|READ THIS FIRST: This is not the Savin Corporation web site. This website is not sponsored by, endorsed by, or otherwise related to Savin Corporation. I am not offering any goods or services for sale, either directly or indirectly. I am not offering any legal advice and I do not seek to represent you in any legal matter. The domain name savinsucks.com is not for sale. This website is intended to be a commentary. If you are looking for the Savin Corporation web site, it is located elsewhere on the web. Savin is a registered trademark of Savin Corporation.|
and the story of
Savin Corporation v. savinsucks.com
Claim No. FA0201000103982 (Nat. Arb. Forum, March 5, 2002)
Please note: I am an attorney, but none of the content of this website should be considered "legal advice." This is the story of a domain name dispute before a UDRP panel. I was the respondent. I have posted all of the documents relating to the dispute. I hope that some of you find them useful.
First, a little background information.
Back in October, 1999, I thought Savin sucked. Why? It doesn't matter. All that does matter is that I thought it sucked and I wanted to register a domain name to reflect my opinion. So, I registered savinsucks.com with Network Solutions on October 22, 1999.
Savin Corporation obviously found out that I registered the name and, instead of picking up the phone to ask me why I thought they sucked, on December 21, 1999, their attorney sent me a cease and desist letter. I telephoned their attorney and explained to him that my registration of savinsucks.com was protected speech under the First Amendment of the U.S. Constitution.
On March 23, 2000, he responded to our conversation with another letter. He dismissed my First Amendment argument and argued that my registration of savinsucks.com was actionable under the Lanham Act.
So, I replied to him with a letter stating that my actions violated neither the Lanham Act nor the trademark Dilution Act, and that they were protected by the First Amendment. He faxed me yet another letter offering either a proposed settlement or litigation under the Lanham Act or the Anticybersquatting Consumer Protection Act.
Enough was enough. I sent him an email telling him I was so certain he was wrong, that I had just registered "his law firm's name," plus the words "sucks," followed by ".com."
The letters and faxes stopped, and I went on with my life.
Now, fast forward two years...
On January 22, 2002, three months after the domain name savinsucks.com had expired, I received a "CC" of an email sent from the National Arbitration Forum to Savin's attorney. It was a notice of deficiency for a Complaint he had filed pursuant to the UDRP.
I was puzzled because the domain had been deactivated three months earlier, on October 22, 2001. So, I left a voicemail for the attorney and then I called Savin itself to inform them the domain name savinsucks.com had expired three months earlier and that there was no basis for their Complaint. Despite that courtesy call, two days later, on January 24, 2002, I received the (fixed and re-filed) UDRP Complaint.
In Savin Corporation v. savinsucks.com, Claim No. FA0201000103982 (Nat. Arb. Forum, March 5, 2002) the Complainant, represented by a large national law firm, attempted to use the UDRP Policy in bad faith to prevent me from criticizing their trademark with the domain name savinsucks.com.
Listed and linked below are all of the documents relating to the UDRP proceeding, in chronological order. You will need to use the free Adobe Acrobat Reader to view some of the documents listed below.
If you have any questions, please feel free to contact me.
|1.||Letter from NAF to Complainant's counsel, dated January 22, 2002, requiring Complainant to rectify deficiencies in complaint.|
|2.||Email message from Peter Sachs to Complainant's counsel, dated January 24, 2002, explaining that the domain name "savinsucks.com" had expired on October 22, 2001, three months prior to their filing of the Complaint.|
dated January 24, 2002, and Exhibits thereto:
1. Certified Copies of Certificates of
Registration for Complainant's domestic trademarks.
Note: I have not included Complainant's Exhibits 1 or 2 on this website. There was no dispute as to whether SAVIN was the trademark holder and I would have had to scan and convert 10 additional pages. If you really want to see their trademark info, it's all right here.
dated February 11, 2002 and Exhibits thereto:
1. Notarized print outs of search engine results for the
Note: Again, to avoid scanning and converting 10 more pages, I have not included Respondent's Exhibit 1 on this website. Exhibit 1 is simply a set of search engine results, each indicating there were "no results" for the query "SAVINSUCKS" on January 28, 2002.
Submission, dated and filed February 19, 2002 and Exhibits
1. Email from
Pete Heinsohn to David Einhorn, dated February 5, 2002.
Note: The Panel did not consider Complainant's Additional Submission.
|7.||Email from Peter Sachs to Forum, dated February 19, 2002, objecting to Complaint's Additional Submission as untimely.|
|8.||Email from Forum to Peter Sachs, dated February 20, 2002, stating Complaint's Additional Submission was late.|
|9.||Email from Peter Sachs to Forum, dated February 20, 2002, requesting copies of Complainant's additional exhibits and info regarding Sur-Reply.|
|10.||Email from Forum to Peter Sachs, dated February 20, 2002, answering questions re: Sur-Reply.|
|11.||Letter from Complainant to Forum, dated February 20, 2002, requesting reconsideration of Additional Submission.|
|12.||Email from Peter Sachs to Forum, dated February 20, 2002, requesting Complainant's request for reconsideration of Additional Submission be denied.|
dated and filed February 24, 2002 and Exhibits thereto.
