Trademark domains aren’t to play with.
We thought we’ve seen it all, but this UDRP at the WIPO takes the prize – for the most ballsy domain registration of all time.
It’s one thing to go after trademarks, brands and other intellectual property that belongs to commoners or companies.
When you register the name of a law firm, however, you have some explaining to do about the size of your gonads.
Pinsent Masons LLP of Glasgow, is a British law firm, that possesses a trademark since 2008 as well.
The Respondent registered the domain PinsentMasons.lawyer late last year, according to DomainTools.
One would expect the Respondent to either provide a valid reason or to somehow admit they screwed up with this obvious infringement of a law firm’s name, but that did not happen.
Responding outside of the proper channels and past the due date, the Respondent sent out a “manifesto” of sorts:
“Our defence is a simple one. We intend to use this domain as a forum for clients and others to post their feedback and comments about this organization. This is a service to the community and is protected in the United States, Great Britain, and in the free world at large under freedom of speech and freedom of expression.”
That same day the Complainant wrote to the Center recording its objection to the allowance of late or further submissions from the Respondent, in reply to which the Respondent wrote:
“The panel needs to decide whether an extension of time to file our defence should be granted. The panel needs to know what the defence will be in order to decide this issue. There is no prejudice to the applicant at all. This case should be heard on its merits. With respect, if you do not at least put this to the Panel then in effect you are deciding the issue, which is the very issue the panel is empowered to consider. This process needs to follow the ordinary tenets of fairness. All of these communications ought to be put to the panel and the panel to decide.”
Naturally, such responses aren’t taken into consideration, especially when they argue over the panel’s authority to adjudicate the domain’s control.
As noted by the panelist:
“On balance, the Panel finds that the Respondent’s conduct falls under paragraph 4(b)(i) of the Policy. In making that finding the Panel has taken the following factors into account. In failing to respond to the Complaint in a timely manner, the Respondent has not shown any evidence of its stated intentions for the disputed domain name. The disputed domain name was offered for sale before notice to the Respondent of the dispute. In reply to the Complainant’s letter or demand, the Respondent asked for valuable consideration in excess of the likely out-of-pocket costs related to an unused domain name. There is also some evidence that the Respondent has given a false registration address.”
Subsequently, Debrett G. Lyons, sole panelist, ordered the domain to be transferred to the Complainant. For the full text of the UDRP for PinsentMasons.Lawyer, click here.
