When UDRP is wrong – Domain Name Wire
This is the type of decision that gives the UDRP a bad name.
UDRP works most of the time. A company files a clear cybersquatting complaint and wins the domain, or a company files a bad or fringe complaint and loses. It’s the few bad decisions that cause problems, and that’s something people should keep in mind when looking at the UDRP.
This morning I read the Internet Commerce Association’s (ICA) weekly UDRP case summary, and it reports a very troubling case for mohu.com. DomainInvesting and DomainGang have already written about this matter.
The question is, how do you make the UDRP work as it should, while avoiding bad decisions like this?
The CIA has given me permission to republish its executive summary and business case, which you will see below. The organization’s summary, which is edited by attorney Ankur Raheja and often includes analysis by ICA General Counsel Zak Moscovitch, is free to subscribe to.
Innocent Registered identified as a cybersquatter? A very disturbing decision.
Motennas, LLC vs. FengWenJia, NAF Claim Number: FA2203001986623
Panelist : Mr. David P. Miranda, Esq.
Quick facts: Complainant operates a television antenna business and holds rights to the MOHU trademark based on a USPTO registration dated January 22, 2013. The disputed domain name was acquired by Respondent on January 14, 2013. June 2021 at an auction and is currently inactive. The defendant operates Henan Xinyifu Technology Co., Ltd. and Henan Mohuili Information Technology Co., Ltd., which provide website development and promotion services. Defendant has rights to the trademark 魔狐 (Pinyin is MOHU) filed on June 29, 2021 with CNIPA.
Plaintiff asserts that Respondent had actual knowledge of Plaintiff’s rights to the MOHU mark based on the notoriety of the mark. Complainant alleges that Respondent previously offered the Disputed Domain Name for USD 25,000 and currently holds it inactively and may use it to distribute malware. The Respondent argues that the disputed Domain Name includes a common and generic term and that the offer to sell the disputed Domain Name was made by another holder, before the Respondent acquired the disputed Domain Name.
Detained: WHOIS information may be used to show that a Respondent is not commonly known by the domain name challenged under the Policy. Here, the WHOIS information lists “FengWenJia” as the registrant, and the lack of permission or authorization to use a trademark is further evidence that a respondent is not commonly known by the disputed domain name. Inactive holding of a disputed domain name is not considered a bona fide offer of goods or services or legitimate non-commercial or fair use under the Policy. The Respondent did not apply for a mark containing the MOHO mark until June 29, 2021, which has a different spelling than the Domain Name in question. The respondent has no rights and legitimate interests in the disputed domain name.
Complainant provides a screenshot showing that the disputed Domain Name was previously offered for sale and copies of emails indicating that a former owner of the domain offered to sell the Domain Name to Complainant for 25 000 usd. An offer to sell a disputed domain name in excess of the registration fee indicates bad faith under the policy, if the defendant intended to make such an offer when registering the disputed domain name. Failure to actively use a disputed Domain Name constitutes proof of bad faith within the meaning of the Policy.
Counsel for Plaintiffs: Joel R. Samuels of Harness, Dickey & Pierce, PLC, Missouri, USA
Lawyers for the respondents: unrepresented
Commentary on the case by CIA General Counsel Zak Muscovitch:
As noted earlier in my comments in this space, we should always be aware, when evaluating a UDRP decision, that the Panel may have had facts before it that we as observers have not. awareness. Nevertheless, as stated earlier, UDRP decisions must stand on their own, and this decision is very troubling on its face.
The panelist apparently concluded bad faith based on the fact that a former registrant, i.e. do not the Respondent, had offered to sell the Domain Name to the Complainant. This reasoning is very difficult to understand. The Respondent had apparently acquired the domain name at an auction and there was no evidence of any relationship between the Respondent and the prior registrant. Accordingly, there was no evidentiary or legal basis to attribute bad faith to the Respondent as a result of the actions of an unrelated registrant. It is very disturbing that such a clear misunderstanding should appear in a decision and bring the UDRP into disrepute.
