Two interesting UDRP decisions were handed down today but two different UDRP panelist both involving the trademark holder of “Rocket Pay”
In the first case Rocketgate PR LLC went after the direct match domain name rocketpay.com, which was registered in 2002, some ten years before the trademark was filed the sole Panelist Nathalie Dreyfus found for the domain holder in denying the UDRP, however refused to find Reverse Domain Name Hijacking making a troubling statement that “Presently, given Respondent’s lack of argumentation, the Panel considers that a case of Reverse Domain Name Hijacking has not been proven. Besides, the Disputed Domain Name is identical to Complainant’s trademark. Thus, it is not “blatantly obvious,” as stated by Respondent, that Complainant acted in bad faith.
Not sure about that one since the trademark didn’t exist until 10 years after the trademark was filed
The panel went on to say:
“Complainant waited over thirteen years after the registration of the domain name to initiate these proceedings;
Respondent has not engaged in activities that could induce one to believe that he registered the Disputed Domain Name without rights or for a non-legitimate purpose. Indeed, Complainant only states that the Disputed Domain Name is inactive without any further argumentation.
In light of these elements and given the poor argumentation provided by Complainant, the Panel considers that Complainant has failed to prove a prima facie case that the Respondent lacks legitimate interest or rights in the Disputed Domain Name rocketpay.com.
Therefore, the Panel finds that Complainant has failed to fulfill the requirements of Paragraph 4(a)(ii) of the Policy.”
In the second UDRP the same company owning the same mark, Rocket Pay, obtained the domain name RocketPays.com from the domain holder.
The difference?
Rocketpays.com was registered on October 9, 2014 which is after the trademark was filed and the domain holder who was different than the domain holder in the first case did not file a response.
The sole panel of Honourable Neil Anthony Brown found:
Respondent registered the disputed domain name on October 9, 2014, only a few days after Complainant applied for its trademark and after Complainant first used the expression ROCKETPAY in commerce;
The domain name does not resolve to an active website;
Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
Complainant submits that Respondent fails to use the domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website constitutes an inactive holding. The Panel notes, however, that Complainant has not provided evidence of this allegation. As the Panel finds the allegation sufficient and more likely to be correct than not, it finds that Respondent has failed to use the domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
The Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
Complainant alleges that Respondent uses the domain name in bad faith because the resolving website constitutes an inactive holding. Complainant asserts that the domain name is “not in use for business or any other purpose.” The Panel notes that Complainant has not provided evidence of this allegation. But as the Panel finds the allegation sufficient and more likely to be correct than not, it finds that Respondent uses the domain name in bad faith under Policy
Secondly, Complainant argues that Respondent’s registration of the domain name constitutes opportunistic bad faith. Complainant claims that it began using the ROCKETPAY mark on October 1, 2014 and that Respondent registered the domain name on October 9, 2014.
The Panel notes that Complainant has not provided any evidence to suggest use of the ROCKETPAY mark prior to the filing date with the USPTO, October 27, 2014.
Nevertheless, the Panel finds there is some strength in this submission as it can scarcely be a coincidence that Complainant began using the ROCKETPAY mark on October 1, 2014 and Respondent registered the domain name on October 9, 2014. It appears therefore that Complainant’s common law trademark was on foot before Respondent registered the domain name, albeit only a few days before the registration.
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed , domain name using the ROCKETPAY mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Accordingly, it is Ordered that the domain name be TRANSFERRED from Respondent to Complainant.
Good thing they lost on RocketPay.com. It would have been a sad day in UDRP history if Rocketgate PR LLC got rewarded the RocketPay.com domain name.
Haha great they didn’t get the one they really wanted.
The one variable that could have effected the loss of the second one (rocketpays) is the lack of no response. The chances of losing an UDRP is drastically increased if you do not respond.
I always say the same about Respondents being unresponsive to UDRPs. It does not matter if its a trademarked term or not (or whether the Respondent will lose or not), just respond to the damn UDRP!
Why register a conflicting domain if you’re not going to stand up for it. That, in my opinion, is cowardship and weakness.
It may well be cowardship…or it may be that respondents don’t speak the language, didn’t read that unexpected spam in under 20 days, are scared to death, don’t know their rights, forwarded it to the web designer, or simply don’t have ~5,000. USD for an attorney to file the response. It is the duty of the UDRP panelists to protect the rights of the respondent, not to assist complainants in taking advantage of parties who can’t defend themselves.
Language barrier, spam excuse, being afraid, etc., are all weak arguments in my opinion. The domain industry and the governing body is a shady one at large, and domainers tend to be on the loosing end.
However, I’d like to address your remark about the Respondent possibly not having $5,000 for an attorney to file the response.
You don’t necessarily need an attorney to file a timely response, which is done electronically usually via email. Moreover, the Respondent have no obligations to pay any fees when responding to a UDRP; the Complainant pays all fees associated with the administrative proceeding unless the Respondent requests for a three member panel, only then is the defendant required to cover part of the cost with the Complainant.
