In a one member panel decision on a the domain name staybrutal.com the UDRP panel found the registrant was a serial cybersquatter .
The domain was registered through Enom’s privacy service and therefore the owner was “Whois Privacy Protection Service, Inc. / Whois Agent”.
The complainant took the position that the domain owner, the Enom Privacy service “is a notorious cybersquatter with a history of UDRP decisions.”
The complainant went on to say later in its complaint: “The Complainant repeats that the Respondent is a known cybersquatter”
The panel agreed.
“”Complainant alleges that Respondent demonstrates a pattern of bad faith registration and use of domain names using other entities’ registered marks, as evidenced by the multiple UDRP decisions involving Respondent where bad faith and no legitimate interests were found.…The Respondent denies that it has a history of bad faith registration and use of domain names in prior UDRP cases, however the Panel is not convinced by Respondents arguments in this matter.”
“The Panel observes that Respondent in the present case is identified as “Whois Privacy Protection Service, Inc. / Whois Agent,” and the decisions mentioned by Complainant involve, among other, “Whois Privacy Protection Service, Inc. / Whois Agent.” The Panel therefore agrees with Complainant, as evidence of several UDRP decisions involving Respondent in which the domain name is transferred to the complainant is evidence of Respondent’s bad faith registration and use of the staybrutal.com domain name under Policy ¶ 4(b)(ii)”.”
So anyone using this same whois privacy service no risks being labelled a serial cyber-sqautter even if they have nothing to do with these previous cases
The panel went on to award the domain to the trademark holder, even through they didn’t apply for their Trademark until after the domain was registered;
“Finally, the Respondent denies that it could have registered the disputed domain name in bad faith because Respondent assumed registration of the <staybrutal.com> domain name four months before Complainant filed its trademark application for the STAY BRU TAL mark and nineteen months before Complainant began using its mark in commerce in relation to all the goods listed on its trademark application.”
“The question is: Can bad faith be found if the disputed domain name was registered before the trademark was registered or before unregistered trademark rights were required?”
“The Panel notes that the Complainant has used its trademark since 2006, and therefore can claim common law trademark rights since that year. The disputed domain name was registered first in 2010.”
This clearly demonstrates the need to severely overhaul this process, permit appeal, and eliminate the single-panelist process in favor of multiple panelists. This person is obviously a complete jackass!
Interesting reading, thanks Michael.
Cheers, Graham.
Alas the UDRP processing people are blatant obvious morons as we already knew. A monkey throwing darts at Yes or No is likely to reach more logical conclusions, how could they be any more wrong.
Panelist is wrong on multiple fronts here. Firstly, the domain was first registered in 2004 which predates the TM application. From 2004 to late 2009 it was owned by the same company. Then it dropped and got picked up on 1/2/2010. However is it even known to the panelist if the current owner who seems only to be identified as “Whois Privacy Protection Service, Inc. / Whois Agent.” is not in fact the first party who originally registered it in 2004 well before the TM application?
I ask because recently I accidentally let a domain drop that wasn’t in private reg. It went to NJ, didn’t sell but instead got picked up by Register.com later. They put it in private reg and I ended up buying it back for $200. So now I own the domain that I didn’t have in private reg before. So apply that example to this scenario…
It’s ironic that they cite private reg as something that’s indicative of someone being a cyber squatter. Because many of the large corporations that take domains in UDRP keep most of their domains under these same services as well.
I don’t see how this is possible. How can they not know that WhoIS privacy is not the real registrant, but a service someone has paid for? Can someone contest the decision once it has been handed down? This is very unsettling – it’s almost as if none of the domains we’ve paid for are safe anymore.
Yet another horrible UDRP decision that further proves we need UDRP reform. And the only organization that is pushing for UDRP reform on behalf of domain owners that read this blog is the ICA. Please consider becoming a member of the ICA today, or at least making a donation at http://www.internetcommerce.org/ otherwise you will keep reading about these bad decisions and one day it could be your domain that has been hijacked.
http://staybrutalclothing.webs.com/aboutus.htm
2011?
This is a scary decision and one that trademark holders will no doubt latch onto. I expect Demand Media/Enom to appeal this ruling.
This is a case outcome that based on the known facts screams for the respondent to file an ACPA law suit in federal court to hear the case de novo. That is, realistically, the only appeal process presently available.
KJP: There is no appeal process under the UDRP. The U.S. federal courts have said that under the ACPA they are not bound by UDRP action or decision. A timely filing in federal court will toll the transfer pending the resolution of the ACPA case.
Jonathan Kramer, Esq.
Jonathan, that’s what an appeal of the UDRP decision is — seeking a Declaratory Judgment that there is no infringement.
The UDRP is filed against the respondent.
“Respondent means the holder of a domain-name registration against which a complaint is initiated.”
If the domain registrant is listed as “Whois Privacy Protection Service, Inc. / Whois Agent,” then clearly the registrant IS a serial cybersquatter based on prior findings.
If you don’t like it then don’t use that privacy service.
The respondent is clearly outlined in the UDRP agreement between customer and registrar. If you choose to make a third party the legal respondent? Too fucking bad if they don’t work hard for you.
I did not mean to cuss in the prior comment. Mr Berkens, if you would like to remove the offensive word please do so.
To everyone I apologize for that slip, for a moment I forgot where and who I was.