Onesie.com is one "doosie" of a two-sie! - Worst decision of the day take "two"-sie!

[IAmAllanShore]

So my first "worst decision of the day" was met with general disapproval; undeterred, I refile:

http://www.wipo.int/amc/en/domains/decisions/html/2007/d2007-0317.html

"Onesie.com"

And this time, no "he didn't reply" as the reason for the piss-poor decision - he replied, and was represented by counsel (And :imho: , the reply was more than adequate.).

So, flame on

-Allan :gl:

 

[labrocca]

Hmmm....it's close and imho could have gone either way. I think the respondent did the very best he could. The WIPO panels are consistent with their views that parking and crap sites like his are in bad-faith. One problem I see is the panel made a leap of faith guess that the respondent WAS aware of the Onesies TM even though no proof of such was provided. I can say that I don't believe it either and he did have links to the TM holders competitors despite his assertion they are retailers and not wholesalers.

Every parent knows what onesies are....generic the term might be but the respondants use hardly is legitimate in comparison to the rights of the TM holder.

Like I said..tough call.

The Panel believes that the Respondent has not provided any basis that would in the circumstances here legitimize a claim to the disputed domain name under paragraph 4(c) of the Policy.

That statement is really what makes this decision bad for domainers with generic names parked.

 

[DNQuest.com]

There is a phrase that hasn't been said in a while here... usage, usage, usage. Unfortunately, this is a correct decision in accordance to UDRPs. Do I like it? no. But if you have a domain that is a TM using PPC, you offer the TM or it's competitors goods/services, that will be construed as bad faith. I do not think this is a horrible decision by what I read. I still don't like it.

The respondant did ok, but in reality, a TM holder DOES NOT has to send a C+D, Wikipedia is not a good source of information in legal proceedings, if you park a domain, check to see what links are up. It is up to the domain owner to protect themselves, it is the sad reality of our business.

 

[IAmAllanShore]

Wikipedia was used by panelist in the crikey.com decision (WDOTD take 1), and has been in a few dozen others (Just search the term wikipedia and then weed out the ones where it is the complainant using it) by panelists as well.
When panelists use it, why is it unfair to think that a respondent should as well?

"Usage usage usage" - yes. But that does not trump "UDRP UDRP UDRP", which is still the official policy, which, :imho: is being given lip service at best and panelists are instead acting in their own best interests.

-Allan

 

[labrocca]

It's my opinion that when you fight a UDRP you pick and choose your battles. If you know the brand is confusingly similar...admit it. Being honest about things will get you some points in a debate. You have to choose the strongest out of the 3 positions to defend. You only need to win ONE of those in order to win the decision.

I think they should have attacked the bad-faith registration and use as best they could. Instead they seemed to be all over the place with the defense.

 

[macokla]

surprised

What surprises me, and I know its not a requirment, is if I'm reading this right no cease and desist or any prior letter was sent by the TM holder, I have the
problem with someone useing one of my TM names and my lawyer sends a letter, in fact my TM lawyer said he always first sends a letter or his domain clients recieve a letter before any other action is taken. Maybe it saves alot of time and money to cut right to the chase. Thanks

 

[IAmAllanShore]

It's my opinion that when you fight a UDRP you pick and choose your battles. If you know the brand is confusingly similar...admit it. Being honest about things will get you some points in a debate. You have to choose the strongest out of the 3 positions to defend. You only need to win ONE of those in order to win the decision.

I think they should have attacked the bad-faith registration and use as best they could. Instead they seemed to be all over the place with the defense.

B. Respondent

(i) Identical or Confusingly Similar

The Respondent does not dispute that the disputed domain name is identical to the Complainant’s ONESIES Marks.

???

They gave away that one already (Although they do bring up other TM arguments, they did as you suggest, no?).

-Allan

 

[Dave_Z]

What surprises me, and I know its not a requirment, is if I'm reading this right no cease and desist or any prior letter was sent by the TM holder, I have the
problem with someone useing one of my TM names and my lawyer sends a letter, in fact my TM lawyer said he always first sends a letter or his domain clients recieve a letter before any other action is taken. Maybe it saves alot of time and money to cut right to the chase. Thanks

That's one reality to be aware of. Microsoft filed suits in courts without even
sending C&Ds IIRC.

I agree with the decision as well, especially when the domain name's usage is
cutting way too close to the complainant's trademark use. Personally, I can't
see how onesie can be considered generic inspite of wikipedia.

Maybe I'm looking at the wrong dictionary, but I couldn't even find the word
listed anywhere. Then again, is that even a requisite for determining what's
generic or not?

Off-topic, what labrocca said reminds me of an old lawyer joke I read before.
It goes something like this:

If you're weak on the law but strong on the facts, then focus on the facts. If
you're strong on the law but weak on the facts, then focus on the law. If you
are weak on both the law and the facts, then start banging the table.

 

[DNQuest.com]

Allan, usage is very important. Use a name in bad faith, then you lose. Use a name in good faith, then you win (disclaimer, these are not guarantees. But the trend is this way. If you park a domain and the TM holder is affect by the links in some way, then expect to lose).

As far as C+Ds, yes, it is usually better to send one first, it does save time and money, but it is not required. You can go straight to court for anything. You don't have to be nice, you don't have to settle.

 

[IAmAllanShore]

Allan, usage is very important. Use a name in bad faith, then you lose. Use a name in good faith, then you win (disclaimer, these are not guarantees. But the trend is this way. If you park a domain and the TM holder is affect by the links in some way, then expect to lose).

No doubt usage is important, but what you wrote is not the UDRP (Although bad faith and legitimate interest may be linked, they are separate components.) in its entirety, although the panelist may have liked your reading of it better

Well, my WDOTD take 2 wasn't any better. I suppose I'm a strict constructionist on the interpretation of the UDRP, and I expect the complainant to either meet their burden handily, or go home with nothing.

-Allan :gl:

(bang Bang Bang!)