In a UDRP Case, you have to do *some* work!

In my experience, the doozie arguments in UDRP cases usually come from Respondents. But, this Complainant takes an honorable mention in the hall of fame of stupid domain name arbitration maneuvers.

In Mathiesen S.A.C. v. Allan Mathiesen, WIPO Case No. D2009-0087, the Complainant had legitimate Chilean trademark registrations for MATHIESEN, and the domain name in question was http://www.mathiesen.com. However, the Chilean registrations were granted in 2005, and the domain name appears to have been held by the same owner, Allan Mathiesen, since 1999.

There are potential exceptions, but it is generally accepted that under paragraph 4(a)(ii) of the UDRP, a party has a right to and/or a legitimate interest in a domain name when it corresponds to his actual legal name. See, e.g., G. A. Modefine S.A. v. A.R. Mani, Case No. D2001-0537 (A gentleman by the name of “A.R. Mani” registered armani.com and prevailed against Giorgio Armani on this basis).

I must wonder how the complainant’s attorney could have drafted the complaint and not at least dealt with the fact that the domain name and the respondent’s surname were the same. I have seen respondents come up with post-hoc “name changes” or claim that their “nickname” corresponds to the domain name. Accordingly, the complainant could have at least challenged the presumption that the WHOIS information was accurate – but they apparently didn’t bother to do so.

The panel found that this was an abuse of the arbitration process, and rightfully so.

A heartening factor in this case is that the panelist, Jeffrey D. Steinhardt, bothered to do some independent research, and reviewed the relevant web page and its online archives to see how the domain name had been used since its registration in 1999. UDRP Panelists certainly have the power to do so, and I believe that they have a responsibility to do so. Douglas Isenberg embraces this principle, but precious few others seem to do so.

The moral of the story: as a complainant’s attorney, you have to do some work. As a Panelist, you really ought to.

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