Lousy UDRP Decision - Clubrewardswireless.com

**Brett Lewis** · 07-31-2006, 06:35 PM

Ok. You do not know me all that well yet, but I have been at this business (as an attorney) for some time. I just got slapped with my first bad UDRP decision. It was a complicated case, but we should have won.

The only domain names truly in dispute were dictionary word trademarks. My client's proposed use was non-infringing. All the Panel seemed to care about was that they were trademarks. The Panel went so far as to hold that the Complainant had exclusive rights to a descriptive mark, and any proposed use was apparently a bad faith use, even where it was not a competitive use. My client never offered to sell these domain names to the trademark holder. He did, however, have a business where he incentivized customers to purchase services from his company with loyalty points, which he purchased from large companies with loyalty programs. He registered branded domain names in the companies' names, tailored to his industry, and then offered to partner with the companies. He actually pays the companies money for their loyalty points, so he is a purchaser.

I think the decision is lousy. Am I missing something? I'm not yet ready to engage in conspiracy theories, but I have Oliver Stone on speed dial.

Brett E. Lewis, Esq.
Lewis & Hand, LLP
www.lewishand.com

**jberryhill** · 07-31-2006, 10:12 PM

Hi Brett,

I wonder what happens when I chat with folks and they drop off of the planet...

Here's the thing with UDRP disputes. There's the truth, and then there is what a Panel will believe. Those two things do not always line up.

There's no question this was an uphill case. The real kick in the pants is when you look at, I can't remember off the top of my head... something like eddiebauercamping.com... where the domain name was expressly registered in the hope of a prospective licensing arrangement - and the respondent won.

You aren't missing anything. You were right. The Respondent registered those names absolutely in good faith (them *****ing about not WANTING the domain names transferred to them when they objected was another key point in that history). That's just the way it goes sometimes.

I'm not yet ready to engage in conspiracy theories

Someday we'll have to open the crypt of 'dark tales of the UDRP'.

**memmst** · 07-31-2006, 10:17 PM

Hi,

When losing a UDRP Decision, do they take the domain away or it remains a suggestion?

Thanks

**jberryhill** · 07-31-2006, 10:30 PM

The order is binding on the registrar. The domain name will be transferred in 10 business days, unless:

(a) a court case is filed; or

(b) the complainant fails to enter into the registration agreement with the registrar.

You'd be surprised how often (b) happens. If the complainant does not agree to the registration contract, then the domain name cannot be registered to the complainant.

What happens after that is registrar-dependent. There are domain names that have been stuck in limbo for years because the complainant was too inept to open up a registrar account to receive the domain name.

Then, there are some spectacularly funny results from situations where the respondent is the registration service reseller and has some, uh, interesting, domain renewal terms.

The backstory on casro.com is one for the book I will write before I retire.

Here's the UDRP decision:
http://arbiter.wipo.int/domains/deci...2002-0377.html

Here's the website:
www.casro.com

**Dave Zan** · 08-01-2006, 12:02 AM

There's a first time for everything. But...that sucks.

If your client told you to dispute it in Court, good luck!

**memmst** · 08-01-2006, 12:07 AM

John,
Thanks for the interesting info.

Casro.com is unbelivable as to the decision and the one you posted also does not make sense to me

**Josh** · 08-01-2006, 01:12 AM

Brett,

David Sorkin mighta voted for ya. Picking the panels is at least 90% of a UDRP win. And if Sorkin doesn't vote for ya, then frankly, no one will.

It's pretty stunning they would conclude: "CLUB REWARDS is not generic and that it is the exclusive property of Complainant"

Yet, Google shows 7.8 million+ third party uses of the "club rewards" term, EVEN after you subtract out Diner's Club, all of its other spellings, and websites.

What should prove interesting is the verdict in the ClubRewards.com pending Arb Forum complaint. If it's contradictory to this decision, then it will be like the contradictory AmericanEagleStore.com and AmericanEagleStores.com decisions

**denny007** · 08-01-2006, 05:12 AM

I would ad a "c." - the domain is transfered, the winner renew it but keep my nameservers so I still have the traffic and they pay me renewal fees on the domain. Already happened with 3 domains I lost in UDRP.

**jberryhill** · 08-01-2006, 06:06 AM

the winner renew it but keep my nameservers so I still have the traffic

Yup. Out of two disputes in which I was working for the complainant, my clients subsequently failed to properly manage the domain names.

the contradictory AmericanEagleStore.com and AmericanEagleStores.com decisions

I would note that in one of those, the respondent was indeed selling American Eagle coins.

**Brett Lewis** · 08-01-2006, 12:40 PM

I appreciate the feedback!! My fault for bringing up the facts. Never should have done it. Facts are only facts if the Panel agrees. Next time, maybe I'll go for truthiness. Who can possibly disagree with truthiness . . . except bears. See, e.g., The Colbert Report.

Btw, I did try to get Sorkin, but he was not picked.

Best,

Brett E. Lewis
Lewis & Hand, LLP
www.lewishand.com