With the assistance of Ari Goldberger and his ESQwire.com law firm, Nat Cohen’s Telepathy, Inc was victorious in its WIPO defense of the generic domain name Geometric.com. The case was filed by an Indian-based software company whose name contains the generic term “geometric.”
There was a dissenting panelist in this case, who stated his belief that the company employs “a conscious strategy to register the domain name for eventual sale to a potential complainant or competitor, to prevent a trademark registrant from reflecting its name in a corresponding domain name, to disrupt a competitor’s business or to attract Internet users for commercial gain by confusing use of the domain name.”
In my humble opinion, Telepathy owns a tremendous portfolio of generic domain names (including Pennsylvania.com and Maryland.com), and they are in the process of developing its names. It takes a considerable amount of time and effort for each project, and it shouldn’t be assumed that there is bad intent simply because a domain name isn’t developed into a full website.
Fortunately for Telepathy, this panelist was in the minority, and the company was permitted to keep its generic domain name. I find it frustrating that some companies file a WIPO for a generic domain name simply because that particular term is contained within their business name. It seems like they are making a business decision that it is worth the gamble that they could potentially acquire the name at a lower cost via WIPO rather than contacting the owner to pay market value for a generic domain name. There is a good chance they will lose, but if they happen to prevail, they could conceivably save thousands of dollars.
In the WIPO case of Geometric.com, the responding company probably paid a few thousand dollars to defend its domain name, but it was necessary, as previous WIPO decisions may be cited as a history of bad faith. Even if the name wasn’t worth the cost to defend it, the responding company is almost forced to defend the name as a protective measure for other generic names in its portfolio.
Congrats to Nat and Ari, two respected people in the domain industry.
Incidentally, in 2000, the same panelist ruled against Telepathy in the WIPO case of Crew.com, and the domain name was transferred.
They probably lost the first case because as the wipo statement states… “Respondent registered the domain name on July 12, 1998, then later registered the domain name as a sub-account.”
It seems that if they would not of registered the second variation (j.crew.com) they most probably would not have of lost the case.
In response to sumbini’s remark about the Crew.com case.
J. Crew contacted us and requested that we create the subdomain at j.crew.com and join their affiliate program. My attorney at the time had the discussion with J. Crew and confirmed the arrangement with me. We set up the subdomain and joined their affiliate program. Unfortunately I was new to the business world back then and did not require that J. Crew confirm the request in writing.
Then new management came in who were not aware of the history. They initiated the UDRP on crew.com. J. Crew’s management said that even if the subdomain was authorized by an employee it was not authorized by management and therefore I was using the subdomain without J. Crew’s permission. The majority of the panel chose to believe that my use of the subdomain was unauthorized, and disregarded that the subdomain was only set up at J. Crew’s request.
J. Crew delayed payment of the affiliate commission that was due for Telepathy’s participation in their affiliate program, but after the crew.com decision they made the payment for the commissions that were owed.
The larger issue with the decision is that it holds that speculative registration of generic domains that are similar to a trademark violates the UDRP.
From the majority decision:
“This pattern of conduct prevents others from making bona fide use of desirable domain names that may correspond to their trademarks.”
It follows from this reasoning that a trademark holder of a mark similar to a generic word has a presumptive right to the corresponding domain, unless that domain is put to use in an operating business.
The flaw in this line of reasoning is clearly articulated by Gervaise Davis in his dissent. As Davis states the majority panel’s view reduces the three tests of the UDRP to one test:
“Thus, the only test left, in each case, is whether the Respondent had a demonstrable plan to use the domain name for a bona fide purpose prior to registration or acquisition of the domain name. This is a gross over-simplification of the issues involved in preventing abusive domain name registrations.”
Unfortunately neither WIPO or ICANN has any procedures for policing their panelists. Panelists who substitute their views for UDRP policy are allowing to continue serving as panelists, as the dissenting panelist in the geometric.com case has done in dozens of decisions, including ordering the transfer of alloyrods.com, over the past seven years.