Wednesday, May 7, 2008

We'll resolve your domain dispute...unless it is complicated, that is

In Family Watchdog LLC v. Lester Schweiss, WIPO Case No. D2008-0183 (William R. Towns, April 23, 2008), the Panel refused to transfer familywatchdog.com, familywatchdog.net, and familywatchdog.org to the owner of a U.S. Trademark Registration for the mark FAMILY WATCHDOG. In so doing, the Panel made clear the limitations of seeking redress under the UDRP.

The Panel spent considerable effort recounting the facts and allegations between the parties, which involved multiple cease-and-desist letters, offers to sell the disputed domains, filing of trademark infringement complaints with the concerned registrars, and a pending petition before the TTAB to cancel the Complainant's federal trademark registration. Faced with conflicting factual claims and an assortment of legal claims, the Panel took the high road:

"On the basis of the statements and documents submitted by the Parties, the Panel has concluded that this case involves disputes regarding trademark rights and usage, trademark infringement, unfair competition, deceptive trade practices and related state law issues beyond the scope of the Panel’s limited jurisdiction under the Policy."

Accordingly, the Panel concluded that it "considers that the domain name dispute in this case is ancillary to the trademark, unfair competition and other trade related disputes between the Parties. Such disputes are more appropriately decided by traditional means, as they turn on questions of fact that cannot be resolved on the basis of the Parties’ statements and documents, and on questions of law beyond the limited scope of the Policy." (Internal citations omitted.) In short, rather than play factfinder and sort through the various legal claims, the Panel resolved to maintain the status quo and find in favor of the Respondent domain name owner.

So as to be clear that it was not offering any opinion of precedential value, the Panel threw the following bone to the Complainant: "[T]he Panel, in rendering its decision below expresses no view on the respective merits of the Parties’ cases, as presented, in the instant dispute. In any event, this decision would have no precedential effect upon any subsequent judicial proceedings."

But was this really a case that the Panel should have shied away from? In my opinion, the undisputed facts pointed to a decision in favor of the Respondent that should not have been watered-down by the Panel. According to the Complainant, the Complainant first used its trademark on June 7, 2005. It applied to federally register its mark on November 9, 2005, and obtained its trademark registration on Ocotber 17, 2006. The Complainant launched its website in August 2007. The Respondent, on the other hand, registered the disputed domains on January 6, 2005. A website first appeared at the disputed domains on February 12, 2005.

Based on these facts, it seems clear that the Respondent registered and used the disputed domain names before the Complainant even alleges that the Complainant first used its own mark. While the Respondent's actions after the Complainant established trademark rights may support a finding of bad faith use of the domains, the UDRP requires both bad faith registration and bad faith use. Here, the facts just do not appear to support bad faith registration, as the Complainant failed to demonstrate trademark rights prior to the Respondent's registration of the disputed domains. And unlike the situation in Futurebazaar India Ltd. v. Rashid Arashid, Chen Xianshang, Bao Shui Chen, WIPO Case No. D2008-0175 (John Swinson, April 10, 2008), blogged here, the Complainant did not even own a domain name registration or claim a web presence prior to the Respondent's registration of the disputed domains.

1 comment:

gmlevine said...

It may very well be that the Panel in Family Watchdog v. Lester Schweiss “punted” rather than exercised “admirable restraint” (in the words of Ron Coleman "likelihoodofconfusion.com" commenting your blog essay). However, whether panelists get the scope of the UDRP right – what is within and what is not – is a tricky question. Although not expressly referring to Rule 18(b) of the Policy in the Family Watchdog decision – the Panel’s discretion to suspend or terminate the administrative proceedings – the situation is similar to a pending lawsuit and, in such circumstances, a UDRP complaint is appropriately dismissed. It will be interesting to read the outcome of the Family Watchdog contest because, if the complainant, respondent before the TTAB prevails, he may want to try again with a UDRP complaint. If the petitioner prevails, the case is closed.