Calls out weak trademark claim, finds RDNH — UDRP panelist

Panelist admonishes firm for not backing up its common law trademark claims.

A UDRP panelist has found that Veracyte, Inc. attempted to reverse hijack the domain name genomedx .com.

The firm claimed common law trademark rights in the term arising from the use of the term by a predecessor in interest that was purchased in 2021.

There are two interesting aspects to this case.

First, panelist David E. Sorkin found reverse domain name hijacking since the firm made inadequate pleadings to back up its claimed common law trademark:

Complainant submitted no evidence of the purchased distinctiveness required to support a claim of common law trademark rights, and the predecessor in interest through which Complainant claims to have purchased such rights appears to have abandoned the putative mark a number of years ago, prior to its buyout by Complainant. Under the circumstances, and noting that Complainant is represented by professional trademark counsel, the Panel concludes that Complainant or its counsel must have known that it did not have a colorable claim under the Policy.

Second, the Complainant stated that the domain was registered to a former employee.

Complainant states that the disputed domain name genomedx.com was registered by an employee of GenomeDx Biosciences on November 7, 2006, and was used by the firm for a website promoting its GENOMEDX testing products. Complainant alleges that this employee subsequently transferred the account associated with the domain name to another employee (apparently Respondent), who later left the firm without transferring the account or providing Complainant with access to the domain name…

It’s not clear from the decision if the identified registrant is indeed a former employee of the firm. Sorkin didn’t address this issue, but it would have caused the case to fail on the third prong of UDRP: that the domain was registered and used in bad faith.

This exact scenario is one identified in the recently completed WIPO-ICA UDRP review, which notes that some have asked for limited exceptions to the registration and use in bad faith requirement of UDRPs.

Firms occasionally file UDRPs against former employees who they claim are holding domains hostage. The claims fail since the domains were originally registered in good faith while the employee worked at the firm.

Another scenario where this comes into play is when a licensee or dealer registers a domain name and its contract with the trademark holder is later canceled.

The WIPO-ICA UDRP review noted that these circumstances are rare and stated the issue could be examined in a later ICANN review.

Knobbe, Martens, Olson & Bear, LLP represented Veracyte, Inc. in the dispute.