SmoothMove com: Worst UDRP Decision Ever?

My blood is boiling. I think I just read one of the worst UDRP arbitration decisions ever.

Michael Berkens got screwed, and I hope he takes action.

In this case, Berkens registered the domain name SmoothMove.com in 2003 and has parked it since then. All of the links have been generic in nature.

Then along came Traditional Medicinals Inc, an herbal medicine company that happens to have a trademark to “Smooth Move”. This isn’t the only generic domain name the company tried to grab; it just lost a case for MothersMilk.com.

Berkens’ attorney, Ari Goldberger, argued a number of reasons why this was not a case of cybersquatting. But the panel picked up on one argument: that in the course mass registration of generic dictionary domain names, you’ll also register some generic terms that are also trademarks.

Goldberger’s argument is correct. If you registered Apple.com back in the day, you would have registered a generic term that a fair number of companies also have trademarks to for various uses (including the computer giant). If you then parked Apple.com and showed pay-per-click links about the fruit, you would not be violating the trademark.

That’s essentially what happened here. But the panel seemed to frown on this business model:

Whether or not Respondent knew for sure at the time of registration that the particular domain name now at-issue was the trademark of another seems insignificant. There is no dispute that Respondent knew that at least some trademarks were being registered as a direct result of its purely self-serving policy…

The Panel notes that this is not a case where an entity inadvertently or even negligently registers the mark of another for its own use to support its own business or vocation without any hint that the domain name contains a trademark. Rather it is a situation where the business method of a sophisticated domain name trafficker consciously and to its own benefit disregards with impunity the admitted certainty that it is registering another’s trademark and is happily disposed to trading in such trademarked domain name nonetheless.

Excuse me, but whether or not the respondent knew about the trademark is of utmost importance. Perhaps it wasn’t argued well, but the panel seems to not understand that Goldberger’s argument was that generic terms can also be part of trademarks and used legitimately. It’s not like he was registering CocaCola.com. That’s not generic.

In fact, there are three other companies with some sort of trademark for “smooth move”.

I could understand the panel’s decision if the parked page had ads for herbal medicine, but this case is bunk.

Berkens, I hope you sue.