Three notable things about this UDRP – Domain Name Wire

This case appeals to me for three reasons.

CRF International Holding BV has lost (pdf) a UDRP filed with the World Intellectual Property Organization against the domain name TopEmployers.com. The case caught my attention for three reasons.

1. This is the second day in a row that the intellectual property company Novagraaf has intervened in a UDRP that I have read. Yesterday I wrote about a reverse domain name hijacking case for YouSwitch.biz. Novagraaf did not represent the Complainant in this matter, but sent the initial cease and desist letter. Novagraaf represented the Complainant in TopEmployers.com. I should note that research shows that Novagraaf was involved in over 200 UDRPs and only lost a handful, so this could be an anomaly. But he also should have known not to file the TopEmployers.com case. [Update: as astute reader pointed out that, while Novagraaf hasn’t lost many cases, it has been on the wrong side of three reverse domain name hijacking cases.]

2. The TopEmployers.com case is another case that could have been avoided if the UDRP admissions process required the complainant to answer a simple question:

Do you claim trademark rights to this domain name prior to the registration of the domain name by the domain owner?

In this case, the domain was registered in 1999 and it appears to be over a decade before Complainant had rights to the term Top Employers Institute (not even Top Employers). The domain therefore could not have been registered in bad faith to target trademarks. Rather than address this issue, the Complainant merely stated:

The Complainant notes that the Respondent registered the disputed domain name in 1999, a reasonably long period to be able to develop a website and acquire a legitimate interest in the disputed domain name.

3. The World Intellectual Property Organization panelist did not consider reverse domain name hijacking. Granted, the domain owner hasn’t responded, but a panelist should give it some thought, no matter if the situation warrants it. In this case there is the issue of a dead on arrival deposit given the dates. Additionally, the Complainant made a far-fetched argument that the domain’s parking page was designed to mimic the Complainant’s website. That’s a big stretch, and panelist Assen Alexiev disagreed with that.