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A UDRP decision to scare the pants off domainers

Kevin Murphy, May 23, 2011, 17:55:18 (UTC), Domain Policy

Is this the most blatant case of UDRP abuse you’ve seen?
A company has won a generic domain name using a trademark it has had registered for less than a year, despite the fact that the current registrant has owned it for well over a decade.
The domain was first registered in 1997. It has been in the control of the same registrant since at least 2000, according to historical Whois records, but has never resolved to a web site.
The complainant, Benoit Thiercelin, who has has a history of attempted reverse domain name hijacking, was granted a European trademark on the term “Medical Expo” in June 2010.
In April 2011, Thiercelin filed a UDRP complaint with the little-used ADR Center of the Czech Arbitration Court, citing its European trademark and a US trademark as proof of its rights.
The US trademark was not fully “registered” until May 3, 2011, a month after the UDRP was filed, according to USPTO records.
On May 15, CAC ruled in his favor and awarded him the domain.
The panelist, Joseph Cannataci, found that the domain was registered “or at least re-registered” in bad faith, simply on the grounds that it had never been used.

If one is in good faith when registering a domain name, then the intention is understandably to use it for the purposes of one’s business or activity. If it remains unused for an unreasonable length of time then such registration is open to accusation of constituting “passive holding”. Irrespective of whether the domain name was registered before or after some of the Complainant’s marks, the current holder of the domain name does not seem to have used it or currently be using it.

The decision goes on to refer to the domain as a “TLD”.
The registrant did not help his cause by not responding to the complaint.
But it beggars belief that a UDRP panelist could infer bad faith registration of a generic domain that was registered 13 years before the complainant first acquired a trademark.
The idea that “re-registration” – presumably the panelist means the domain was renewed at some point after the trademark rights were acquired – could show bad faith does not even hold water.
The domain has been due to expire in 2012 since at least 2008, historical Whois records show. The registrant clearly bought a multi-year registration at some point before then, likely in 2002.
The complainant did not form his Medical Expo company until 2009, and did not file for his trademarks until December 2009 and February 2010. The registrant has not renewed the domain since then.
What we have here is a generic domain name, registered for 14 years, seized by complainant with only recently acquired rights, based on non-use and a flimsy piece of panelist reasoning.
Under other circumstances, it would be a slam-dunk case of reverse domain name hijacking.
In fact, Thiercelin has form when it comes to domain hijacking.
Last year, WIPO ruled that that he had attempted to use UDRP to hijack, which also had been registered 10 years before he acquired his trademark rights.
The case was virtually identical to the case, but the panelist ruled in exactly the opposite way, saying:

In the view of the Panel this is a Complaint which should never have been launched. The Complainant knew that the Domain Name was registered nearly 10 years before the Complainant acquired his registered rights, no attempt was made to demonstrate the existence of any earlier rights nor was any attempt made to address the issue arising from the disparity in dates. It simply was not mentioned. Instead, a flagrantly insupportable claim was made as to the Respondent’s bad faith intent at time of registration of the Domain Name and the Panel can only assume that it was hoped that the Panel would miss the point.

Can anybody say “forum shopping”?
This should be enough to scare the pants off of any domainer.

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Comments (25)

  1. Jim Davies says:

    Hi Kevin – I agree with you that this is a very poor decision. However, I think the “expert” here is Joseph Cannataci – whose name is at the bottom of the decision. I think you have incorrectly identified the case worker – Tereza Bartošková – as the panellist.
    It looks like the panellist is law professor…

    • Kevin Murphy says:

      You are correct, of course. I’ve edited the post accordingly. My apologies to Ms Bartošková.

  2. Mike says:

    That’s just about the worst domain arbitration decision I have ever seen.
    The owner should have just filed a lawsuit and not partaken in the bogus proceedings they want to call a UDRP.
    Benoit Thiercelin sounds like a domain name thief to me.
    How sick!

  3. Bret Moore says:

    Yeah, uh, that’s pretty nuts. It’s like passive holding makes the third prong just . . . disappear. Poof! Magic!

  4. jayjay says:

    Benoit sounds like a UDRP trademark rights squatter if you ask me. Maybe some organization genuinely focused in their enterprise should challenge his trade mark(s)(s)… makes you wonder. I’m just hoping the respondent counter sues or at least attempts to do so on the grounds of this obvious reverse domain hijacking case

  5. LuckyChucky says:

    I’m amazed he was granted a trademark for such a generic as MedicalExpo. The USPTO denied my application for the mark: “SuperSeeder” on the grounds that I was simply describing a seeder (a spreader of seeds) with the adjective “super”. They denied that TM on ground of genericity but they’ll award one to “MedicalExpo”? Wow.

    • Kevin Murphy says:

      I forgot to mention it in the article, but the US trademark is for the logo, not the words.

  6. SV says:

    Very bad decision. But I don’t see as a generic anyways. Looks more as a brandable.

  7. Mike says:

    The registrant really should have responded. I think even by representing himself it would have made a difference on the decision.