Unless the Respondent has big pockets for an attorney, he/she can file a response independently. There are many free resources out there on how to properly file a UDRP response.
Finally, it is not the duty of UDRP panelists to protect anyone’s right. My only issue is, majority of their decisions are biased and in favor of Complainants who often exploit the loopholes in UDRP to steal domain assets. It is also disturbing how Panelists barely find RDNH against Complainants even when a finding is obvious — just because the fees they pay line their pockets?!
All in all, domainers should always respond to UDRPs no matter the circumstances (unless of course he/she is advised not to by their legal counsel). Not responding is not a good record and could serve as a potential loophole that can be exploited by (future) Complainants to hijack domains.
We’re almost on the same page. However, you state, “Finally, it is not the duty of UDRP panelists to protect anyone’s right.” Not so. URDP panelists do have a duty to protect the rights of both parties. In the ADR, “An arbitrator has a responsibility not only to the parties but also to the process of arbitration itself, and must observe high standards of conduct so that the integrity and fairness of the process will be preserved. Accordingly, an arbitrator should recognize a responsibility to the public, to the parties whose rights will be decided, and to all other participants in the proceeding.” (AAA Code of Ethics.) In the WIPO, the IBA Guidelines on Conflict of Interest state that an “objective conflict of interest exists” where, “The arbitrator has a significant financial or personal interest in one of the parties, or the outcome of the case.” (IBA Guidelines, Non-Waivable Red List, 1.3.)
There’s also an IBA duty to disclose dubious impartiality where, “The arbitrator has publicly advocated a position on the case, whether in a published paper, or speech, or otherwise.” (IBA Orange List, 3.5.2.) Dreyfus’ position is an aggressive bias in favor of her lucrative client base: the corporate complainant. From her website at http://www.dreyfus.fr/le-cabinet/: “Our goal is to support you with all the flexibility and responsiveness that our structure allows…” What does this mean? It means she is a aggressive lobbyist. Specifically, “…Dreyfus is a member of the main professional organizations and participates in the most important international conferences related to Intellectual Property…” And here she lists no less than twelve (12) governing bodies in which you will find her clawing down registrants’ property rights and important public policy interests in favor of corporate complainants. (www.dreyfus.fr/le-cabinet.)
Harvard Law Review called this sort of thing ‘trademark activism in the UDRP.’ Which is a nice turn of phrase for ‘bribed panelist.’ Dreyfus’ conflict of interest in the UDRP is tallied below, at a conceivable 2,250,000. USD from just ONE of her many UDRP clients. If that obvious bias escapes anyone, we can look to her own published words, “Brands are vulnerable on the Internet: they can be victims of counterfeiting and diversion through domain names, trade links or spam. Sufferers are constantly more and more diversified. Only a rigorous policy of prevention and monitoring can help to deal with it.” (Dreyfus, N., Trademark Infringement on the Internet.) “Vulnerable sufferers?” Is that impartiality?
In sum, Dreyfus cannot serve as a panelist because she has an objective conflict of interest. She is prohibited by the AAA Codes of Ethics and IBA Conflict of Interest Guidelines above, but also by ICANN and WIPO requirements that panelists “shall be impartial and independent.” (WIPO Art. 22.) A panelist who 1) profits prodigiously and directly from outcomes under the Policy which are favorable to complainants and which promote abusive filings (no RDNH), and who 2) aggressively advances and publishes her position that these complainants are “vulnerable sufferers” must be removed from the rosters of UDRP arbitrators immediately.
Re: Rocketpay.com UDRP.
So why no RDNH, sole panelist Nathalie Dreyfus?
For a UDRP complaint to succeed, the UDRP requires (1) the domain name to be registered in bad faith and (2) the domain name to be used in bad faith.
(1) The domain name rocketpay.com was registered in 2002 and the complainant’s trademark didn’t exist until 10 years after the trademark was filed. So UDRP not satisfied here.
(2) Nathalie Dreyfus confirms “Respondent has not engaged in activities that could induce one to believe that he registered the Disputed Domain Name without rights or for a non-legitimate purpose”. So again UDRP not satisfied here.
As Nathalie Dreyfus sums up “The Rules define Reverse Domain Name Hijacking as the fact of “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.”
The complainant was represented by Lawyer Arthur R. Petrie, II. He is a Senior Attorney. He understand the law. He would therefore know that this case could not succeed, yet proceeded with this case, maybe hoping for a non-response that his case would gain ownership of this domain name by default for his client.
You can understand why there is so much disillusionment, not with the UDRP, but with UDRP panelists’ decisions.