Note: The Panel incorrectly stated in their decision that my Sur-Reply was filed on February 28, 2002. Although the the Panel may not have received it from the Forum until that date, the document was in fact filed with the Forum on February 24, 2002. The Panel did not consider my Sur-Reply.
|14.||The Decision, dated March 5, 2002. (Here's the official version of the same document located at the National Arbitration Forum) Although I am pleased that I won, I am disappointed that the Panel did not address several important issues that I believed were raised in this proceeding. I am also confused as to why the Panel did not address my Reverse Domain Name Hijacking claim.|
|15.||Email from Peter Sachs to Forum, dated March 8, 2002, requesting Forum to forward inquiry to Panel as to why they did not address my Reverse Domain Name Hijacking claim.|
|16.||Email from Peter Sachs to Forum, dated March 12, 2002, requesting status of my inquiry to Panel regarding my Reverse Domain Name Hijacking claim.|
|17.||Email from Forum to Peter Sachs, dated March 13, 2002, reporting status of my inquiry to Panel regarding my Reverse Domain Name Hijacking claim.|
Statement, dated March 18, 2002, in which the Panel addresses
my Reverse Domain Name Hijacking claim.
Note: It should be noted that in my March 8, 2002 email to the Forum, I requested the Panel to address the Reverse Domain Name Hijacking claim in my Response. I did not request that the Panel declare that Reverse Domain Name Hijacking existed. That decision rests solely with the Panel after considering the submissions.
Although I am pleased that I prevailed in this UDRP proceeding, I think the decision deserves some further attention. I found the decision to be a rather odd one. I'll start with the issue of Reverse Domain Name Hijacking.
A finding of reverse domain name hijacking is admittedly inconsequential for a complainant. Other than the "danger" of earning a "black mark" in a relatively obscure body of proceedings, there is little to prevent a complainant from bringing a groundless complaint against the rightful owner of a domain name. Nonetheless, requesting such a finding is the only "tool" a respondent really has against such complaints.
In my proceeding, the Panel completely ignored my request for a finding of reverse domain name hijacking. It was not until I submitted an additional specific request to the Panel (via the Forum) that they addressed the issue. For whatever reason, the Panel did not consider any of the following (all of which were supported by the Complainant's own exhibits) to be "bad faith" on the part of the Complainant:
Although it remains the Panel's decision as to whether reverse domain name hijacking exists, the fact that my allegations were extensive, clear and supported by the evidence should have at least prompted the Panel to acknowledge my claim. Such allegations in other proceedings, even those with far less supporting evidence, have been addressed.
Panels have traditionally required respondents to allege reverse domain name hijacking in order to succeed on such a claim. In Plan Express Inc. v. Plan Express, Case No. D2000-0565, (WIPO July 17, 2000), the panel held that "a Respondent must show knowledge on the part of Complainant or Respondent's right or legitimate interest in respect of the domain name at issue and evidence of harassment or similar conduct by the Complainant in the face of such knowledge."
The Plan Express "test" has been followed by the panels in MAHA Maschinenbau Haldenwang GmbH & Co. KG v. Deepak Rajani, Case No. D 2000-1816 (WIPO March 2, 2001); ONU S.R.L. v Online Sales, LLC, Case Number AF-0672 (Eres Feb 16, 2001); Goldline International Inc v Gold Line, WIPO Case No. D2000-1151 (WIPO January 4, 2001); and Sydney Opera House Trust v. Trilynx Pty. Ltd., Case No. D2000-1224 (WIPO, Oct. 31, 2000)
In fact, two of the Panelists in my proceeding (David Sorkin and David Bernstein) have relied on the Plan Express "test" in other proceedings. " To prevail on such a claim, Respondent must show that Complainant knew of either the Respondent's unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith." Audiopoint, Inc. v. eCorp a/k/a Chad Folkening, Case No. D2001-0509 (WIPO June 14, 2001) (Three member panel included Sorkin & Bernstein)
Moreover, in Decision Analyst, Inc. v. Doug C. Dohring, Case No. D2000-1630, (WIPO February 6, 2001), Sole Panelist David Bernstein refused to find reverse domain name hijacking specifically because the respondent had not requested it. He stated, "[t]he Complaint thus borders on Reverse Domain Name Hijacking, but given that the Respondent did not request such a finding, the Panel will refrain from reaching that conclusion sua sponte."
So, perhaps the Panel in my proceeding decided to follow the decision in Glimcher University Mall v. GNO, Inc., Claim Number: FA0107000098010 (NAF August 23, 2001). In that proceeding, the panel concluded that, "[i]t is not necessary for the respondent to allege reverse domain name hijacking or bad faith to place those issues before a panel. The Rules place these issues before the panels in all cases."
Thus, under Glimcher, the respondent no longer needs to prove anything for a panel to find reverse domain name hijacking. It is the responsibility of the Panel itself to decide this issue which, according to Glimcher, exists in every case. Of course, if the issue is important enough to exist in every case, it follows that panels should address this very important issue every time.
While this would be nice, panels don't do this. In fact, at this writing, I have yet to find any proceeding where the panel found reverse domain name hijacking in the absence of an allegation of same by the respondent. (If you know of one please let me know) Perhaps the Glimcher decision is just an aberration, and the rule remains "claim it if you want it." With decisions like the one reached in my proceeding, it remains difficult to tell.
If you have any questions, please feel free to contact me.