The panelist also appears to have ignored Defendant’s trademark for 魔狐 which is apparently “MOHU” in pinyin. In the absence of exceptional circumstances (such as undoubtedly the case of RED MITO, which is summarized and commented on below in this Digest), the fact of having a trademark registration corresponding to the foreign language equivalent of the Name of disputed domain would appear to confer rights on a Respondent. Indeed, such a trademark registration would confer as much right to the Respondent as the registration of the Complainant does to the Complainant. Typically, UDRP panels do not look behind a complainant’s trademark registration and almost invariably treat it as valid if it is valid on its face. Similarly, panels should not disregard a “prima facie” trademark registration belonging to a defendant, except in exceptional circumstances – and even then, it may be more prudent in the circumstances to rely on it. to the courts to adjudicate cases involving competing brands and claims. of offence.
Panelist notes without explanation that Defendant’s trademark registration “is for a different spelling” and also refers to a “MOHO” (ie not MOHU). It is not clear from the decision why the board member concluded that the respondent’s entry is for a different spelling. A simple translation search on Google would have shown that 魔狐 is transliterated in MOHU as claimed by the respondent, and means “magical fox”. If there was a language problem here, it might have been prudent for the Panelist not to accept the Complainant’s request to conduct the matter in English despite the fact that the Registrar is apparently in China with Chinese as the language of the Registration Agreement. Section 11(a) of the Rules of course requires that the proceedings be in the language of the Registration Agreement subject to the power of the Panel to decide otherwise.
Moreover, the Panelist seems to have ignored the fact that the Respondent’s corporate name contains “Mohuili”, thus suggesting a correspondence between the Domain Name and the corporate name. The jury member, however, appears to note that the defendant is an individual rather than the corporation, but apparently disregards the defendant’s claim that he created the corporation and therefore has collateral rights.
The Panelist partly based his conclusion of bad faith on the non-use of the Domain Name. First of all, it should be noted that the domain name was registered on June 14, 2021 and the complaint was filed on March 2, 2022 – a period of only about 8 months. It is hardly unreasonable not to have a website erected in less than a year from the registration of the Domain Name.
More importantly, however, and as noted earlier in this space, many UDRP cases have ruled that a defendant has no obligation to use a domain name for a website or at all (see, for example, Write Brothers, Inc. vs. Dennis Pollack, NAF FA0210000127800: “Notwithstanding Complainant’s implications to the contrary, it is not necessary for a domain name holder to use or have any use of the domain name at the time of registration; not even for a domain name that might be similar to an existing trademark. The holder of a domain name has no obligation to immediately start operating a website upon registration of the domain name”).
Moreover, the doctrine of “passive holding” invoked by the panelist requires a finding of “bad faith registration” as a prerequisite to making a finding of bad faith based on non-use (see Telstra Corporation Limited v. Nuclear Marshmallows in paragraphs 7.8 to 7.10). In the will case, the panel first found a bad faith registration based on numerous trademark registrations, a widespread reputation, a highly distinctive domain name, and the “inconceivability” of any legitimate use of the name domain other than by the complainant. It was only after making a well-supported finding of “bad faith registration” in the first place that the panel in will may have continued to find “bad faith use” based on non-use or “passive holding” of the domain name. Such an analysis appears to be absent from this ruling, leaving the Panel’s bad faith determination based on an inactive website moot.
In conclusion, this decision is very worrying. A distinguished and experienced panelist with over 100 decisions to his credit appears to have made a highly questionable decision that could very well be appealed in Chinese courts which have mutual jurisdiction in the matter. If overturned, it will come as no surprise and could unfortunately cast the UDRP in a negative light. Anyone who appreciates the UDRP and cares about its good name should be concerned when a seemingly errant and unusual decision like this is made and should ask themselves what caused this unfortunate situation.