After losing challenges for three generic domains, school referral service wins a biggie.
EducationDynamics, LLC has made several attempts to get generic domain names through UDRP domain arbitration. It has lost cases for earn-your-degree.com, graduateschool.com, and graduateschools.com. But on Wednesday the company scored a victory, winning the generic domain name eLearner.com through arbitration at National Arbitration Forum.
EducationDynamics does have a trademark for “eLearners” and “eLearners.com”. But rather than explain in my words why this case was bunk, I’ll include excerpts from dissenting panelist G. Gervaise Davis III.
…I find no evidence whatsoever that the domain was registered in bad faith, since Complainant provided not even a scintilla of evidence to that effect other than that “Respondent must have known of Complainant’s rights†when it acquired the domain in May 2009. That is not evidence but speculation. The subject domain has apparently existed for many years in the hands of other owners prior to Respondent acquiring it. I am not aware of any legal principle under the UDRP which makes it bad faith to register an existing domain name in order to use it, nor did Complainant cite such law…
…In the final analysis, however, the domain should not be transferred to Complainant, simply because Complainant’s registered trademarks have become so hopelessly generic and descriptive that they no longer serve to uniquely distinguish the services of Complainant. In fact, it would seem almost incredible that that USPTO ever issued the registrations on these marks which were already generic and descriptive at the time they were issued…
…Suffice it to say, this Dissenting Panelist feels it is poor public policy as well as contrary to the fundamental purpose of the UDRP to protect generic or descriptive trademarks, which has the effect of taking such terms out of the public use, or at least making it difficult for the public to use the English language from which these words are taken.
An example of the absurdity of this practice, here, is found when one uses the Google® search engine to search for the term “elearner.†This results in 76,100 hits, only a few of which have anything to do with Complainant or its website, while the tens of thousands of other hits refer to and use the common and generic terms “elearner,†“elearning,†or terms like “elearning methodology,†which illustrates far more effectively than this Panelist can, that the whole concept of “elearning†is a technical English term and description of a new method of learning that belongs to the public at large and not to some domain name owner who seeks to arrogate ownership of a descriptive or generic English word to itself.
EducationDynamics LLC (Complainant here) does not own the word “elearnerâ€or “elearners,†the public does and any decision like that of the Majority here, which so finds, is simply and regrettably wrong. I have, therefore, respectfully dissented here in some detail so that other Panels in the future do not make what this Panelist sincerely believes is an error of law.
You can read his complete dissenting opinion here.
Darren Spielman says
I love when dissenting judges or arbitrating Panelists say “respectfully dissent” because it was clear that he had no respect for the finding. I agree this was bunk decision.
What the says
This is a big world.
Why should URRP penalize a european domain owner because there exist a small company in the U.S. that owns a trademark?
I believe this company has found it is easy to take a domain by UDRP instead of the old fashion way of buying it.
I need to find the cheapest and easiest country to file a trademark.
What will UDRP do then? Rule against one TM owner because the TM is not in the U.S.?
D says
I say nuke USA and lets start over
Helder says
“I need to find the cheapest and easiest country to file a trademark.”
That’s something i’ve thought about already, owning TM of my domains.
Another good thing is put UDRP in a neutral country like Switzerland, that’s what happens with almost every institution that rules something that’s global.
It makes no sense that a country rules the internet gtld’s.
Finally buy cctld’s and let ICANN suffer in their pockets
Andrew Allemann says
“Finally buy cctld’s and let ICANN suffer in their pockets”
You think the rules are tough on gTLDs? Countries can basically take away your ccTLDs at will.
M. Menius says
G. Gervaise Davis III was spot on. Excellent logic, excellent argument.
Helder says
Andrew i would agree with you if you talk about countries like China or North Korea where democracy doesn’t exist.
I believe that in democratic countries that’s harder to happen, cctld’s are ruled by the laws of a particular country, and the laws are equal to all, or at least it gets near to that.
It’s easier for a big company with millions on their pocket to influence UDRP, while influencing a court of law in a democratic country gets a bit harder, so at the moment i feel a lot more secure with cctld’s than with gtld’s.
Anyway i expect, and hope that good sense wins, and that generics are not taken away from domainers.
I’m all against cybersquating and TM violations, but if someone owns a generic word as a TM, that person/company can’t claim to have exclusivity in the use of domains with that word, simply put no one can own a language, a language is public property.