Another UDRP That Shouldn’t Have Been Filed: Resin.com

Firm files claim for domain name registered 12 years ahead of it started using the “trademark”.

Here’s another case of a domain name owner having to respond to an egregious UDRP complaint.

Paper Denim & Cloth, LLC filed a complaint against VertMarkets, Inc. to get the generic domain name Resin.com. The complainant admitted that it just started using the mark “Resin” in 2010 and that VertMarkets registered the domain all the way back in 1998, but still filed the case.

So the case is by now dead, but it gets better. VertMarkets is in the B2B market and registered a bunch of domain names back in the days related to various industries. It even registered the domains with CSC Corporate Domains, a brand protection registrar. But Paper Denim & Cloth, LLC, represented by Gary H. Fechter of McCarter & English, LLP, made a quite incredible argument:

An industry has developed in which firms, such as the Respondent’s, use domain names not as a basis for producing and selling goods but, instead, primarily for obtaining fees. For these firms, an offer to buy the domain name is a bargaining tool to charge exorbitant fees to firms that seek to buy the domain name. If the offer to buy is not to the firm’s likeness, the firm denies it, and sits on the domain name until a more lucrative offer comes along. Respondent is one such firm. Respondent is not using the domain name and has no plans to use it. Respondent is waiting for the right number to come along, but as he waits, the Complainant, a bona fide owner and user of the RESIN trademark, cannot use his RESIN trademark as a domain name.

Wow.

VertMarkets won, but this is another example of egregious abuse of UDRP. The respondent didn’t ask for a finding of reverse domain name hijacking, but the panel ought to have considered it anyway.