Nathalie Dreyfus has been called out as an unethical panelist for years, with ludicrous bias towards her client base. How bright a light has to be shone on her before she follows the clear Policy language and the ‘shall find RDNH’ mandate? Respondents are paying $5000+ in legal fees to fill her shallow trough and pay for her career self-promotion. Imagine if a federal judge scurried around shilling for clients by waving around a favorable settlement! If you can’t do the job with honor and impartiality, then don’t pick up the phone. Dreyfus should have had her accreditation stripped years ago. With this disingenuous blindspot about RDNH, she has made a cottage industry of ushering federal lawbreakers into the UDRP. If Dreyfus wants to keep turning the UDRP into a bonhomie meet-and-greet for her and her past and future trademark clients, then she should issue a kickback to respondents for their legal fees:
http://www.thedomains.com/2014/11/24/udrp-panel-throws-case-out-but-doesnt-find-rdnh-on-domain-registered-9-years-before-tm/
http://domainnamewire.com/2009/12/28/2009-domain-dunce-award-panelist-andrew-f-christie/#comment-533380
http://www.domainarts.com/2011/10/21/my-personal-trainer-registers-sofitdc-com-receives-cd-from-sofitel-sent-by-a-wipo-panelist/
“Nathalie Dreyfus has been called out as an unethical panelist for years, with ludicrous bias towards her client base.”
If so, then why do WIPO and NAF continue to use Nathalie Dreyfus as a panelist?
@Sammy
Why is Dreyfus still accredited? Because the WIPO and NAF mistakenly believe that arbitration bodies and arbitrators are protected from a class action lawsuit. Not with this level of corruption.
Dreyfus has been involved in ~812 UDRP disputes, either as panelist or as complainant’s attorney. Her clients include Accor Hotels, Hoffman-LaRoche, Michelin, Renault, L’Oreal, etc. Why is she so popular with high-paying clients? Because she favors corporate complainants (see links above), both when she’s the attorney, and when she’s the UDRP panelist.
Is that corruption? She has represented Accor Hotels in ~225 complaints. At 5-10K USD per dispute, that’s between 1,125,000. and 2,250,00. USD. For that client alone. It is her stock in trade to spin bad faith out of thin air for her clients—are we to believe that as a panelist she would undermine her business model? She does not: http://domainnamewire.com/2014/11/14/bespoke-udrp/
Can you imagine the discussions when soliciting clients? “So, when we take pernod.com from Marianne Pernod, and dismantle businesses like Accors.com and AccordAmerica.com, and try to strip generics like mercure.ch, that’s Reverse Domain Name Hijacking. But don’t put your wallet away! I’ve been yanking the teeth out of RDNH since 2001.’
This is Dreyfus’ cash cow and she’s going to keep milking it until the WIPO or the NAF kicks over her stool. It is unconscionable that she is accredited as a panelist.
IMO, maybe these former domain owners should file a class action suit against this panelist. If these connections are true, there is an obvious conflict of interest.
Unless people take action, this person will continue to make questionable decisions in favor of clients (IMO).
No guesswork needed, the cites are to public records. UDRPsearch.com for decisions and complainant representation, and dreyfus.fr for lobbying and publications.
A class action against ICANN could be filed by Tucows, for instance. Look at these 18 ludicrous disputes they had to respond to: http://www.udrpsearch.com/search?query=tucows&search=parties. How about 10K x 18 = 180,000. USD in legal fees, plus actual damages in harm to reputation, lost productivity, and stripped assets, and THEN punitive damages. The complaints about corruption in the UDRP have poured in from academia and the media for years, with zero attempt to address the problem—a lawsuit is the only route that will get results.
Now is the time to file such a lawsuit. A fat settlement will help ICANN hang onto its ‘non-profit’ status in the face of that 357M in gTLD money they’re wading in. And they can always summon Dreyfus and other shill panelists for indemnification. Using the UDRP as an attorney’s personal marketing tool, particularly for handing down decisions that contravene the law of the court with in rem jurisdiction? That means all of an attorney’s profits would be attachable, not just a few million in client fees from the disputes.
http://www.thedomains.com/2010/02/11/nonprofit-icann-releases-salaries-beckstrom-over-2-2-million-guaranteed-cfo-270k-lawyer-230k-plus-plus/
http://www.circleid.com/posts/20160114_real_facts_stats_about_icann_gtlds_big_fail_so_far/
Interesting outcome from the same organization – a definite divide. A TM holder wins one, loses another. Both domains are similar with singular and plural versions up for grabs.
However, the TM holder wins the plural and loses on their exact match name. These two decisions involve the same UDRP system and two difference panelists.
IMO, this complainant dropped the ball early on and a few years ago not purchasing RocketPays.com on the drop or at least checking for this domain on the drop (GoDaddy will send emails out to past domains now available). IMHO, this company just wants the easy way out; file suit to take what they should pay to acquire.
We couldn’t make these results up in our wildest dreams. IMO, such a flawed system.