It’s well understood in courts around the world that some judges lean a bit towards plaintiffs and some towards defendants when deciding their cases. I suppose many are influenced by their private practice careers prior to donning the black robes and is also an undeniable component of human nature. This is no different in UDRP decisions where some panels are known to lean towards domain owners while others favor complaining brand owners.
In a recent decision I feel the Panel gave a certain amount of leeway to the owner of the SPEX trademark as used in the production and sale of chemicals for industrial and laboratory use, plus certain related instruments such as spectrometers and spectrographs.
The mark is registered in the U.S. and various other countries. The Respondent claims that its spexmachine.com domain is simply a play on the common phrase “sex machine” and that the word “spex” is widely accepted as a slang or short-hand term for “spectacles” (eyeglasses). He asserts that people who view the domain would also likely assume and realize that it was related to a spectacles store, even before viewing the content of its website. The Respondent claims he is planning to create an online shop offering eyeglasses. However, at the time of the complaint, over one year after the domain was created, the website is merely a registrar parking page.
Considering UDRP Elements
In considering the first UDRP element the Panel found that the Complainant had rights to its SPEX trademark and that the domain incorporates the entire mark. The fact that it adds a generic term “machine” does not change that conclusion. This is all well and good. But he went on to state that “[t]he contention of Respondent that ‘spexmachine’ is simply a play on the common phrase ‘sex machine’ is without any merit and deserves to be rejected.” Now, many respondents in other cases have foisted highly suspect rationalizations upon panels and these are almost always rejected. But here, without any explanation on the part of the Panel, I find this holding rather dismissive. In any case, it clearly shows that the Panelist didn’t care for the pop music scene of the 1970’s.
On the second element of the the Policy, the Panel noted that resolving a domain to a registrar parking page has routinely been held to not be a bona fide offering of goods or services. On this point I agree but then feel this merely puts a burden on the Respondent to show demonstrable preparations to use the domain for such an offering. Earlier in the decision the Panel mentions Respondent’s submission of emails to a potential supplier of spectacle frames in China but no mention of this is made in this section. The Panel merely refers to “Complainant’s famous SPEX mark” and states that Respondent’s use thereof undermines any claim to a legitimate interest.
Finally, in discussing the third UDRP element, the Panel adopts what has become a clear minority position on the question of whether a respondent chose its domain based on actual knowledge of a complainant’s trademark or whether it is sufficient to find that it had “constructive” (implied) knowledge based on the fact that the trademark was registered. He clearly agrees with the Complainant’s argument that the “Respondent acquired the subject domain name with actual and/or constructive knowledge of Complainant’s SPEX mark.” Since there is no evidence mentioned in the decision of Respondent’s actual knowledge of the SPEX mark for chemicals and related apparatus, and since The Panel cites a number of older UDRP decisions to support the constructive knowledge position, it must be assumed that he’s hung the bad faith finding on that point.
Was This Domain Name Really Registered in Bad Faith?
Unless there is evidence in this case that was not discussed in the decision, I have to disagree with the Panel’s conclusion on bad faith. This case involves a mark in a very specialized, industrial field and, though it may be well-known amongst participants in that field, it is unlikely that the Respondent would have ever heard of Complainant or its mark. Further, despite the Respondent having submitted evidence of the use of the term “spex” to refer to spectacles, including the names of a number of eyeglass shops in the UK such as Spex Opticians, I Need Spex, and Spex 4 Less, and despite the well-known, though admittedly dated pop-culture use of the phrase “sex machine”, the Panel dismissively concludes that there is no such connection. Finally, and to me most surprisingly, the decision implies that every registrant must conduct a trademark clearance search prior to registering its domain or risk being tagged with constructive notice of a complainant’s registered mark. While I haven’t seen all of the evidence in this case, the Respondent’s story about planning an eyeglass shop seems plausible and the subtext of the decision strongly suggests that he had no knowledge of the Complainant’s brand, nor bad faith intent when registering the spexmachine.com domain.
Although I acknowledge that there are many clever and slippery cybersquatters in the world who attempt to squirm out of UDRP cases with spurious stories and concocted evidence, I don’t believe this was the case here. At least if it was, the decision was lacking in its discussion of supporting facts and I’m left with the feeling that the Respondent is losing his domain unfairly.
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