A couple of months ago, I wrote an article about the pending UDRP for PPD.com. Pharmaceutical Product Development, Inc. and Pharmaco Investments, Inc. filed the UDRP for PPD.com in mid-April, and the decision was just posted online.
For some reason, the respondent did not respond*Update* The respondent responded late to the UDRP complaint, and the sole panelist found in favor of the complainant, so the domain name will be transferred to the company that filed the UDRP. In my opinion, this is at the very least a $30,000 domain name (likely worth more), and the complainant was able to get it for the $1,500 filing fee plus attorney fees (barring a lawsuit by the domain owner).
Despite another UDRP panel’s decision that took the doctrine of laches into account, this panelist did not agree. According to the decision,
“The Panel is aware of a decision under the Policy in The New York Times Company v. Name Administration Inc. (BVI), NAF Claim No. FA1349045, where a Panel held that laches provided “a valid defense in any domain dispute where the facts so warrant”.
However desirable a limitation period may be – as other dispute resolution systems such as the Nominet Policy in force in the United Kingdom and New Zealand have recognised – under the Policy, laches can, in this Panel’s view, not be a defence. In this Panel’s view, laches is a purely equitable defence which can only be invoked in courts exercising an equitable jurisdiction. It can have no place in a system where the rules are set by the Policy which operates an administrative procedure.“
The panelist also cited a few other reasons for his decision, including the lack of a website in ten years of ownership, potential for confusion and brand tarnishment, as well as the “Respondent’s track record of bad faith findings in at least ten decisions under the Policy” (which weren’t listed).
I disagree with this decision though. There are 71 valid acronyms for PPD, according to the Acronym Finder website, and I don’t see why this one complainant deserves to be able to take it from the owner. I don’t believe the domain name was being used in a way that could confuse consumers into thinking it was associated with the complainant. I also don’t really see non-usage (or less than optimal usage) as bad faith.
Domain owners should read the decision and learn from it.
** Update **
I didn’t see this when I read through the complaint, but the respondent did attempt to respond to the complaint:
“On June 2, 2011, the Center received an email alleging to have been sent by “James van Johns representing, Damian Macafee, on behalf of ppd.com”. It is to be noted that the Complainant asserted that “James M. van Johns” was a pseudonym for the present Respondent. A similar claim as to the name of the Respondent was made in Sony Kabushiki Kaisha v Damian Macafee/QTK Internet, WIPO Case No. D2009-1134.
The email was received after the Panel had been appointed. A Response had been due on May 4, 2011. The purported filing of a Response on June 2, 2011, was therefore some four weeks out of time.
The only excuse offered for this late filing was “due to serious family health issues”. No evidence in support of this assertion was offered, such as a medical certificate or any details explaining this bland statement.
In the absence of any compelling evidence such as might justify acceptance of a late Response, the Panel has decided not to accept it. “
Did the complainant include the respondent’s previous losses in their filing or did the panelist do them a favour by going out and gathering evidence for them?
Panelist appears to be quite happy to go off researching for the complainant, but won’t contact the respondent for confirmation of medical problem. Typical.
ALSO, note the complainant added a “typo” attack for good measure, claiming ppd.com was a typo of ppdi.com. Gaaaaaaaaa.
Panelist decided that not developing a domain within 10 years of first ownership was a good enough reason for it to be taken away and given to somebody else.
I never saw that in the domain name ownership requirements anywhere – “Registrant must develop the domain within ten years of registration or it will be given to someone more deserving”. WTF?
Sad, Sir Ian Barker, very sad.
Very good observations – thank you.
I think this decision (which I’m not convinced was wrong) was almost totally motivated by the pattern of conduct by the registrant. I blogged about it as well. Anyway, he cited to at least one decision that collected a bunch of this guy’s losses, something like 10+ adverse decisions. That’s certainly enough in my mind to establish a pattern of conduct.
HOWEVER, that pattern of conduct was in relation to, you know, recognizable word marks. I don’t know that there were any other 3-letter gTLD losses in there. So this guy really did himself no favors by not getting legal help in time.
Under which section of the UDRP guidelines does a registrant’s previous UDRP decisions count against him? I looked at the bad faith section, and nothing would indicate that should be a factor:
“(i) the domain was registered primarily for the purpose of selling it to the complainant or a competitor for more than the documented out-of-pocket expenses related to the name; or
(ii) the domain was registered in order to prevent the mark owner from using it, provided that the registrant has engaged in a pattern of such registration; or
(iii) the domain was registered primarily to disrupt the business of a competitor; or
(iv) by using the domain, the registrant has intentionally attempted to attract users for commercial gain by creating a likelihood of confusion as to source or affiliation.”
(ii) is the section that specifically goes after it. The domain was registered to prevent the mark owner from using it (in order to get payment out of them, obviously), and the guy engaged in a pattern of similar conduct. That pattern of similar conduct is what refers to the prior decisions. This is what I blogged about, the “inference” of bad faith that arises when you’ve got this black mark on you. Which, frankly, I think this guy could have, and probably should have given what you said the domain was probably worth, overcome with a good response in this case.
