It's Not Just Trademarks . . .
Date: Friday September 28 2001, @05:14AM
Topic: Uniform Dispute Resolution Policy (UDRP)

UDRP aficionados might be interested in the decision in the Cheaper.com arbitration. In theory, according to its terms, the UDRP is about (and only about) trademark conficts; the complainant in a UDRP proceeding has to show not just that he/she has a "better claim" to a domain name than the registrant, but rather that the challenged domain name is "identical or confusingly similar to a trademark or service mark in which the complainant has rights." No trademark or service mark, no claim. See UDRP Paragraph 4(a).

Would that life were so simple ...

In the case at hand, the complainant (IDT Corp.) registered "Cheaper.com" with NSI. There was a screw-up; when another party registered Cheaper.com through a different registrar (Alldomains.com), the name was, according to the arbitrator, "erroneously released by NSI." IDT went to the UDRP to try to get the domain back; and the arbitrator awarded it to them.

It's pretty unspectacular stuff; if NSI really just made a mistake, I guess I'm not going to get too worked up about correcting that mistake.

But here's what the arbitrator said about "confusing similarity," in its entirety:

"Complainant alleges that the domain name CHEAPER.COM is identical or confusingly similar to Complainant's trademark, which applies to goods, services, communication services, telecommunication, long distance and call back service, Internet provider services, as well as telephone calling card services. I therefore conclude that the registered domain name is identical or confusingly similar to Complainant's protected mark."

It's a little peculiar; because Complainant alleges confusing similarity, the arbitrator "therefore concludes" that there is confusing similarity. No proof of the existence of a trademark in the first place is even offered. Weird.

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Re: It's Not Just Trademarks . . .
by Anonymous on Friday September 28 2001, @05:30AM (#2620)
You are much too kind, or too subtle. This is part of a pattern. Errors of this nature never happen in favor of respondents.
[ Reply to This | Parent ]
Re: It's Not Just Trademarks . . .
by Grumpy on Friday September 28 2001, @05:53AM (#2621)
User #2759 Info
Actually, take another look at paragraph #1 of the "findings" in the opinion. It notes that the cheaper.com DN registration and "trademark rights" were transferred to IDT in January 2001. Since exhibits are not attached to UDRP opinions, we're left to presume that the exhibit is a legitimate assignment of the CHEAPER or CHEAPER.COM common law mark, along with its goodwill. If the assignment of DN registration and trademark rights from Berdo to IDT is valid, then we may have no more than a less-than-complete opinion.

Admittedly, I'd prefer to see IDT's proof of distinctiveness and/or secondary meaning for the mark in the opinion. IDT filed a U.S. trademark application for CHEAPER.COM back in July 2001 for its telecom and pre-paid calling card services, No. 78/072,596... so there's at least some indication that IDT may have alleged common law TM rights in its UDRP complaint or response.

I'd also prefer to know what Respondents said about the validity of IDT's trademark rights in their response, and how the panelist resolved any inconsistencies. But this particular opinion does not yet deserve a place among the true howlers of UDRP history.

- Grumpy
[ Reply to This | Parent ]
Re: It's Not Just Trademarks . . .
by plj on Friday September 28 2001, @08:06AM (#2625)
User #2756 Info
I posted this decision as my Case of Week during the week of Sept. 3. This one was probably better left to the courts. Take a look at http://www.udrplaw.net/casesoftheweek.htm if you are interested.
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  • This article comes from ICANNWatch
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