Friday, April 23, 2010

Inconsistent UDRP Decisions Raise More Concerns Over Current UDRP Process

Two recent UDRP cases involving the same Complainant and mark and essentially identical domain names (amerincanairways.com and americanairway.com) have yielded inconsistent decisions.

In the case of American Airlines, Inc. v. MegaWeb.com Inc. (reported here last week), the panel denied transfer of the domain name americanairways.com on the ground the subject domain name and Complainant’s trademark, American Airlines, are not confusingly similar. What made that case most interesting – and puzzling – is that the panel also concluded that the Respondent had no legitimate interest in the subject domain name and reserved the subject domain name in bad faith.

In my last post, I posed the following question: can domain names that aren’t confusingly similar to complainants’ trademarks be considered to have been registered in bad faith? No confusion equals no bad faith? Right?

It has come to my attention that there is also a companion case, which was decided only days earlier on March 29, 2010: American Airlines, Inc. v. Domain Admin a/k/a Taranga Services Pty Ltd.  Interestingly, the panel in that case concluded that Complaint’s mark, American Airlines, and the subject domain name, americanairway.com, are confusingly similar. The panel also concluded that the Respondent had no legitimate interest in the subject domain name and had reserved the subject domain name in bad faith. Accordingly, the panel ordered transfer of the subject domain name to Complainant.

Two things bother me. The first is the inconsistencies within the decision of the americanairways case (issued on April 13, 2010). Again, how can we have no confusion and still have bad faith? As I pondered in my previous post, might the panel have been suggesting that the Complainant simply fell short on evidence needed to prove confusion? Was the record simply lacking? The second thing that troubles me is that two separate panels reached opposite decisions, just days apart, in two cases involving – what appear to be – the same trademark and essentially same facts and domain names.

How do we reconcile these two decisions? Should there be a requirement that panels handling companion cases discuss them before rendering decisions to ensure consistency? Is there a need to take a hard look at the current UDRP system?

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