The latest example of why domain disputes should be handled by counsel who are specifically experienced in this esoteric area of the law is a case handled by a California firm called Payne & Fears (yes, that really is their name).  Despite the fact that the firm’s website claims that it practices intellectual property law, it recently lost a UDRP case against the domain, filed on behalf of its client TriPacific Capital Advisors, LLC.  The Respondent, an admitted domain investor, claims that its domain relates to triathlons, rather than the investments, loans, and mortgages offered by the Complainant.

The complaint stated that, although no registration exists for the TRIPACIFIC trademark, the name has gained common-law rights that predate the registration of the domain.

Unfortunately for them, the submitted evidence shows that the domain name was registered on July 18, 2001 while Complainant’s first use of its TRIPACIFIC mark was not until December 5, 2005.  In its decision, the 3-member Panel held to the well-established and majority view that “a respondent does not act in bad faith where it registers a domain name prior to a complainant’s use of a mark.”

What does this mean for the Payne & Fears law firm? It means that it either failed to adequately investigate its client’s trademark rights or that it failed to adequately advise its client that this UDRP case was a loser from the start.  The firm also dodged a bullet when, amazingly, the Panel declined to even address the Respondent’s claim of reverse domain name hijacking.

When deciding who to turn to for advice on a domain name dispute, carefully consider the knowledge and experience of your counsel in this ever-changing specialty before forking over your company’s precious cash. FairWinds Partners has filed over 200 UDRP complaints that have resulted in favorable decisions or settlements for its clients. It is also a point of pride that we will, without hesitation, advise clients when a given case is doomed to fail and where alternate approaches may be more effective.

Steve Levy
No Claim, No Pain (or Fears)

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