Horrible Domain Dispute Decision Impacts Short Brandable/Acronym DomainPosted: March 6, 2012
If you pay enough attention to UDRP decisions on a regular basis, you’ll notice a trend. Simply put, anything goes. Despite the general guidelines of UDRP being the same for each case, each panelist interprets those guidelines differently in different cases.
Unfortunately, that leads to some very poor decisions handed down.
As DomainNameWire reported today, the domain Ceat.com was lost in a UDRP decision with 2 panelists against one deciding to award the domain to the complainant. The complainant was a tire company CEAT Limited and the respondent was large domain portfolio Vertical Axis.
Despite the fact that there are numerous acronyms matching to CEAT and Vertical Axis having owned the domain for many years, two panelists felt that the three criteria of UDRP were met and awarded the domain to CEAT Limited. The dissenting third panelist had this to say:
The difference between the parties is that the Complainant’s position is that it may use the acronym as a trademark, as it has, but that the Respondent may not use the acronym as a domain name and nor, presumably, may anyone else. The Respondent’s position is that the Complainant may use the acronym as a trademark, the Respondent may use it as a domain name and the two can function in harmony so long as it, the Respondent, does not abuse the Complainant’s trademark rights or act in a misleading or deceptive way. In essence, I support the Respondent’s position on that dispute as it is consistent with the Policy and not contrary to any provision of it.
This is the correct position in my opinion. There’s no way to show that the respondent registered the domain in bad faith because registering a domain for investment purposes does not constitute bad faith. The respondent would have to deliberately be trying to make money off the complainant’s trademark or be shown to have registered it to try and sell it specifically to them. That wasn’t shown.
Herein lies the problem that we’ve discussed in prior posts and why the UDRP system needs an overhaul. The vast majority of domains that are registered are domains that no one company has absolute rights over. Generic phrases can’t be trademarked (or at least shouldn’t be able to be trademarked) and domains like Ceat.com can be used in many ways, as the acronym CEAT already is.
The fact that decisions like this happen on a regular basis is troublesome and shows, as Andrew at DomainNameWire pointed out, that in some cases the first to bring a dispute on a domain would be the one to get the domain. After all, based on the facts of this case, any company or organization using the acronym CEAT could have filed a UDRP and won the domain.
Additionally, UDRP gives no way for the respondent to rectify the matter by other means, such as putting it to use for a website outside the scope of the complainant’s mark so there’s no possibility of “bad faith” usage. As it is, a UDRP decision against the domain owner means they lose the domain – every time.
Just remember that if you have a company that files a UDRP against you for a domain and it may seem to be a slam dunk case in your favor, that doesn’t mean you will win. Prepare to defend yourself and your interests in the name rigorously. Otherwise, you could lose it even if you shouldn’t have.