Panel Sends Complainant Back To School

pljones · Apr 2, 2003

Congrats go out to Ari Goldberger for winning this UDRP decision on behalf of Reflex Publishing over the domain name GradSchool.com, http://www.arbforum.com/domains/decisions/142378.htm

It's too bad the panel punted on his request for a finding of reverse domain name hijacking, because it seems pretty clear that "grad school" is a generic term, even though the complainant had a registration for GradSchools.com (how did that slip through the PTO in light of its Container.com TTAB decision?).

Anyway, nice job Ari.

GeorgeK · Apr 2, 2003

Ari's been kicking butt lately! Great work.

hiOsilver · Apr 2, 2003

Congratulations Ari. Nice to see that the panel made the correct decision.

Ari Goldberger · Apr 2, 2003

Thanks for the very nice comments. I'm just lucky to get no-brainer cases with good facts.

By the way, there were other facts that definitely showed very bad faith on the part of Complainant, but the Panel failed to reference them. The USPTO originally refused to grant a trademark registration to the Complainant on grounds of descriptiveness (a tm for gradschools for a site about gradschools). To counter this, the Complainant alleged to PTO that it had 5 years of continuous use, and alleged "secondary meaning" under Section 2(f) of the Lanham Act was thus granted a mark. The problem was, as we pointed out in the Response, that Complainant's alleged "first use" date in 1995 was a year BEFORE it even registered the domain name, and a couple years before the launch date set forth on its web site, leaving the impression that the 1995 date was contrived to create the fiction of 5 years prior use!

Considering that fact, and that the Complainant had invited Respondent to be a part of its affiliate network, I can't imagine a better example of reverse domain name hijacking..

namedropper · Apr 9, 2003

Originally posted by Ari Goldberger
I can't imagine a better example of reverse domain name hijacking..

Just being pedantic here... It's not a good example as it didn't work. It is, however, a blatant example of *attempted* reverse domain name hijacking.

Congrats on another win.