ICA Issues Important Statement Following Devex.org UDRP Decision

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Zak Muscovitch, interim General Counsel of the Internet Commerce Association (ICA), took the rare step of issuing a statement on behalf of the ICA following a controversial UDRP decision that could impact future UDRP decisions should the same wrong approach be applied. You’ll want to read the ICA’s statement on CircleID urging UDRP panelists to follow the policy rather than seemingly set their own guidelines. The Devex.org decision could be one cited by future complainants, and I am glad to see the ICA call it out.

For domain investors, the most concerning aspect of the decision can be found in the section discussing registration and use in bad faith. The decision states:

“Respondent’s apparent belief at the time it registered <devex.org> that someone, at some time in the future, might cultivate trademark rights in DEVEX which Respondent could then exploit obviates any requirement that to succeed under the UDRP the respondent must have contemplated a particular trademark holder and/or a particular trademark.”

What this seems like to me is that the panelist is saying that if you register a domain name today and a company uses that keyword as a trademark ten years from now, they could win a UDRP complaint. I have always been under the impression that if a domain owner creates a new term – let’s say “tyranasocial” (combining tyrannosaurus and social), they would be safe in the event a company adopts that branding in the future. From my reading and the ICA’s perspective, the panelist is implying that if I were to buy Tyranasocial.com and a company called Tyranasocial is launched in ten years, my domain name would be fair game for them in the UDRP process. I don’t agree with this logic.

You’ll want to read Zak’s statement urging UDRP panelists to follow the policy rather than seemingly set their own guidelines. The Devex.org decision could be one cited by future complainants, and I am glad to see the ICA call it out.

1 COMMENT

  1. Paul M. DeCicco, the sole panelist in the Devex.org decision, also granted Traditional Medicinals SmoothMove.com in a decsion against respondent WWM in 2009. Ouch. That decision and this one shows he leans toward the trademark holder . . . but he didn’t let Ace.com go to the first trademark holder that complained, though the trademark holder claimed to be a multi-billion dollar company . . . so he made many good decisions, as a panelist.

    A reason Devex.org decision is flawed is because the respondent only owned two domains.

    The links from Sedo parking did this respondent in! The links were from a a competitor, Indeed.com, which is a job-finding service:

    http://research.domaintools.com/research/screenshot-history/devex.org/#1

    It shows in the above-linked Domaintools screenshot . . . Is this another case where parking links to competitor does the Respondent in?

  2. “I have always been under the impression […] I don’t agree with this logic.”

    Right, otherwise known as “reverse domain hijacking,” which some people appear to have apparently already forgotten (though gladly not you I’m sure).

    Where is Berryhill when you need him (be careful what you wish for, lol). It’s abundantly clear what is being said. It still sucks, but it’s not what some apparently think it is now, oddly enough.

    https://morganlinton.com/if-you-invest-in-domain-names-a-recent-udrp-decision-should-scare-you/?replytocom=156523

  3. They lost but they did not lose because of the domain or anything related to the domain.

    They lost because they had a ONE MEMBER PANEL. That is the KISS OF DEATH if you are SERIOUSLY defending ANY domain name. DUMB! DUMB! DUMB! It’s all about being CHEAP! Domainers will NEVER EVER learn and I have a tough time feeling sorry for STUPID!

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