Fired.com Complainant “Sorely Misguided”: Arbitrator

World2Work Corporation loses Fired.com claim; panel has harsh words for firm and lawyer.

A one person panel has found in favor of the owner of Fired.com in a bizarre UDRP case.

World2Work Corporation and founder Scott R. Sargis, which runs the web site Fired.tv, filed a UDRP with National Arbitration Forum to get the domain name Fired.com. This is despite not registering the trademark “Fired” until five years following Fired.com was registered.

Following questioning by Reglike, World2Work’s attorney John Franczyk released a statement on behalf of the firm that seemed to equate trademark law with domain name law and stated “we ought to not be forced to pay the inflated fees that domain name profiteers routinely charge for warehoused domains which they have never bothered to use or develop.”

The arbitrator wrote that World2Work and its attorney were “sorely misguided” in its understanding of trademarks and domain names.

While it is not normally required that the issue of genericness be resolved in the UDRP proceeding, especially when Complainant is the owner of a valid registration, it is notable to address the issue when the mark and the domain consist of one or more common terms. Complainant’s belief that its registration gives it “an exclusive right to use the word ‘FIRED’ in commerce…” and that such use extends to a “right to use that word as a domain name and to register the domain as its own domain name” is sorely misguided. Trademark rights do not automatically confer domain name rights and vice-versa.

Since the panel found that Fired.com was not identical or confusingly similar to complainant’s established rights, it didn’t review the other two requirements of a UDRP. It is extremely rare to see a UDRP filing in which the first requirement is not met. Even reverse domain name hijacking cases usually involve the first requirement being met.

The owner of Fired.com did not file his response through an attorney and did not request a finding of reverse domain name hijacking. Had he done so, it is likely that the arbitrator would have charged World2Work with reverse domain name hijacking.