Sometimes the bubble-wrap POPS but sometimes it just deflates with a brief hiss. Either way, all the air goes out of it. So it is with many domain enforcement actions. Some decisions truly hammer a cybersquatter, but some just leave you unsatisfied.
In this urban drama, the domain Breguet.nyc was registered by an individual with a New York City address (as is required for all domains in the .NYC TLD). The domain resolved to a typical pay-per-click website with links to a number of other companies who compete with the famous Swiss wristwatch maker. This individual also owns a number of other .NYC domains which copy well-known brands. Sounds like a winning UDRP claim so far.
In response to a demand letter which was sent to the domain owner, someone claiming to be the owner’s “friend who is also an attorney but is not representing the owner” responded with a phone call. During the call, the friend stated that the owner “may have plans” for this domain but that he would be willing to sell it “for about what it would cost you to file a complaint.” Eventually, the range of $5,000-$6,000 was mentioned. The friend was told that this offer was not acceptable and that a complaint would be filed against the owner and his domain. During a subsequent phone call the friend restated the owner’s request for payment in the range of what the brand owner would pay to file a complaint.
The UDRP Is Filed
As you might guess, very soon after this conversation the brand owner filed a complaint. The next contact came from a different attorney, this one acknowledging that he actually did represent the now Respondent in this UDRP action. He asked if the case could be settled and was told “please ask your client if he’ll reimburse the brand owner’s cost of filing the complaint.” When this offer was rejected, the brand owner said, to no surprise of Respondent’s counsel, “OK, then how about he at least pay about what it would cost for you to defend him?”
Fast forward a few weeks and the UDRP decision is issued upon Respondent’s default. Expecting to see the Respondent tarred, feathered, and run out of town on a rail, it was somewhat surprising to read a rather brief decision in which the Panel stated that “[a]s a result of Respondent’s consent to transfer, the Panel will forego the traditional UDRP analysis and order an immediate transfer of the <breguet.nyc> domain name.”
Huh?!? It turns out that, although not constituting a formal “response”, the Respondent had sent an email to the dispute provider stating “I have no use for this domain name or interest. Please transfer the domain name to the party that is requesting for it.”
Though somewhat uncommon, it is within the discretion of a Panel to forego an analysis and discussion of the full merits of a case where the Respondent consents to a transfer of the disputed domain. This is done in the interests of expediency and in recognition of the common request of both parties.
The Potential Impact of Forgoing An Analysis in this Decision
This is not without consequence, however. Although it may be rather unsatisfying to see such a brazen cybersquatter simply walk away from the matter after having caused a brand owner significant expense, the lack of a fully analyzed decision may hamper future complainants who are trying to show that the cybersquatter has acted in bad faith by engaging in a “pattern of conduct” under par. 4(b)(ii) of the Policy. Nevertheless, the simple fact is that the UDRP was created as an expedient process with much lower costs than court litigation. As such, neither dispute providers nor Panelists are paid very much and some feel that it’s a lot to ask that a full-blown opinion be researched and written when, essentially, both parties are in agreement that the domain should be transferred.
As for this cybersquatter, he still owns the other infringing .NYC domains but may not be so lucky when the next brand owner comes after him.
- How Fast Flux DNS is Hurting Brands and How It Could Affect UDRP - October 19, 2017
- Is Nominative Fair Use of Domain Names OK For a Business That Is Related to a Brand? - May 15, 2017
- How Did 2016 Domain Name Squatting Disputes Expand UDRP Thinking? - February 23, 2017