When the Skill.com UDRP filing was published, John Berryhill shared some thoughts on why he thought the UDRP would fail. His analysis was based on information that he was able to find publicly, so there was a chance additional information would be revealed that would change the perception of the filing.
Yesterday afternoon, I noticed WIPO updated its website to show that a decision had been reached in the UDRP. I was very surprised to see the decision was a “Transfer,” particularly since there were three panelists deciding the case:
Per the @WIPO website, the https://t.co/jDtczBSDLs UDRP went in favor of the complainant. This is very surprising to me. https://t.co/9PgtXEEjHs
Decision has not yet been published. pic.twitter.com/qdKIiOlGKE
— Elliot Silver (@DInvesting) May 31, 2022
Fortunately, now that the decision has been published online, it seems that the WIPO website was incorrectly updated. “For the foregoing reasons, the Complaint is denied,” was the outcome of this UDRP. From my reading of the decision, John’s analysis about the ownership history of the domain name was on point.
The UDRP failed because the complainant was unable to prove the domain name was registered and is being used in bad faith. The panel cited the “unbroken chain” of registration as a reason for this. Here’s an excerpt from the decision that discusses this:
When a domain name is transferred from one entity to an unrelated entity, the change in registrant is considered a new registration. WIPO Overview 3.0 at section 3.9. However, while a transfer could result in a new registrant being listed, panels have recognized that where a respondent can provide satisfactory evidence of an unbroken chain of possession of the disputed domain name, such “formal” changes or updates to registrant contact information will not be treated as a new registration. This is often the case when a transfer is between entities within the same corporate control group and has been done for a legitimate business reason and not simply for purposes of evading a procedure. Id. and cases cited therein.
To be sure, in determining the legitimacy of a transfer by a respondent claiming an unbroken chain of possession, panels may not only look for proof that the transfer has been done for a legitimate business purpose, but can consider the strength of a complainant’s mark and whether the transfer has resulted in a change of use specifically to take advantage of a complainant’s mark. Id.
With these principles in mind, the Panel is of the view that Respondent has established an unbroken chain of possession in the disputed domain name since 1995. See WIPO Overview 3.0 at section 1.1.3 (“Where a domain name has been registered before a complainant has acquired trademark rights, only in exceptional cases would a complainant be able to prove a respondent’s bad faith.”)
The late 2007 or early 2008 transfer of the disputed domain name was to a controlled subsidiary of Aquent, Inc. and there is no evidence that such was done to take advantage of any trademark rights Complainant might claim in its newly adopted SKILLFUL mark. The transfer appears to simply be a change of which company within the TRI Ventures, Inc. (then Aquent, Inc.) corporate family would hold the disputed domain name, much in the same way that companies often move the ownership of their trademarks between holding companies and operating companies within the same corporate control group. As for the 2021 use of the disputed domain name by Scout Exchange, LLC, this does not appear to be a transfer of ownership of the disputed domain as Respondent has remained the listed registrant of the disputed domain name, as Complainant acknowledges.
That being said, the Panel notes that Scout Exchange, LLC is a sister company of Respondent also owned by Respondent’s parent. Respondent asserts that it has licensed the right to use the disputed domain name to Scout Exchange, LLC. While Complainant objects to the use of the disputed domain name by Scout Exchange, LLC for its website matching employers and recruiter for employees, that license does not establish that a transfer of the disputed domain name has occurred, and moreover such objection is better suited for disposition by a court of competent jurisdiction. Indeed, it is not altogether clear to the Panel whether any targeting of Complainant has even occurred here given (i) that the disputed domain name consists of a common word, (ii) the existence of multiple parties using the word “skill” in or as part of their trademarks, and (iii) the differences between the Complainant’s and Respondent’s services. Simply put, the Panel does not see this matter as a case of cybersquatting.
As the Panel finds that Respondent has established an unbroken chain of possession in the disputed domain name since 1995, when Complainant owned no rights in the SKILLFUL and SKILL marks, Complainant’s Complaint fails for not establishing bad faith registration of the disputed domain name by Respondent.
I agree with the decision, but I was a bit disappointed the panel did not address the first two elements of the UDRP (domain name is identical or similar to complainant’s trademark or service mark and the respondent has no rights or legitimate interests in the domain name). The panel decided not to address them because the complainant failed to prove the domain name was registered and is being used in bad faith. Since all three elements are required to be proven, the panel passed on addressing the first two.
In my opinion, the panel’s discussion about the respondent’s right and interests in the domain name would have cemented the fact that this was Reverse Domain Name Hijacking (RDNH). If outside observers are able to see the corporate ownership chain, it should be pretty obvious to others. I believe the UDRP filing was an inexpensive attempt to wrest control of a likely seven figure domain name, and I think a case could be made for it to have been RDNH. This would have no impact on the outcome of the case, but it’s still a stronger rebuke of the filing.
All in all, it was a good decision.
Element two would have failed anyway – so why should the panel waste time and effort on the obvious with this generic term. I am of the opinion current three member panels will discuss a claim and if all three elements will not prevail for the complainant – they will instead focus on articulating deeply on only one of the failing element.
This was the case for a very recent claim against one of my domains where that 3-member panmels focused on element two.