Wednesday, May 14, 2008

Notorious domain pirate's attempt to subvert UDRP used to evidence bad faith

Don't Mess With Texas!!!!....unless you are dealing with Texas International Property Associates.

In a case where you knew the result upon seeing the Respondent's name, Messe Frankfurt GmbH v. Texas International Property Associates, WIPO Case No. D2008-0375 (Clive L. Elliott, April 29, 2008), the Panel required the transfer of to the owner of the MESSE FRANKFURT mark.

The case was no contest, as the Respondent notorious cybersquatter begged for mercy from the Panel by offering to voluntarily transfer the disputed domain name to the Complainant. When a Respondent consents to a transfer, a Panel has two options:

"The Panel may find that in a circumstance such as this, where Respondent has unequivocally consented to the transfer of the disputed domain name, it should forgo the traditional UDRP analysis and order the immediate transfer of the domain name. The Panel may alternately find that the efficacy of such consent notwithstanding, there may nevertheless be circumstances in which it is appropriate to proceed to and record its consideration of the case on its merits under the three elements." (Internal citation omitted).

The Panel chose the latter course of action. It then dedicated the remainder of the decision to explaining why it chose to render a full opinion and, in the process, detailing the bad faith practices engaged in by the Respondent. According to the Panel:

"[I]n cases of this type it would be contrary to the spirit and intent of the Policy for a party to use the expedient of offering to transfer the disputed domain name at the last minute, in order to avoid a decision on the merits and thereby minimize the risk of adverse findings/comments. That is, particularly where that party appears to have done the same previously and where the purpose of the step appears to be to circumvent the Policy. In the instant case the Panel infers that the purpose of this strategy is not only to delay the inevitable... but also effectively to thwart the Policy (where patterns of questionable conduct have always been relevant) and that this is an abuse of process and a further indication of bad faith conduct."

Kudos to the Panel. While it would have been easy for the Panel to simply call it a day and just order the transfer, as did the Panel in another decision published today, KBC Group N.V. and KBC Bank N.V. v. Bank Dir, Bankgroup, WIPO Case No. D2008-0446 (Nicolas Ulmer, May 9, 2008), you have to admire the Panel for sticking it to the Respondent. In the past, the Respondent had been able to avoid the negative consequences of a UDRP decision on the merits by consenting to a transfer. See, e.g., Nutri/System, IPHC, Inc. v. Texas International Property Associates, WIPO C.ase No. D2007-0864 (Nicolas Ulmer, December 21, 2007); but see Brownells, Inc. v. Texas International Property Associates, WIPO Case No. D2007-1211 (Grant L. Kim, December 12, 2007 (in a decision similar to the one discussed in this post, the Panel completed a full analysis before rendering its decision against the Respondent, despite the Respondent's consent to transfer).

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