ICA UDRP Digests

Respondent Offered to Transfer Domains for $50.20 This case highlights how the UDRP is not intended to be a trademark court. Its mandate is strictly limited to resolving cases where a domain name was registered in bad faith, i.e. targeting of a trademark owner’s mark and goodwill. Cases which involve a determination of who has “better” rights or whether trademark

Panel: “Sloppy, Incomplete” Complaint “Overstates” Complainant’s Case We are clearly at the point where Panels will not tolerate sloppy and incomplete pleadings. As noted by the Panel, “the Factual Background section of the Complaint comprises two paragraphs” [and] the Bad Faith section does not address the obvious difficulty that the disputed Domain Name was registered decades before the Complainant or

Minority Panelist Would Have Found RDNH Despite the law being clear, some Complainants still try to rely upon a merely pending trademark application. In this case, the Complainant initially relied on an EU trademark application. As the Panel noted, “it is well established in UDRP jurisprudence and confirmed by WIPO Overview 3.0 that a pending trademark application would not by

Panel Finds RDNH Despite No Response Filed This case reminds us once again, that RDNH can and should be found in appropriate circumstances, even when not requested by a Respondent. This is particularly clear when a Respondent has not even responded – and therefore could not have requested RDNH – yet RDNH is still found by the Panel. In finding

Panel: Complainant Cited “Nonexistent Cases” Resulting in “Suite of Massive and Misleading Errors” It is well-established that a Respondent need not expressly make a request for RDNH in order for a Panel to consider the issue sui sponte. Indeed, as noted in UDRP Perspectives at 4.1, a Panel will not have satisfactorily discharged its duty under the UDRP without an

Rapper Tried to ‘Reverse Hijack’ Domain Name This case contains several notable aspects. The Panel provides us with a helpful reminder of what the WIPO Overview says about “Rights and Legitimate Interest”: WIPO Overview 3.0, section 2.10.2 indicates that “For a respondent to have rights or legitimate interests in a domain name comprising an acronym, the respondent’s evidence supporting its

What Actually Constitutes a Prima Facie Case? The Panel made the clear and unequivocal statement that, “If a domain name is legitimately held the registrant can ask whatever price it likes for it”. This is correct and is consistent with UDRP Perspectives at 3.5 (“Setting a Price and Offering for Sale”; “If a Respondent has a legitimate interest in a

Panel: ‘Complainant Should Pay Respondent’s Costs’ Notably, the Panel stated that “if there were a provision in the Policy authorizing the award of costs to a prevailing Respondent, the Panel would be inclined to so order in this case, but there is no such provision in the Policy.” The Panel however, went on to clarify that it “does not intend

Respondent Cannot Rely Upon Previous Registrant’s Rights Sometimes a Respondent will make an argument that is meritless but nevertheless requires attention by the Panelist. Such was the case here, where the Respondent alleged that the Complaint was a “refiled case” despite the fact that the prior case was brought against the previous registrant. As the Panel noted however, “although the

Complainant Demanded Respondent Sell Domain Name or Would Bring UDRP Most UDRP cases are ”run of the mill” cases that consist mainly of very similar fact patterns which disclose a clear case of cybersquatting. A significant minority however, are laden with unique circumstances, challenging legal questions, or conflicting evidence. Some such complicated or unique cases may be resolvable despite the