BODIS UDRP : WIPO panelist saves Respondent’s domain in absentia


Sometimes, something odd happens at the WIPO that handles UDRP cases, and in the case of, the Complainant failed to get the domain.

Despite having a trademark for ULINE, the Complainant’s attempt at getting the Finnish registrant to surrender the .net was foiled.

Uline at Google.

Uline at Google.

In a notable decision, the sole panelist stated that the Respondent’s listing of for sale at Afternic, was irrelevant:

“Has the Respondent’s use of the Domain Name helped to support the Complainant’s contention that the Domain Name was registered in bad faith? No. On the evidence before the Panel the Domain Name does not appear to have been used at all. The fact that it appears to be up for sale at a price likely exceeding the Respondent’s out-of-pocket costs in registering the Domain Name is of no consequence if the Respondent did not have the Complainant in mind at the time. There is no evidence before the Panel to suggest that the Respondent was even aware of the Complainant at that time.”

The Respondent has been offering for sale, currently set at $6,750 dollars. But the panelist stated that when was registered in 1998, the ULINE mark was barely 2 years old and thus practically unknown.

Essentially, the panelist utilized the doctrine of laches as part of his decision-making, by stating it took almost 13 years for the Complainant to bring the case forth:

“What evidence has the Complainant produced to show that the Respondent is likely to have known of the Complainant or its trade mark back in December 1998 when the Domain Name was first registered? Absolutely nothing. The earliest of the trade mark registrations upon which the Complainant relies has a filing date of February 14, 2011, over twelve years after registration of the Domain Name.

How about pre-existing unregistered trade mark rights? The Complainant makes no claim to any such rights and the Complaint contains no information to enable the Panel to infer the existence of any such rights. True the earliest trade mark registration upon which the Complainant relies features a “first use in commerce” claim dating back to December 1996, two years ahead of registration of the Domain Name, but the Complainant made no mention of that fact in the body of the Complaint and, as indicated, the Complaint contains no information on its business back in 1998; nothing to establish the existence of pre-existing trade mark rights, still less anything to establish that the Respondent might have had the Complainant or its trade mark in mind when registering the Domain Name.”

What can we say, this case is quite remarkable and one for the books. You can read the full text of the UDRP decision for here.

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