A few days ago we wrote about Netflix losing the URS on the domain name Netflix.website in what we described as the strangest decision of the year, which was decided by the same Examiner as this case, David J. Steele Esq.
Here we go again:
The domain name doesn’t resolve but the domain holder said “I registered this domain with the intention of creating a fan site, with news and updates on the Complainant’s service. I have all intention of proceeding while respecting the Complainant’s marks, and will not confuse the public as to my site’s ownership (E.g. will not use the Complainant’s logo).”
The Examiner said because “such a use by Respondent could evidence a legitimate noncommercial or fair use under the Policy” (that is assuming the domain holder ever puts up such a site) he “cannot conclude whether or not Respondent has a legitimate right or interest to the domain name”
However Mr. Steele goes on to say “besides the domain holders self-serving statement, Respondent has failed to put into the record any facts which support his claim.”
Yet “because this record raises, but does not provide adequate information to I must find for the Respondent on this element.”
So basically all someone has to do is tell Mr Steele he plans on using a domain name and it seems Mr. Steele is inclined to deny a URS filed by a trademark holder.
Mr. Steele may single-handedly kill off the URS as a viable option for trademark holders.
OK, so I gave the guy and the Examiner in the other story a pass because the domain had expired even though I think it was registered in bad faith.
But this time the Respondent, the Examiner, and the Policy flat out gets it wrong!
The problems start at the Registry for trademark holders who don’t play the Sunrise and TMCH games, and It’s a matter of pay me now or pay a squatter later if you lose the URS.
I wish the solution was as easy as offering TM holders permanent protection by locking down their terms across all extensions. But it’s become a nightmare because TMs are being applied for, and sometimes granted, for every word in the book, which is ridiculous to say the least.
so i think this is the panelists who think they are not being paid enough for a URS easy slam dunk case, saying you need to use UDRP becuase if there is any dispute or thought, we need to be paid more to decide.
for you CSI and Matlock watches, its almost as if they think URS is for summary judgement only, any thought or pushback needs UDRP, and more money for panelists for thier time.
i kinda agree.
In my opinion fair use has never been flushed out, if i can write an article called 10 Great Thing About Netflix, maybe i should be able to own a domain name also… and what the process is saying is that “policy” decision wont be made in URS, but needs a UDRP.
page howe
Page
I’m saying you can’t find fair use when the domain is not in use
I think Steele is making exactly the right calls. The URS was intended as a fast-track for the most flagrant abuses and was never intended to be a substitute for the UDRP .. If the respondent has a heartbeat, is a real (non- fictitious) person who stands forward to defend their actions then the URS should fail and the case should go to a UDRP or the Courts if the complainant so-wishes.
Even if every panelist followed Steele’s model, the URS would still live long and prosper as many of the most prolific cybersquatters don’t want the added scrutiny of any response and would just fold quietly on the name, which is exactly what the URS was designed for.
Frank, with all due respect, what right does a respondent have to stand forward and defend their actions for using another’s trademark?
I understand the concept of non-commercial use as a “fan site” but for what?
And so the URS is designed to force the TM holder into the more expensive UDRP, the courts or let the cybersquatter fold…until the next one comes along?
There’s got to be a better way.
Enter the UDRP or litigation Bobby. I’m a fan of due process and I get the URS isn’t perfect but this is an ‘additional’ very quick (some would say easy to abuse) path for complainants to unseat respondents from valuable names. The very nature of this low cost fast-track mechanism is biased against registrants. If the respondent was a serial cybersquatter and gave a more half-hearted “i’m – err – building a fan site” response I’m sure we’d have seen a transfer. This isn’t the end of this dispute – it’s just the end of the super-ease cheap route and I think the panelist called it correctly kicking the can down the road to the UDRP or courts.
Frank I think Bobby makes a legitimate point. Netflix is not generic, they are not called films.com or shows.com. It is distinctive, why should they have to defend anything ?
This is the right call. URS is not designed for examing all the merits of the case, URS is more like summary judgment. Only do be used in severely obvious case. Using a trademark is not an obvious case if the use case is freedom of speech or fan site and it is also clear the site is not the trademark holder.
URS should die a quick death.
Too much opportunity for abusive use, especially if money flies under the table.
Re: the new g’s: Didn’t we all know that there would be a fustercluck with trademarks? Who couldn’t see this coming?
ICANN didn’t give a damn and neither do the registries, who are raking it in.
There is no natural law that this combination of letters, Netflix, can be created only by the complainant. There may be thousands of people who can create or created or will create this combination of letters. That’s why a trademark is effective only within its class of business as specified in the trademark certificate. This means another creator of the same combination of letters is allowed by law to register it for the class of his own business. Who can deny the possibility that the respondent him/herself may also have created the same combination of letters with his own creative brain power. And what’s wrong with his/her holding the domain name with the intention to use it for his butcher shop or porn site, etc? Or even as an inventory for his domain selling business?
That’s one of the most ridiculous things ever written on this blog and there are alot of ridiculous things written on this blog. Yeah my fingers just found their way to Google it’s the name of our new restaurant, Google.