Pending trademark applications make weak arguments in a UDRP.
While some research finds that UDRP cases filed against .com domains are becoming less common, the amount of chutzpah is definitely increasing.
Take, for example, the UDRP filed against the domain Bootler.com, which was registered in 2003.
Bootler LLC, a company that provides “searchable websites featuring goods and services of other vendors,” filed a trademark application for the mark BOOTLER at the USPTO on March 3, 2016. They claim common law rights dating back to “at least” as early as December 2, 2015.
Wow. That’s “at least” 12 years after the domain Bootler.com was registered.
According to the UDRP, the Complainant asserted that the Respondent sought a minimum of $200,000 dollars for the domain.
Refuting these claims, the Respondent states they asked GoDaddy for a formal written offer, “after receiving information of an anonymous, unsolicited offer of $100,000 dollars, but never received one.”
Despite finding no registration or use in bad faith by the Respondent, Anne M. Wallace, sole panelist refused to deliver a finding of Reverse Domain Name Hijacking.
In our opinion, this is a clear-cut case where a latecomer attempts to wrestle a domain away from its legitimate owner, as a “Plan B” to not willing to pay for it.
Bootler.com was ordered to remain with the Respondent, however. For the full text of the UDRP decision, click here.
To establish bad faith for the purposes of the UDRP Policy, Complainant must show that the disputed domain name was registered in bad faith and that it has been used in bad faith.
As the domain name bootler.com was registered 12 years before, it was impossible to prove bad faith registration.
Even the panelist admits “To suggest Respondent had the aforethought to predict Complainant would choose this very word to start a business in 2015 defies logic.”
It would appear that the sole panelist, Anne M. Wallace, didn’t find Reverse Domain Name Hijacking quoting cases where “the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent”
However, in this case the complainant was represented by counsel (Tanja Proehl of Greer, Burns & Crain, Ltd).
Greer Burns & Crain, Ltd. is a specialist Intellectual Property Law firm and would have there been fully aware that that one of the three elements in Policy ¶ 4(a), namely bad faith registration, was absent”
As a specialist Intellectual property law firm they would have known that they couldn’t prove bad faith registration and therefore couldn’t win, but they still filed the…