points: there are over a thousand registered TMs containing the word ‘guess,’ dozens with the exact text string ‘guess it,’ two ‘guess it’ filings in the US which predate this dispute by over 20 years each, the Respondent does not have an affirmative duty under the Policy to have a business website up and running at the site within six months of domain ownership, there is zero evidence of bad faith use, and solid evidence of legitimate interest via Respondent’s logo…and trademark filing…and UK company name registration. And if the panel seriously believes that it is some ‘other’ Sri Lankan from the London SE8 before him in this dispute, then asking the Respondent for a ‘rebuttal of anaemic hypothetical’ would be the proper legal form.
Bruce Meyerson is probably a very genial party, but he shows himself here to be a vestigial digit that needs to be subtracted. A holdover from a time when domain investors had no lawyers, and domain names were not going for 35 million dollars, and the courts were not giving out 100K RDNH awards to try to get provincial, careerist, lazy panelists to follow the plain language.
(Ad hominem nom nom nom!)