Greenberg & Lieberman Scores RDNH Finding
Stevan Lieberman of Greenberg & Lieberman scored a reverse domain name hijacking decision in the ChinaReady.com UDRP case. The case was filed at the World Intellectual Property Organization, and the decision was published online this morning. The owner of ChinaReady.com is Warren Weitzman of Caramba LLC.
In the response to the UDRP, Greenberg & Lieberman listed 16 contentions to the UDRP. Three of those contentions include the following summarized points:
- China ready is a descriptive term
- The domain name owner has been using the domain name for PPC advertising, which is a legitimate business model
- Dictionary terms and common phrases can be used by domain name owners
In addition to these contentions, the respondent also listed a legal decision in its response that the domain owner had received from the United States District Court for the Eastern District of Virginia. I found that particularly interesting.
Aside from the thorough response filed by the respondent, I thought the discussion of reverse domain name hijacking was most interesting:
In this case, the Complainant correctly identified that the Disputed Domain Name was registered in 2006. However, as stated by the Complainant, the earliest date of its registration or use of the CHINA READY mark was in 2012. As such, the registration of the Disputed Domain Name could not have been in bad faith. This point is specifically discussed in paragraph 3.1 of the WIPO Overview 2.0 that “[n]ormally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right”. In the light of the above, the Panel considers that the Complainant could never have prevailed and that it is unlikely that this obvious deficiency in its case could have been overlooked by the Complainant, who is represented by counsel.
This is a pretty solid finding that other domain owners will likely reference in future UDRP cases involving domain names that were registered prior to a complainant’s own domain registration.
This is a good UDRP decision for domain owners to keep in mind when threatened or hit with a UDRP.
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