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    Highlights of the ICANNWatch Archive
    (June 1999 - March 2001)

    Uniform Dispute Resolution Policy (UDRP) The Worst UDRP Decision Yet?
    posted by michael on Saturday May 11 2002, @04:59AM

    dtobias writes "I thought I'd seen some pretty bad UDRP decisions, but this one has to win some sort of award for general stupidity. NAF case 105902 concerns the domain heel.com. Chuck Crews, of Chapel Hill, North Carolina, registered it a few years ago to use in the email address of a listserv to discuss the North Carolina Tar Heels basketball team. That listserv has been inactive since 1999, and from then on the domain went to a Web site that indicated that the domain was for sale.

    This seems pretty good for the domain owner's side of any UDRP case; while panelists don't much like "This Domain For Sale" pages, they're not inherently bad faith if the domain name was used in the past by the registrant for a legitimate purpose, even if it's presently inactive, and especially so when the name is a generic English word.

    However, when this domain was challenged by a German maker of homeopathic remedies (which has a trademark on "-HEEL", with a dash at the start), the panelist, Linda M. Byrne, Esq., showed thorough and reckless disregard for the clear wording of the UDRP policy in finding for the complainant, in the absence of a single shred of evidence of bad faith on the part of the respondent."

    This is what a complainant needs to demonstrate to prevail in a UDRP case:

    (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

    (ii) the registrant of the domain name has no rights or legitimate interests in respect of the domain name; and

    (iii) the domain name has been registered and is being used in bad faith.

    Part (i) is usually pretty easy; in this case the complainant did have a relevant trademark.

    Part (ii) seems to fail in this case; a listserv (mailing list) to discuss Tar Heels basketball seems to me to be a perfectly legitimate use of the name. But the panelist disagrees, saying "Respondent has made no apparent use of the disputed domain name other than connecting it to a website that states 'This Domain Is for Sale' for the past three years, and other than a listserv that discontinued operation in 1999. Since Respondent requested $20,000 from Complainant in exchange for the disputed domain name, is appears that Respondent’s only use of the domain name is to sell it." This is clearly wrongheaded reasoning; other panelists have acknowledged that speculating in generic-word domain names is a legitimate use, and anyway, even if that is not, certainly the listserv use is legitimate; the panelist brushes past that with barely a word.

    Part (iii) is where the complainant really has no case at all. A domain must be both registered and used in bad faith. Even if one regards the attempted sale of the domain as bad faith, that was not the reason it was first registered, and in fact no evidence has been shown that the registrant had even heard of the trademark in question at the time, or was attempting in any way to target the complainant. Is Ms. Byrne insufficiently fluent in the English language to understand the meaning of the word "and"? Apparently so, because she doesn't even address the point of whether the original registration of the domain was in bad faith, finding it apparently sufficient to claim that the current use is.

    Even the alleged bad faith in present use is based on extremely dubious reasoning. The panelist says: "This Panel finds that, since Respondent attempted to sell the disputed domain name to Complainant for $20,000 after months of negotiations, Respondent has registered the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(i)." Let me get this straight; if you own a domain, and you engage in months of negotiation to sell it, and the potential buyer doesn't like your price, and the buyer double-crosses you by filing a UDRP challenge, then you are the one acting in bad faith? If there's any bad faith here, it's on the part of the complainant.

    Ms. Byrne deserves to be disbarred for this blatantly improper decision.

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  • NAF case 105902
    This discussion has been archived. No new comments can be posted.
    The Worst UDRP Decision Yet? | Log in/Create an Account | Top | 9 comments | Search Discussion
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    Re: The Worst UDRP Decision Yet?
    by dtobias (dan@tobias.name) on Sunday May 12 2002, @08:06AM (#6260)
    User #2967 Info | http://domains.dan.info/
    Well, according to the decision in this case, the respondent had an attorney, and so did the complainant, and the panelist was an attorney. With three attorneys involved, one would think all the legalities would be complied with meticulously, but instead the result was a decision that seemed to bear no resemblance whatsoever with the wording of the policy that the decision was supposedly based on.
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