You Gotta Know When To Fold ‘Em… Know When To Walk Away…
October 4, 2014
By slevy
The UDRP decision over the domain name myschool.com seems to be a classic case of a complainant who got angry at an ambitious domain investor and over-estimated the strength of its trademark rights.
The Facts
The Complainant in the National Arbitration Forum (NAF) Claim FA 1578228 owns a 2009 TM registration for the mark MY SCHOOL and uses it at its www.MySchool411.com social website where students, parents, faculty, and alumni can connect with others from their school. The Respondent is a domain investor and owns many other domain names that it created or purchased at auction. These domains are made up of generic or descriptive words, and there is no claim that they infringe on other trademarks. The domain name in question in this complaint, myschool.com, was first created in 1996 but Respondent purchased it at auction in 2013 for $42,000 and has it resolve to a pay-per-click site with school related listings.
The Complainant claims that the “Respondent is using the domain name to redirect Internet users and to extort money from Complainant to purchase the domain name” since the Respondent had offered to sell the domain to the Complainant for an unspecified amount of money. The Respondent claims that its domain is merely descriptive, that it had no knowledge of Complainant or its mark, and that “Complaint is trying to hijack the domain name to which he was never entitled.”
The Decision
The three-member Panel held that “The selling of domain names comprised of generic terms is a recognized and legitimate practice” and noted that the “Respondent has legitimately used the domain name for advertising related to the descriptive nature of the domain name itself” – the school related links on its site. So, the case was denied because Complainant couldn’t prove that the Respondent has no rights or legitimate interest in the domain.
Unpacking the Results
Although the Complainant somehow managed to get its mark registered in the U.S., this doesn’t mean it’s a strong mark that is capable of being enforced against all other uses.
The fact that the Complainant’s business is also relatively obscure likely didn’t help. American Airlines can enforce its mark more broadly because it is famous and has been around for decades. However, a little known site called MYSCHOOL – even without a space between the words – that is focused on connecting people who went to a particular academic institution can’t reasonably expect to be able to stop all other school-related uses of that phrase.
Another interesting facet of this decision is its lack of discussion about the relative dates of each party’s rights. Typically, when a domain name predates a complainant’s trademark rights, there can be no bad faith since the respondent wouldn’t have even known about the trademark at the time it registered the domain. However, it is an established concept in UDRP jurisprudence that you must consider whether the respondent acted in bad faith at the time it acquired the domain if this was after the domain’s original creation. Here, the Respondent may not have argued that the 1996 creation of the myschool.com domain predates Complainant’s trademark rights, which could be why the Panel never addressed it. However, had he raised the point, he would have learned that his acquisition of the domain after the Complainant’s trademark came in to existence starts the clock running again and, in that scenario, the Complainant would have prior rights.
In the end, I agree with the outcome in this case and think that an attorney experienced in domain name enforcement matters would have advised this Complainant that the UDRP was not a good choice for addressing the situation. Sometimes you’ve gotta bite the bullet and pay a domain investor to acquire the name you want or be prepared to just walk away and accept that you have to coexist with another domain out there that’s similar to your weak brand.
The Complainant should also consider itself lucky that it avoided a finding of reverse domain hijacking. But I expect its ownership of actual trademark registrations for the MYSCHOOL mark caused the Panel to lean the way it did.
