Two panelists denied the UDRP. The other dissented and would have transferred the domain. Who was right?
It’s not often that I read a UDRP that’s found in favor of the Respondent, but feel like perhaps the Complainant should have won.
And I’m not sure I completely feel that about a dispute over trimble.ai, but hear me out.
Let’s say I ran an artificial intelligence company. I reached out to, say, Sedo, and suggested Sedo should think about integrating AI into its marketplace.
We sign an NDA. I sign an integrator agreement. Sedo grants me access to its API. I speak at a Sedo user conference about how I’m working on AI integrations with the company.
Oh, and I register sedo.ai.
After a while, Sedo notices that I registered sedo.ai. It sends me a cease & desist. Unsure what to do, I redirect the domain a couple of times, including to a page requesting $300,000 for the domain.
Here’s the question: did I register the domain name in bad faith?
That’s a simplification of the scenario in a dispute over trimble.ai.
The Complainant, Trimble Inc., filed the dispute against Jeff Graham of Pique Innovations Inc.
Pique had business discussions with Trimble about integrating AI into its products, spoke at a Trimble conference, and had some signed agreements.
The majority of the panel found that the Respondent didn’t register the domain in bad faith, even though he later used it in bad faith.
One panelist dissented, arguing the domain was registered in bad faith.
In his dissent, panelist Paul DeCicco wrote:
Respondent not only used the disputed domain name in bad faith but registered the domain name in bad faith as well. The past relationship between the parties does nothing to suggest that Respondent could reasonably have believed that he had any right to register the TRIMBLE trademark in a domain name. Registration and use in bad faith is virtually universally found where, as here, having no rights or legitimate interest in the domain name the respondent was aware of the Complainant’s trademark at the time of registration…
…Additionally, the ability to mind read or speculate about what Respondent may have intended at the time of registration is unnecessary since the undisputed facts following registration create a powerful inference regarding Respondent’s primary reason for registering trimble.ai. Following registration Respondent passively held the domain name, offered the domain name for sale, and directed the domain name to various domain names and websites under the control of Respondent. Moreover, Respondent does not bother to suggest any particular good faith use he might have had in registering the domain name. It is hard for one to even image such a good faith use, except perhaps to turn the domain name over to Complainant when asked which Respondent refused to do. Respondent’s actual uses for trimble.ai thus further enlighten Respondent’s intent in registering trimble.ai.
I don’t completely agree with DeCicco’s reasoning. I suspect the Respondent initially registered the domain to use as part of a hoped-for fruitful partnership with the Complainant. That said, it doesn’t seem that the Complainant ever granted approval for the Respondent to do this.
The majority, Adam Taylor and Darryl Wilson, seem to take offense to some of the Complainant’s assertions in the case. I agree with the majority that the Complainant should have been more forthcoming. The majority wrote:
…Nevertheless, the evidence is clear that Complainant repeatedly misstated the nature of the relationship between the parties. The Respondent initially asserted there was a business relationship and Complainant later conceded that Complainant did engage with and sign contracts with Respondent regarding mutual proprietary non-disclosure as well as licensing Respondent’s use of Complainant’s products to interact with TRIMBLE products and services.
Although both parties ultimately acknowledged there were ongoing professional relations between them for an extended period of time, with some 3,000 emails passing between them according to Respondent’s uncontested assertion, the Panel finds this is not primarily a business and/or contractual dispute between two companies that is outside the scope of the UDRP as some prior panels have concluded in similar matters…
…The Panel makes the following additional points regarding Complainant’s submissions in these proceedings as they relate to Complainant’s failure to evince registration in bad faith. First, Complainant’s failure to directly address Respondent’s assertion that the domain name was registered for the parties’ joint venture that was in development. While Respondent could have been clearer about its intended use of the domain name, it is not inconceivable that Respondent had no detailed plan for the domain name in mind but, rather, possessed a generalized intention to use it in a good faith manner in cooperation with Complainant. Certainly, the Panel has seen nothing indicating that Respondent likely possessed some sort of underhand motive at the time of registration (2018), such as using the domain name as a sword to dangle over Complainant in future.
Second, Complainant exhibited a general lack of veracity and candor regarding the relationship between the parties, including lack of any evidence or detail from Complainant in relation to its unsupported accusation of phishing, and its misrepresentation of Respondent’s additional domain names as proof of an alleged pattern of bad faith registrations.
Third, Complainant provided no evidence of use of the domain name before 2023. The Panel does not consider that the redirection of the disputed domain name to Respondent’s website in 2023 constitutes evidence of Respondent’s bad faith intent when registering the domain name some five years earlier.
Fourth, Respondent’s actions that arguably equated to a bad faith offering of the domain name for sale only occurred after Complainant noticed Respondent of the instant proceeding having ignored Respondent’s inquiry as to the nature of what Respondent thought must be a misunderstanding. The Panel does not consider that Respondent’s offering of the domain name for sale in these circumstances can be said to reflect Respondent’s state of mind when registering the domain name some five years earlier.
Indeed, the Complainant included some cookie-cutter assertions in its UDRP that it should have left out.
For example, it stated that the Respondent “configured it [the domain] to send and receive email to pass itself off as Complainant in an effort to defraud Complainant, its customers, and/or its business associates.”
If the panel’s summation took that as an exact quote from the Complaint, then the Complainant was unwise to include it. Suggesting the Respondent was about to undertake illegal activity is a big leap.
What would I have done if I were on the panel? This is certainly a hard case. If I sat back and thought, “UDRP was designed for clearcut cases of cybersquatting,” I might have sided with the majority. Or suggested this was a business dispute best handled by the courts. And I wouldn’t be surprised if this dispute ended up in court.
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