Jobetty LLC, dba Mudpuppy’s Tub & Scrub lost its attempt to grab the domain name mudpuppies.com

The three member panel of Nathalie Dreyfus, Sandra J. Franklin and Diane Thilly Cabell basically threw the case out finding the Complainant’s trademark was filed some 9 years after the domain name was registered.

However on the issue of Reverse Domain Name Hijacking the panel found:

“Respondent submits that the Complainant has abused the UDRP proceeding by filing the claim and that “Reverse Domain Name Hijacking” should be awarded. In the Panel’s view such assertions are speculative comments and do not justify any finding or decision by the Panel.”

Well why not?

If you have to have three elements to win a UDRP and you clearly don’t even have a valid trademark that pre-dates the domain registration and in this case it was 9 years after, how did the Complainant not bring the case in bad faith?

Its the definition of bad faith.

Bringing a UDRP on a trademark on a domain name registered 9 years before you registered your trademark is attempted legal theft plain and simple and should immediately result in a RDNH ruling

Also it should be noted that only a “majority of the Panel is of the view that Complainant must have trademark rights preceding the date when the domain name in issue was registered.”

That means one of the panelist thinks it could be fine to hand over a domain based on a trademark registered after, in this case well after the domain was registered.

That is scary.

Here are the short facts and findings of the panel:

Complainant has a registered trademark for MUDPUPPY’S with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3977432, registered June 14, 2011, filed October 28, 2010).

Respondent’s late husband, Jon Wichmann, registered the mudpuppies.com domain name on October 22, 2001. On January 28, 2008, Jon Wichmann changed the registrant information of the disputed domain name to the Respondent’s name, Katarzyna Bieniek.

A majority of the Panel is of the view that paragraph 4(a)(i) means that a Complainant must have trademark rights preceding the date when the domain name in issue was registered.

The Complainant should establish trademark rights before the disputed domain name’s registration in order to prove that the Respondent was aware of the Complainant’s services and wanted to take benefit of the trademark’s notoriety.

If the Complainant does not meet the requirements of this paragraph, he cannot succeed.

The domain name registration dates back to October 22, 2001. The Complainant’s trademark registration was filed on October 28, 2010 and registered June 14, 2011.

There is no evidence before the Panel that the Respondent was aware of the Complainant’s activities at the time when the disputed domain name was registered, at least 9 years prior.

Therefore, the Panel cannot establish that the Respondent targeted the MUDPUPPY’S trademark in order to obtain benefits by redirecting the Complainant’s consumers to their competitors.

As the Complainant has not brought any proof or argument in support of common law trademark rights dating back to 2001, the Complainant failed to establish the requirements of the first element under the ICANN Policy.

In order to prevail in this proceeding, the Complainant must prove all three elements under Paragraph 4(a). As the Panel concludes that the Complainant failed to prove the first element, listed in Paragraph 4(a)(i), this means that the Panel does not have to consider whether Complainant has proven the remaining elements contained in Paragraphs 4(a)(ii) and 4(a)(iii).

“Respondent submits that the Complainant has abused the UDRP proceeding by filing the claim and that “Reverse Domain Name Hijacking” should be awarded. In the Panel’s view such assertions are speculative comments and do not justify any finding or decision by the Panel.”

Having not established the first element required under the ICANN Policy, the Panel concludes that relief shall be DENIED.