You can’t phone in a UDRP even if it’s a slam dunk
This should have been an easy case to win.
Every once in a while, I come across a cybersquatting case that seems like a slam dunk for the complainant, but the case is denied. Often, this is because the complainant submitted a poor filing. Sometimes the slam dunk cases are the ones in which the complainant phones it in.
Here’s an example that National Arbitration Forum just published.
August Image, LLC filed a complaint against Augustlmage .com. The Complainant uses the domain AugustImage.com, and the subject domain swaps out an l for the i.
According to August Image, the domain owner used the domain to send emails to defraud August Image’s clients. Seems like an easy case, right?
But August Image made a grave mistake in its filing. Here’s how panelist Charles Kuechenmeister summarized it:
In its original Complaint Complainant alleged that it obtained a federal registration of the AUGUST mark from the USPTO (Reg. No. 4,933,361, registered April 5, 2016), but the USPTO registration certificate submitted as evidence of that (Complaint Annex D) showed another entity, August Worldwide, Inc., as the owner of that registration. The Panel then issued its Request for Additional Submission seeking evidence of any rights Complainant might have in the mark. Complainant responded, saying that it did not own the trademark registration cited in the Complaint, that its inclusion in the Complaint was inadvertent.
Wow. I don’t think I’ve seen that before in a UDRP.
The Complainant continued by arguing common law rights, which should have been relatively easy to show. But it just submitted three screenshots from The Wayback Machine showing its website at a few different times in history. That’s not enough to establish common law rights.
Kuechenmeister denied the transfer. I imagine he didn’t give any benefit of the doubt to the Complainant after it submitted a trademark registration that it didn’t own.
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