In another example where WIPO panels seem to be making new law, given different legal rights to domain holders that park their domain rather than developed them, we have the case of the domain name; dothomes.com

The Complainant owns United States of America trademark registrations for DOTHOME (filed on April 26, 2007 and issued on August 11, 2009) and for .HOME (filed April 25, 2007 and issued February 10, 2009), both in respect of residential real estate marketing and advertising services.

It also owns a logo featuring the phrase “DotHome”, and the domain name dothome.info which was  registered on April 26, 2007.

The panel found the Complainant first used its DOTHOME and .HOME trademarks in interstate commerce on August 8, 2006, when it made a presentation to decision-makers affiliated with the National Association of Realtors about its yet-to-be-established service.

The domain name dothomes.com, was first registered on April 6, 2002. The Respondent acquired the domain name from unrelated third parties at some time around November 9, 2007. It has used the domain name to resolve to a website at which the Respondent indexes web pages from real estate websites, using its “deep-crawling” search technology. The Respondent first offered this service sometime in 2006, under the brand name EXTATE and using the domain name extate.com.

The service was re-branded DOTHOMES, and offered using the disputed domain name dothomes.com, on January 1, 2008.

In denying the complaint, the Panel strongly noted that the domain was being used  in “connection with a bona fide offering of a service.

“According to paragraph 4(c)(i) of the Policy, such a use of the disputed domain name demonstrates that the Respondent has a right or legitimate interest in the domain name, so long as such use occurred “before any notice to [the Respondent] of the dispute”.

The issue according to the Sole Panelist therefore became one of did the Respondent had notice of this dispute before January 2008?

“””In this Panel’s view, it would be wrong to equate constructive notice of a registered trademark with “notice of the dispute” for the purposes of paragraph 4(c)(i) of the Policy. Something more is necessary. It seems to this Panel that it should only be said that the respondent has “notice of the dispute” when, at the very least, the respondent was, or reasonably should have been, aware both of the existence of the complainant’s mark and of the other facts that are necessary for a complainant to have reasonable prospects of success in an action under the Policy.””

“”In this case, the evidence does not establish that the Respondent was actually, or reasonably should have been, aware of the Complainant’s DOTHOME trademark prior to the first cease-and-desist communication from the Complainant.””

“””In all these circumstances, this Panel concludes that the Respondent was not, and could not reasonably have been, aware of the Complainant’s DOTHOME trademark until sometime after January 1, 2008, by which time the Respondent had commenced its bona fide offering of its real estate search engine service under the “DotHomes.com” brand and from the dothomes.com domain name. “”

Ok so lets review.

Since this domain was used as a site rather than a parked page, constructive notice in the form of a trademark is not sufficient to give the trademark holder the domain.

The Panel seems to be saying if the domain went to a parked page, then constructive notice (a trademark) would be sufficient to take the domain away, but since this was a developed site, then the complainant needed to show actual notice like a C & D letter or a lawsuit being filed,  prior to the site being set up and used under the domain.

A double set of rules, one for parked pages and one for developed sites.

The problem is that many WIPO decision have found that a parked page is a “bona fide offering of a service”.

Therefore, this is another in a string of WIPO decisions which distinguish  “bona fide offering of a service” between parked pages and developed sites,  which at least to me seems to be outside of the clear language of the rules and many previously decided cases.

Combine this trend with a fast track WIPO scheduled to start next year, parked pages are going to be even in more jeopardy.

I’m also not sure that any “mini-sites” are going to fair any better under this line of reasoning by WIPO, guess we will have to wait and see when one of those cases is brought.

But this is another troubling case.