UDRP Need UDRP cases where domain names taken away despite registration date earlier than TM

Maybe this can help you:

http://www.wipo.int/amc/en/domains/decisions/html/2009/d2009-0567.html


In the findings section, you can also find an other relevant cases.

Not exactly what you asked for but it might help (it's almost the same as what Dominique posted above):
https://www.dndisputes.com/search

I was just looking at this same issue a few days ago. In a DomainNameWire article of December 2015, the decision to award Camilla.com to the Australian company who used Camilla.com.au, is reviewed. The decision went against Mrs.Jello LLC and Andrew called it "horrible", as the name had been owned before the TM.

http://domainnamewire.com/2015/12/11/ica-camilla-com/

Just out of curiosity, I am intrigued by your use of the word "Need" in the subject line.

I'm aware of quite a number of cases fitting this description, but I'm intrigued by why someone would "need" a set of cases which are unusual and largely discredited.

For example, if someone came up to me and said they "needed" to find some ammonium nitrate and fuel oil, I'd like to hear a reasonable explanation of why they needed these things before directing them to where they might find them.

jberryhill said:

Just out of curiosity, I am intrigued by your use of the word "Need" in the subject line.

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The other day I was discussing with a businessman. He mentioned a good domain name he owns. I went and saw it parked with links which have words very close the the name of a well known company. I warned him about the risk but he said it will never happen because the registration date of his domain name is much earlier than the company I mentioned to him. That's why I "need" such a case so that I can show him that registration date alone does not protect him.

jberryhill said:

Just out of curiosity, I am intrigued by your use of the word "Need" in the subject line.

I'm aware of quite a number of cases fitting this description, but I'm intrigued by why someone would "need" a set of cases which are unusual and largely discredited.

For example, if someone came up to me and said they "needed" to find some ammonium nitrate and fuel oil, I'd like to hear a reasonable explanation of why they needed these things before directing them to where they might find them.

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Does this mean that it is unlikely that in the future a UDRP panel will find in favor of a complainant where the TM date is later than the registration date of the domain name?
Thanks

techname said:

Does this mean that it is unlikely that in the future a UDRP panel will find in favor of a complainant where the TM date is later than the registration date of the domain name?

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I'd say it's "less likely" than it was, say, a couple of years ago.

Regardless of what the rules are, there is a natural tendency to want to address situations where someone is doing something that, to the sensibility of the person making the decisions, is "wrong" in some sense.

So, let's say that someone registered "kittens.com" in 2007 and the domain name was being used in a way that related to kittens. Then, in 2013, a large company releases some hot new product called "KITTENS". It's the greatest thing ever. Everyone wants one. It's a product worth billions of dollars.

The guy with kittens.com sees this, and so he decides to start selling counterfeit KITTEN products and accessories on the kittens.com site.

Is that "wrong" in some general sense? Sure it is. Selling counterfeit branded merchandise is certainly wrong, and violates any number of laws in various jurisdictions.

1. The KITTEN people file a UDRP. What result?

There are panelists who, seeing that the kitten.com guy is clearly doing something wrong, will come up with a rationale as to why the domain name should be transferred. They'll do this because they can clearly see that the domain registrant is doing something "wrong", and they wouldn't feel particularly good about their sense of justice if they let the domain registrant get away with it.

This is a classic problem in all kinds of systems for judging things, and goes well beyond the UDRP.

It's sort of like a situation in which I rob a bank, but for some reason the prosecutor decides to charge me with stealing a car. Did I steal a car? No. But I did rob a bank. The problem is that I'm being charged with the wrong thing. So, maybe the judge decides to go ahead and let the jury find me guilty of stealing a car since, after all, "we should lock him up anyway."

That's an extreme example, but the point is that there are differing approaches to how far one can bend the rules to get at something "wrong". That kind of thing is fine until it gets into areas where people have, as everyone does, their own ideas about what is "wrong". There are still UDRP panelists who, in general, find buying and selling domain names to be distasteful.

Other panelists are more likely to say that the Complainant is using the wrong tool for the job at hand, and see their role not so much as one of "doing justice" in some broader sense, but administering a limited set of rules designed to apply to a defined type of behavior - i.e. deliberately registering domain names to take advantage of trademarks, which is not the same as fortuitously exploiting a trademark corresponding to a domain name which one already had.

These situations are like classic morality puzzles which end in the question "who is at fault here?"

For example, we can probably agree that our kittens.com registrant is up to no good for deliberately deciding to sell counterfeits after the KITTENS mark became well known. There may still be a few UDRP panelists who would transfer that domain name, on the basis of a variety of justifications.

But the typical situation is more along the lines of the kittens.com registrant had no idea that someone had developed a mark for KITTENS, had the domain name parked the whole time, but the PPC system through the magic of relevance algorithms started displaying advertisements for KITTENS products and accessories. In that situation, the registrant did nothing, and is something of a victim of the trademark owner's decision to go ahead with a trademark which corresponded to the domain name. In other words, that sort of situation is more a product of the complainant's own deliberate behavior, than the non-action of the domain name registrant.

That last situation is where you find that UDRP panelists have been all over the map in UDRP decisions between about 2010 and 2015, and tapering off more recently such that most panelists will require the domain name registration - by the current registrant - to have post-dated whatever might be the earliest claim to have owned the trademark (except in a few rare circumstances where the domain registrant had some sort of inside information or other reason to know that there was a new product/service to use the mark which was in development or proposed use at the time the domain name was registered).