  8. Danny Pryor says:

    I agree with Mike; the registrant should have responded. It may have prevented this decision from tilting in favor of an obvious domain hijacker. However, the panel should have taken very great care to review the complainant’s history in this matter, given the ruling on just last year. This is a situation where, if ever these panels do start paying close, consistent attention to each other, this precedent will be dangerous to domain investors. The reasoning that a person buys a domain for use in some business, without considering that investing may be the business, is a terrifying lapse of judgment on the part of the panelist. This is why the URS should not be adopted, and why the UDRP needs a MAJOR, MAJOR overhaul.

  9. mike summers says:

    total bullshit…both their knees need to be whacked.
    btw – any one know how to reach or find mike cohen of wannadevlope? he took 3500 from me for web development and never did anything and won’t respond to me??

  10. How should the registrant have responded that would have helped his case? Opinions please! I think this is the most important question here.

  11. Mudpeye says:

    I just had 5 domains taken from me by Microsoft
    Most were 6 yrs. old. One was ten years old.
    It was a Catch 22. If I developed the site it was exploitation. If I didn’t and had it parked it was
    cyber-squating. I had purchased the domains a year
    earlier and just recently renewed. Granted it was
    considered Tradename infringement, but what took
    them 10 years to take action. The lawyers padded
    their bill big time on this one.

  12. Johnny B says:

    “Passive holding”? How insinuating.
    I have thousands of domains in line for development, and I am working like mad trying to get them all up and live. It will be the work of years for me.
    Now I have to worry about some euro-flake taking my domains because I am not working fast enough.
    It is just like the state where I live, North Carolina. Clueless people in positions of just enough power to destroy the whole china shop going for a single tiny shiny bauble.

  13. Steve Jones says:

    Not that it’s ever wise to not respond to a UDRP, but it seems like in a lot of UDRP cases, lack of response is almost seen as admission of guilt, when in any legal proceeding, it should NEVER been seen that way.
    It’s almost as if some of these panelists look at the complainant’s case and take their word for their rights to the domain because of no response from the respondent, not bothering to look at the law to make a decision.
    It’s very unnerving and ICANN needs to take a serious look at this process and more importantly at the people that are supposedly qualified to be panelists but make poor decisions like this one.

  14. Virtual Reit says:

    The subject domain is categorically *NOT* a conventional generic term …everything that flows from that flawed logic and assumption — inclusive of this very post — is similarly defective. Which is not to say, by any means, that the referenced UDRP decision is not a bad one; only that it must be determined as such on the basis of criteria *OTHER THAN* purported genericity.

  15. Glenn Madden says:

    I agree that is bad. But I THINK, if they do not overturn it that if you have a website that represents a product you can supply then they would not be able to do this nor even grant the trademark in teh first place.
    That is what I am doing anyway nor a new comer to the domain industry. I have a measly 300 websites but I have something on everyone of them in less than 1 year of doing this.
    What I do is start with a generic template website that represents all our products. YES this is a treading duplicate content territory.
    But I set up at least the index page to represent a unique product we supply.
    SINCE WE MANUFACTURE CUSTOM WOOD CRAFTS RANGING FROM FURNITURE TO ART, we have a wide field fo products so that helps. TradUR Company

  16. Logan says:

    IMHO, is not worth the $1,500 the Complainant paid to file the UDRP. Still, a very lame and unsupported decision. It’s like the panelist didn’t even read the three tenants of a UDRP decision.

  17. sc says:

    No web site? No response to UDRP?
    With that in mind the legal facts are useless.
    He might as well given it to them.

  18. This has happened before.
    The concept of “not in use but still in bad faith” was introduced 11 years ago in “Telstra Corporation Limited v. Nuclear Marshmallows” (D2000-0003)

    • Kevin Murphy says:

      Yes, it was Telstra that was used a precedent.
      The panelist in the case also referred to Telstra. But he noted that Telstra was a huge brand that predated the domain, which was obviously not the case in the case.

  19. Paul Keating says:

    The CAC has a history of using panelists that seem to have a socialist bent. I remember in the early post-launch days of .EU, many of the cases actually addressed which use was better and discussed the social benefits in favor of the winner. It just goes to show you that ICANN makes no attempt at all to control the ADR providers in the dispute mechanism that they require registrants to adhere to. There should be a test and continuing education requirement for panelists.
    I would like to “retire” with enough money to (a) challenge trademark registrations and (b) challenge the legal sufficiency of the UDRP process as it is currently formulated. I am not against either trademarks or having an ADR system for domains. I simply do not like the way that things have progressed in either field and we should all demand that they improve.

  20. Mike Grant says:

    I could get a trade mark in 6 weeks for any name you like no problem, and dont even have to prove any use for 5 years. That would work out about $60 per year.

  21. Karl Jackson says:

    It just goes to show that people are allowing poor decision makers to be on panels which could disrupt the entire process.
    It sends a signal to anyone who wants to steal a domain CAN simply by following that exact procedure.
    I say throw the bums out – Do it quickly!

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