Why Merlin’s UDRP Win is Frustrating
Earlier today, Andrew Allemann published an article about Merlin Kauffmann’s successful UDRP defense of the FiberStar.com domain name. In this UDRP proceeding, he was represented by domain attorney John Berryhill.
I am glad to see that Merlin’s company won this UDRP. I am also glad to see language in the UDRP decision that favors people who own domain names as investments. I especially thought this was most relevant to people who invest in domain names:
Complainant’s assertion that Respondent’s sale price of $35,000 for the disputed domain name is evidence of bad faith under Policy ¶ 4(b)(i) fails also. Complainant’s mark, FIBERSTAR, is composed of two common words, “fiber” and “star” and, as Complainant contends, fits within up to 15,000 generic-word domain names that are owned by Respondent. Moreover, Complainant admits that it initiated negotiation over price by first contacting Respondent in connection with purchase of the disputed domain name. Since, as reasoned above, there is no sustainable evidence that Respondent acquired the disputed domain name in bad faith, Respondent, as a legitimate reseller of generic-word domain names, is free to set the prices he deems reasonable for names in his inventory. See Pocatello v. CES Marketing, FA 103186 (Nat. Arb. Forum Feb. 21, 2002) (“What makes an offer to sell a domain bad faith is some accompanying evidence that the domain was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner.”); see also Puky GmbH v. Ignatius Agnello, D2001-1345 (WIPO Jan. 3, 2002); see also Fifty Plus Media Corp. v. Digital Income, Inc., FA 94924 (Nat. Arb. Forum July 17, 2000).
The trouble I have with the UDRP process in general is that a different panel or panelist could completely find this irrelevant. The circumstances of another UDRP could be almost exactly the same and Mr. Berryhill could even represent a different domain owner, yet a panel could just as easily rule that offering to sell a domain name for $35,000 shows bad faith.
Domain names have become valuable assets for businesses, including those that invest in generic domain names. Owning and monetizing descriptive domain names is a legitimate business model. I think it is unfortunate that the UDRP process can be a crapshoot.
I am glad to see Merlin’s company prevail with a well reasoned UDRP decision, but it is frustrating to know that a UDRP with very similar circumstances could be decided in favor of the complainant while citing bad faith.
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