I interpreted it a bit differently, but do see how it makes sense. However, specific to this particular case, I take issue with what you’re saying “The domain was registered to prevent the mark owner from using it (in order to get payment out of them, obviously)”
Without a response from the respondent, what makes you so sure that he wanted a payment from them? I am sure had the owner contacted the complainant to sell his domain name anytime in the last 10 years, they would have put it in the complaint, so there’s no real evidence of what you are stating as “obvious” fact.
One thing you need to keep in mind is the owner has privacy on his domain names, so you and I (and the panelist) has no way of knowing how many of his names are infringing on other brands or not. Perhaps he owns 500,000 domain names under privacy and has only had 10 adverse decisions out of hundreds of thousands of names. We just don’t know and I don’t think it’s right to make an assumption, especially on a 3 letter name that didn’t try to confuse consumers/visitors into thinking it was the complainant’s company with a website or even a parked page with competing links.
Since today I do not have any respect for UDRP.
They should be ashamed of themselves.
For this to happen in this day and age is shameful, failure to respond on time, who knows the circumstances behind the owner, there has to be a certified mail process or something, this name does have a $25K+ valuation, not a reg fee, this is a serious asset, for this lone panelist to hand it over without concern, is very troubling, This panelist needs to be reviewed.
Where in UDRP does it state what is accepted forms of proof for a family issue?
It’s a very arrogant notion to assume someone does not have a right in a domains because they have not developed it in ten years.
Again, there is not a requirement to develop in the UDRP as Drewbert points out.
Renewing a domains for ten years shows me the owner had a interest in the domain.
He or she could be relaxing in the Amazon rainforest for two weeks only to return and find out the UDRP process ended yesterday.
This panelist response is really saying:
“Sorry! You lost your valuable domain name. Oh, and by the way here’s a black eye for you . You have now lost a UDRP and are considered a cybersquatter and you did not even get to defend yourself from it. Now, go fu*k off. We have your UDRP fees already also.”
What a flagrantly bunk process it is defending yourself from domain thieves !!!
The UDRP process should be changed to two months at least and late responses should be allowed if reasonable evidence exists as to why you could not have filed in time.
Hi Elliot. I was just saying what the argument is… The owner of the mark is claiming that this registrant (in any given case) is keeping them from registering this domain which contains their mark. It’s not stated in that paragraph section but I think it’s understood that the person doing that is doing it to extract payment from the mark holder. CLEARLY this case is pretty different, because of the three letter domain. But this guy didn’t defend (much) so he fell victim to the inference of bad faith that I blogger about. I think this is a great lesson for all domainers to take to heart: you have to fight for your rights sometimes. It’s true of every legal right. Nobody is going to look out for you. You have to seek counsel and get help quickly. Or, if you really are just squatting, write it off as the cost of doing business. This guy may have done that.
Dude, this guy got branded as a squatter long before this decision.
I looked at other decisions against him and in most he does not respond.
I think with a good defence it is quite likely he keeps the name, his past “sins” and laid back approach cost him. Apparently he has done well enough to not care, good for him!
Can somebody explain how a panel can consist of just one person?
Thats not a panel.
I’ve seen this a few times and never really questioned it but I am curious to how the UDRP dispute process determines how many members review a UDRP filing. Maybe John Berryhill or someone can pipe in ..
It depends on what the complainant asks for (1 or 3 member) and what the respondent asks for (3 member). Default is 1. There are additional costs for 3 member panels, too (also depends on forum). Respondent pays nothing unless it wants a 3 member panel.
Civil liberties are being stripped away by government more and more these days. Unfortunately this seems to be happening on the web also when I see cases like this. Some UDRP’s have justice but when I see LLL.com’s like this lost just because it may stand for this companies names then it makes me angry.
I own LLL Inc. does that mean I can sue for LLL.com? this is a endless cycle, a can of worms, what has this person done.
Again another theft. Sadly, I see this as a recurring and increasing trend in the upcoming months. It’s absolutely ludicrous and certainly not rocket science. There’s really no need for any legal jargon here. Simply put, a 3-letter domain was nabbed from the legal registrant. Regardless whether he responded late, early or not at all.. it’s cases like this that should never have even been opened in the first place. It’s becoming absurd that companies such as the one in this case feel they can get away with this. Sadly, it seems they can and ARE. Heaven forbid if someone actually DOES own a three letter domain that also happens to be their legal initials. But no! If some big bad pharma company wants it, lookout! Yeah, of course they wanted that 3 letter domain. However, they should have had the freaking foresight to register it first. Morons. Watch out, because if this trend continues, all of you with valuable portfolios are sitting ducks and apparently at the mercy of a single organization. This needs to stop.