The WinTech.com UDRP decision was handed down at the National Arbitration Forum, and the decision was published today. The three member panel ruled in favor of the domain name owner (respondent) who was represented by the Esqwire.com law firm (Ari Goldberger and Jason Schaeffer). A finding of Reverse Domain Name Hijacking was not found, but even when a panel rules that RDNH occurred, it doesn’t really change anything.
Not only was the decision a good one for domain owners, but I also think there was some helpful language for domain owners who face UDRP filings in the future. I also think this UDRP shows the importance of hiring a good domain name attorney to defend a UDRP, as well as having 3 panelists decide the UDRP (that should obviously be a decision made by the attorney in consultation with the client).
You will want to read the UDRP decision in its entirety when you have a chance, but here are a few key excerpts that I think owners of generic / descriptive domain names will want to reference in the event of a future UDRP with similar circumstances to this case:
“Respondent contends the fact that it registered along with a wide variety of other descriptive domain names is evidence it did not target Complainant’s WINTECH mark and has demonstrated legitimate interests in the disputed domain name as an investor in generic, descriptive domain names. Evidence of rights or legitimate interests in a disputed domain name can be determined under Policy ¶ 4(c)(i) by a finding that the respondent is a generic domain name reseller with numerous similar domain names. See Franklin Mint Fed. Credit Union v. GNO, Inc., FA 860527 (Forum Mar. 9, 2007) (concluding that the respondent had rights or legitimate interests in the domain name because it was a generic domain name reseller who owned numerous four-letter domain names). Respondent points to a list of other descriptive domain names it owns. See Compl., at Attached Ex. 1, ¶ 6. The Panel agrees that Respondent’s position as a domain name investor, together with the totality of evidence indicates it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).”
“The Panel finds that Respondent has established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Forum Jan. 5, 2004) (finding that the respondent was using the domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).”
“Respondent contends that the domain name is comprised entirely of descriptive terms that have many meanings apart from use in Complainant’s WINTECH mark. Moreover, Respondent contends that the registration and use of domain names comprising such common terms is not necessarily done in bad faith, that Respondent is free to register a domain name consisting of common terms and that the domain name currently in dispute contains such common terms, The Panel agrees and finds that Respondent did not register or use the domain name in bad faith under Policy ¶ 4(a)(iii). See Zero Int’l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) (“Common words and descriptive terms are legitimately subject to registration as domain names on a ‘first-come, first-served’ basis.”); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Forum July 9, 2004) (holding that the respondent’s registration and use of the domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Forum Dec. 8, 2003) (finding that because the respondent was using the domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).”
“Respondent further argues that it had no knowledge of Complainant or Complainant’s rights in the WINTECH mark until Respondent received Complainant’s cease-and-desist letter before the initiation of this proceeding. Absence of knowledge of a Complainant can be evidence that a respondent did not register a disputed domain name in bad faith. See It Takes 2 v. C.,J., FA 384923 (Forum Feb. 15, 2005) (“[I]n the absence of any evidence of knowledge on the part of Respondent of Complainant, its mark or its services at the time Respondent acquired the domain name, the Panel finds Complainant has failed to establish registration in bad faith.”). The Panel therefore finds Respondent did not register the disputed domain name in bad faith.”
