In reviewing 77 contested cases in the last 6 months at the FORUM, I found what I believe to be a few very bad decisions based upon the information provided by the Panelist in his or her Decision. On February 9th, panelist ELENI LAPPA, was the sole panelist in the Complaint filed by Amazon Technologies, Inc. v. Adam Grunwerg / Finixio Limited, FA2012001924577, wherein AMAZON, which owns 2 trademarks for AMAZON PRIME; one in 2008 for customer loyalty services, and their big one for everything else, registered in 2020, brought a UDRP on the domain name BitcoinPrime.net., which “reflects Respondent’s legitimate cryptocurrency platforms”.
It is rather interesting that there are 47 registered trademarks at the U.S.P.T.O. for the word PRIME alone, or in conjunction with other words, but not one of them belongs to AMAZON. The Respondent argued that “the term PRIME is generic as it is used by many other websites and alleges that Complainant has failed to demonstrate that Respondent lacks rights and legitimate interests in the disputed domain name.”
But apparently Panelist LAPPA didn’t see it that way. She found that “Complainant has prior registered and unregistered (use-based) rights on the mark PRIME through several trademark registrations.” If 2 trademarks equal “several” and one of them was registered after the domain was registered, what would prompt a so-called impartial Panelist to come to the conclusion that Respondent was trading on Complainant’s trademarks? However, she even stretched the truth a little further by finding “The dominant portion of the domain name under dispute <bitcoinprime.net> is the mark PRIME, as the remaining elements comprising said domain name are BITCOIN which is purely descriptive of the services for which the domain name’s relevant website is to be used and/or is being used…” Astounding reasoning!
In finding that the domain name was identical or confusingly similar to the Complainant’s trademarks, this Panelist unbelievably said “The confusing similarity is such that the average consumer if encountering the domain name in dispute <bitcoinprime.net> is likely to falsely conclude that the said domain name and relevant website originate from or relate to the Complainant and, even though Complainant’s primary area of activity is not bitcoins, the resemblance created by impression and the ensuing risk of confusion are sufficient.”
Finally, to top off this terrible decision, this Panelist found Bad Faith as “Complainant’s trademark PRIME is quite well-known, due to the many years it has been registered and extensively used online on a global scale, therefore the Respondent knew or should have known of its existence at the time it registered the domain name in dispute <bitcoinprime.net> which was therefore registered in bad faith by Respondent, in an effort to attract customers that would reasonably believe the said domain name belongs or is related to Complainant. Respondent’s subsequent use of the domain name in dispute <bitcoinprime.net> as a website clearly demonstrate his attempts to pass off as Complainant and mislead consumers/online visitors and divert them to its own commercial ventures for its own commercial gain.”
This decision is a Finalist for Bad Case of the Year.
The Neu Facebook