BODIS

#IDEO .net : #Domain #UDRP a prime example of inconsistency in panelists’ decisions!

UDRP has been denied.

The UDRP decision for the case involving the domain ideo.net is a clear demonstration of inconsistency among the panelists.

In many cases, a domain name’s registration date can predate a trademark, and yet, the domain is ordered to be transferred to the Complainant.

Most of the time, however, a domain that was registered by the Respondent, before a trademark existed, is ordered to remain with the Respondent. That’s typically not the case when the domain changed hands.

In the case of ideo.net, the National Arbitration Panelist simply checked the registration date of both – 1997 for the domain, and 2016 for the trademark – and decided that the Complainant has no merit in their claims.

A quick search at historic WHOIS data via DomainTools, or at NameBio, would reveal that the domain changed hands several times, and was sold via Sedo in 2008 and 2011. It was last sold for $265 dollars via GoDaddy in January 2018!

Since the current registrant isn’t the original registrant from 1997, the decision should have been made differently, in our opinion.

Full details on the decision for ideo.net follow below:

IDEO LP v. Kabir S Rawat

Claim Number: FA1810001812657

PARTIES

Complainant is IDEO LP (“Complainant”), represented by Tsan Abrahamson of Cobalt LLP, California, USA. Respondent is Kabir S Rawat (“Respondent”), India.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ideo.net>, registered with GoDaddy.com, LLC.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Paul M. DeCicco, as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on October 19, 2018; the Forum received payment on October 19, 2018.

On Oct 22, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <ideo.net> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On October 24, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 13, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@ideo.net. Also on October 24, 2018, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

On November 14, 2018, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends as follows:

Complainant, established in 1991, is an international design and consulting firm that uses a design thinking methodology in designing products, services, environments, and digital experiences, including in connection with management consulting and organizational design. Complainant’s activities and marks have reached a large national and international audience.

Complainant has rights in the IDEO mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”).

Further, Complainant has common law rights in the mark, as Complainant has made continuous, extensive, and prominent use of its IDEO name and IDEO and related marks in connection with varied design-related services since 1991.

Respondent’s <ideo.net> domain name is identical to Complainant’s mark as it merely adds the “.net” generic top-level domain (“gTLD”).

Respondent has no rights or legitimate interests in the <ideo.net> domain name. Respondent is not commonly known by the disputed domain name, as the WHOIS information of record lists Respondent as “Kabir S. Rawat.”

Complainant also has not authorized, licensed, or otherwise permitted Respondent to use the mark for any purpose. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the domain name simply resolves to an inactive, parked webpage.

Further, Respondent has attempted to sell the domain name to both Complainant and other third parties for an amount in excess of out-of-pocket expenses.

Respondent registered and uses the <ideo.net> domain name in bad faith as Respondent clearly registered the domain name in hopes of selling it for a profit, shown by the emails Respondent has sent Complainant. Further, Respondent has engaged in a pattern of bad faith registration and use, as demonstrated by the two other UDRP proceedings in which domain names were transferred to the respective complainants.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant has rights in the IDEO mark through its registration of such mark with the USPTO and otherwise.

Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademarks in any capacity.

Respondent registered the at‑issue domain name December 19, 1997.

Complainant acquired trademark rights in its IDEO related marks subsequent to December 19, 1997.

Respondent holds the at-issue domain name inactively and offers it for sale.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

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

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

In view of Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

Because, as discussed below, Complainant fails to satisfy the requirements of Policy ¶ 4(a)(iii), the Panel need not fully consider Policy ¶¶ 4(a)(i) or (iii).

Registration and Use in Bad Faith

Notwithstanding that the Panel here finds, pursuant to Policy ¶ 4(a)(i), that Respondent’s <ideo.net> domain name is confusingly similar to one or more of Complainant’s IDEO related trademarks, demonstration of a respondent’s bad faith under Policy ¶4(a)(iii) almost universally requires that the complainant’s trademark rights predate the registration of the domain name.

Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right.

WIPO, WIPO Overview of WIPO Panel Views on Selected UDRP Questions ¶ 2.1 (2d ed.).

It is axiomatic that if a complainant does not have trademark rights at the time of a domain name’s registration (even though it may have such rights at the time of the parties’ dispute), there generally can be no bad faith registration on the part of the domain name registrant/respondent. Numerous decisions support this logical proposition. See, e.g.,: Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001); Digital Vision, Ltd. v. Advanced Chemill Sys., D2001-0827 (WIPO September 23, 2001); PrintForBusiness B.V v. LBS Horticulture, D2001-1182 (WIPO December 21, 2001).

Here, Respondent registered its <ideo.net> domain name in 1997, prior to Complainant’s earliest application for registration of any of its IDEO related marks. A showing that one (or more) of the IDEO related marks acquired secondary meaning, and thus Respondent had relevant common law trademark rights, sometime prior to <ideo.net>’s registration would sufficiently demonstrate Complainant having rights in a trademark for the purposes paragraph 4(a)(iii) bad faith analysis. However, Complainant’s unsupported assertion of common law rights in the “IDEO Marks” even if taken as true is non-specific as to the particular time such rights were acquired. Finally, while the Panel notes that on occasion specific circumstances have indicated to some panels that even though trademark rights in a mark have not come to fruition at the time a disputed domain name was registered, bad faith may nevertheless be found if the respondent registered the domain name in anticipation of the complainant’s later acquisition of such rights. The record holds no evidence of such circumstances.

Given the foregoing, the Panel concludes that Complainant does not meet its burden regarding Respondent’s bad faith registration and use of the <ideo.net> domain name under Policy ¶ 4(a)(iii).

DECISION

Having not established all three elements required under the ICANN Policy, relief is DENIED.

Accordingly, it is Ordered that the <ideo.net> domain name remain with Respondent.

Paul M. DeCicco, Panelist

Dated: November 15, 2018


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Comments

3 Responses to “#IDEO .net : #Domain #UDRP a prime example of inconsistency in panelists’ decisions!”
  1. Ethan says:

    I don’t see that this case is a demonstration of inconsistency among the panelists. As usual, the panelist of this case simply checked the registration dates of both and decided that the respondent won because the domain name was registered first.

  2. DomainGang says:

    Ethan – A domain’s registration date does not automatically trump a newer trademark. Many panelists consider the date of ownership change, e.g. via a sale, to be the “registration date” for the sake of the UDRP.

  3. Ethan says:

    @DomainGang: Thanks. Maybe I haven’t been in the domaining industry long enough to know that. I started my domaining in late August this year and haven’t seen a case you described.

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