Lesson Learned: If you get notice of a UDRP proceeding – defend it.
In another UDRP decision last week, the rights to the domain name Weldon.com were transferred from the owner to the Complainant, IPS Corporation, largely because the original owner failed to respond whatsoever to the complaint. IPS Corporation owns several trademarks worldwide for the term WELD-ON, which is a bonding material for use with all types of plastic pipes. However, the weldon.com website as it stood before the decision of the Panel, simply contained third-party links and a search engine.
As previously stated in the Lady Gaga domain dispute post from last week, in order for a domain name to be transferred from the owner to the Complainant, three things must be proven to be true (via ICANN):
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In the first case, the Complainant argued that the weldon.com domain name is confusing similar to his WELD-ON trademark, as it contains the same name, simply without the hyphen. The Panel easily agreed with this claim.
However, the second point was even more of a cake-walk for the Complainant than the first. Because the original domain owner did not respond to the complaint, it was easy for the Panel to assume that there was no legitimate interest in the domain name. In the absence of a response, however, the record must be looked at to determine rights or legitimate interests. Because of the nature of the website (third-party links with a search engine), some of the links were sending the viewers to competitor websites of the IPS Corporation. The Panel swiftly concluded that this was not a legitimate noncommercial use and found agreement with point number 2.
On to the third point: IPS Corporation was able to show that the original owner of the domain has had other “bad faith” registrations in which they used other trademarks to host the same sort of website. Because of the past history and the fact that the domain hosted competitor links, the domain owner was found to be gaining commercial benefits from the trademark held by IPS Corporation, and therefore, the domain name was found to be used in bad faith.
After establishing all three points, the Panel transferred the rights to the domain from the original owner to IPS Corporation. Perhaps one of the most important lessons in this case is that because the original domain owner did not respond to the complaint, it was easy to prove the three points as there was no rebuttal, giving IPS Corporation the rights to the domain name.
The entire decision can be read here.
This post was drafted by Heather Mims and edited by Eric Crusius.