Acknowledges limits on UDRP and trademarks — Insurance.pro decision
Facing legitimate questions over a trademark’s legitimacy, UDRP panel determines case is outside the scope of the policy.
A couple weeks ago a National Arbitration Forum panel handed down a decision in a complaint brought over the domain name insurance.pro.
On the surface it appeared to just be a case regarding a seemingly generic domain name. But there are a couple interesting things regarding this case, and it could end up being an interesting reference case for UDRPs in the future.
First, the respondent in the case (represented by John Berryhill) argued that the complainant was essentially front-running. The respondent stated that the complainant got a trademark on insurance.pro ahead of the .pro launch in an effort to secure what could have been a valuable domain name. Although I haven’t seen a lot of similar trademark front-running filings for fresh TLDs (in the U.S. anyway), this could come up again as fresh TLDs roll out.
Second, the complainant’s case was rejected since the respondent effectively argued that the trademark may be invalid. Yes, the complainant has a federally registered mark. But the respondent argued it was invalid, and a UDRP panel isn’t necessarily qualified to to make a determination on this and potentially expand trademark rights. So the panel instead determined that this case was outside the scope of UDRP.
It will be interesting to see if this case is referenced in future arguments and decisions.
