The Ham Brothers, Vertical Axis just lost a UDRP on the typo pheonixcontact.com to Phoenix Contact GmbH & Co. KG of German.
As a UDRP the case is a slam dunk for the International trademark holder.
However the case serves as a cautionary tale for those domain holders that believe that all they have to do is give up a questionable trademark infringing domain once they get the C & D letter, that sometimes that strategy doesn’t work and you wind up with a UDRP decision against you.
Before the UDRP was filed, Vertical Axis states that on November 14, 2012, the Respondent advised the Complainant’s counsel that it would transfer the disputed domain name to the Complainant. The parties exchanged settlement documents and the proceedings were suspended. After a few email exchanges the parties appeared to have reached a final agreement. On December 12, 2012, without explanation, the Complainant reinstituted the proceeding”.
Vertical Axis even tried just agreeing to give up the domain name after the UDRP was filed by stipulating to “transfer the disputed domain name to the Complainant”.
“”Where a respondent stipulates to transfer a domain name to a complainant, the panel may immediately transfer the domain name, without issuing an opinion on the merits of the case”
However citing Texas Medical Center v. Joseph Spinder, NAF Claim No. 0886496, even where the “Respondent has agreed to transfer, the Panel may decide to forego the traditional UDRP analysis and order the immediate transfer of the domain names”.
Basically the complainant wanted the panel to issue a full opinion on the case:
“”The Panel has considered the cases cited by the Respondent but has decided to proceed to a substantive determination on the basis of a number of the countervailing factors mentioned in paragraph 4.13 of the WIPO Overview 2.0, in particular the fact that the Complainant has not agreed to a consent decision and is entitled to a decision for which it has paid in filing the Complaint”.
“The Panel is also persuaded that there is a broader interest in reaching and recording a substantive determination so that the conduct of the Respondent, if found to have registered and used the disputed domain name in bad faith, can be taken into account by other future UDRP panels”
Here are the facts and findings by the one member panel:
“The Complainant is incorporated in Germany and operates a business founded by the Complainant’s predecessor in 1923.…
