How to Lose Under the UDRP Even When Respondent Fails to Respond

A WIPO decision under the UDRP dated January 4, 2008 illustrates that it is still possible to lose a UDRP arbitration even when Respondent fails to respond. WIPO and NAF arbitrators have an independent duty to review the complainant’s allegations in order to ensure that the elements under the UDRP are satisfied.

In Springborn Staffing Services, Inc. v. Choi Sungyeon, Complainant sought transfer of the disputed domain name czone.com.

Complainant was represented by Bernstein Shur, one of the larger law firms on the east coast. Complainant was Springborn Staffing, the office specialists.

This case represents the danger of using trademark counsel with limited experience under the UDRP. For whatever reason, complainant’s counsel either failed to realize that the Respondent had registered czone.com well before Complainant had established trademark rights, or failed to understand that it is a critical fact under the UDRP. Complainant’s counsel submitted U.S. trademark registration indicating first use on January 24, 2006. Respondent registered the disputed domains czone.com on September 18, 2002.

Normally, this single fact would cause experienced UDRP counsel to advise the client not to spend their money on a WIPO arbitration. There are no NAF or WIPO decisions under the UDRP to support the proposition that transfer would be appropriate when the domain name was registered well before trademark rights existed.

It appears from the procedural history that counsel believed that because Respondent failed to file any responsive pleading, they were entitled to default. Requesting that the "proceeding be dismissed without prejudice upon completion of such transfer and that Complainant be refunded the unused portion of its filing fee." Again, it is clear that counsel had little or no experience under the UDRP or WIPO arbitration rules, since this is simply not the way it works.

Complainant was able to establish trademark rights, that the domain name was identical or confusingly similar to their trademark rights, that Respondent had no rights or legitimate interest in the domain. However, the sole panelist correctly indicated that Complainant failed to show that Respondent had registered the subject domain in bad faith, since the domain name was registered more than three years before Complainant could have asserted rights in the mark by first using it in commerce.

There are a large number of trademark attorneys, and general practitioners dabbling in UDRP arbitrations. This is just but one example of bad legal advice resulting in wasted client money. This particular complaint never stood a chance.

You can read the entire decision here.