Comments

• smlevy42 06:49 am 22-May-2015 Clearly, this Panelist didn’t care for the pop music scene of the 1970’s. On the second element of the the Policy, the Panel noted that resolving a domain to a registrar parking page has routinely been held to not be a bona fide offering of goods or services. On this point I agree but I feel this merely puts a burden on the Respondent to show demonstrable preparations to use the domain for such an offering. Earlier in the decision the Panel mentions Respondent’s submission of emails to a potential supplier of spectacle/eyeglass frames in China but no mention of this is made in this section. The Panel merely refers to "Complainant’s famous SPEX mark” and states that Respondent’s use thereof undermines any claim to a legitimate interest. Then, in discussing the third UDRP element, the Panel adopts what has clearly become a minority position on the question of whether a respondent chose its domain based on actual knowledge of a complainant’s trademark or whether it is sufficient to find that it had “constructive” (implied) knowledge based on the fact that the trademark was registered. He clearly agrees with the Complainant’s argument that the "Respondent acquired the subject domain name with actual and/or constructive knowledge of Complainant’s SPEX mark.” Since there is no evidence mentioned in the decision of Respondent’s actual knowledge of the SPEX mark for chemicals and related apparatus, and since The Panel cites a number of older UDRP decisions to support his position on constructive knowledge it must be assumed that he’s hung the bad faith finding on that point. Unless there is evidence in this case that was not discussed in the decision, I must disagree with the Panel’s very limited analysis overall and his conclusion on bad faith in particular. This case involves a mark in a very specialized, industrial field and, though it may be well-known amongst participants in that field, it is unlikely that the Respondent would have ever heard of Complainant or its mark. Further, despite the Respondent having submitted evidence of the use of the term “spex” to refer to spectacles, including the names of a number of eyeglass shops in the UK such as Spex Opticians, I Need Spex, and Spex 4 Less, and despite the well-known, though admittedly dated pop-culture use of the phrase “sex machine”, the Panel dismissively, and with no real explanation, concludes that there is no such connection. Finally, and to me most surprisingly, the decision implies that every registrant must conduct a trademark clearance search prior to registering its domain or risk being tagged with constructive notice of a complainant’s registered mark. While I haven’t seen all of the evidence in this case, the Respondent’s story about planning an eyeglass shop seems plausible, on its face, and the subtext of the decision strongly suggests that he had no actual knowledge of the Complainant’s brand, nor bad faith intent when registering the spexmachine.com domain. Although I acknowledge that there are many clever and slippery cybersquatters in the world who attempt to squirm out of UDRP cases with spurious stories and concocted evidence, I don’t believe this was the case here. At least if it was, the decision was lacking in its discussion of supporting facts and I’m left with the feeling that the Respondent is losing his domain unfairly.