The cases selected for the 2009 UDRP Wall of Shame will be announced Friday at the WIPO Reviews session at TRAFFIC Las Vegas.  A five-person panel composed of Andrew Allemann, Brett Lewis, Mike Berkens, Paul Keating, and Zak Muscovitch selected the UDRP decisions for inclusion on the Wall of Shame.  The announcement will be followed by a public debate moderated by Chef Patrick as to which decision from 2009 did the most to undermine ownership rights for domain names.  An audience vote will determine the winner.

The cases selected for the 2009 UDRP Wall of Shame will be posted here tomorrow.

Here are some of the cases that are nominated for the 2009 UDRP Wall of Shame.  Look for the ‘winners’ of the 2009 UDRP Wall of Shame to be announced at the WIPO Reviews session at TRAFFIC Las Vegas on Friday, January 22nd.

#1. VERSA. COM

Versa Capital loses case for VersaCapital.com, but wins Versa.com. Hard to understand logic, other than Versa.com changing hands after Versa Capital was formed. Respondent did not respond. In
fact, Versa Capital was found guilty of RDNH in the VersaCapital.com case! Why shouldn’t Nissan, manufacturer of Versa.com, get the name instead? Shows there’s an incentive for companies to file claims like this quickly when other parties might have an interest. Also shows that filing UDRP can hit the jackpot when respondent doesn’t respond. Full write-up at Domain Name Wire.

#2. MOTHERSMILK. COM

Company files a complaint but is rebuffed by the panel and comes up empty. Company returns to suckle at the teat of NAF a second time and hits the mother lode as it is awarded the domain. Write-up at Domain Name Wire.

#3. SMOOTHMOVE. COM

WorldWideMedia registers smoothmove.com, one of many generic phrase domains it owns. Complainant is Traditional Medicines Inc, the same Complainant as in MothersMilk.com above. There is no evidence that WWM targeted Complainant or was even aware of it. Panel finds bad faith simply in WWM’s registration of a common phrase as a domain, since a trademark existed on that phrase. Panel takes the position that any common word or phrase, once used a trademark, is off limits for any speculative registration – even if the use relates to the everyday meaning of the phrase and does not infringe on the trademarked use. Write-up at Domain Name Wire.

#4. DEACOM. COM

Ben Dean registered Deacom.com in 1997, incorporated a company under that name, and used the domain for his email, yet a Panel found no legitimate use and bad faith registration and turned his domain over to the Complainant, who did not file their trademark on ‘deacom’ until 2006. Write-up at Domain Name Wire.

#5. OPENDENTAL. COM

Korean dentist registers opendental.com in 1999, but doesn’t put up a web site. Open Dental Software starts using the phrase ‘open dental’ in 2003. Panel finds bad faith in the dentist’s continuing to renew the opendental.com domain even though he wasn’t using it after Open Dental Software had a trademark on the phrase ‘open dental’. Write-up at Domain Name Wire.

#6. FILTA. COM

Sole panelist Condon refuses to accept timely filed Response because it is 44 minutes late in Condon’s time zone, contrary to established policy that the Respondent’s time zone is to be used to determine timely filing. Condon is then a week late in filing his decision. Condon orders transfer of filta.com based on Complainant’s design mark on FILTAFRY issued AFTER the registration of the domain filta.com. Write-up at DomainNameWire.

#7. OKTATABYEBYE. COM

OKTATABYEBYE.com is an active travel site, whose name is composed of the phrases “OK, Ta-Ta, Bye-Bye”, with ‘ta-ta’ a British way to say ‘good-bye’. Sole panelist Pavan Duggal finds the domain is confusingly similar to “Tata”, the name of an Indian conglomerate. Duggal also finds no legitimate use and bad faith use in spite of the domain being operated as a travel site. Tata won a similarly outrageous decision years ago on bodacioustatas.com. Write up at DomainNameWire.

#8. ELEARNER. COM

In spite of a lack of evidence that Respondent was even aware of the Complainant, and the widespread use of ‘elearner’ as a generic term, the panel orders the transfer of elearner.com over the strong objections of dissenting panelist G. Gervaise Davis III. Write-up at DomainNameWire.

#9. DKB. COM

DKB Data Services registered dkb.com in 1996 according to the whois history. From the cfSoftware website, DBK Data Services, Inc. was a data processing service bureau for Daichi Kangyo Bank, one of Japan’s largest banks. The company appears to be inactive and did not file a response to the complaint entered by Deutsche Kreditbank. The sole panelist finds bad faith in DKB Data Services continued passive registration of the dkb.com domain after the company no longer needs the domain when ‘dkb’ is now a trademarked term of the bank. The panelist was aware of DKB Data Services’ connection to Daichi Kangyo Bank, yet still found that DKB Data Services registered and used dkb.com in bad faith and had no legitimate interest in the domain. This result would likely have been avoided if DKB Data Services had filed a response, but even with the limited evidence available it seems clear that DKB Data Services had both a legitimate interest and that there was no bad faith involved in its registration of dkb.com. Analysis by Paul Keating Esq. at Domain Name News. Write-up at Domain Name Wire.

#10. PORSCHEEXPERIENCE. COM and PORSCHEGUIDES. COM

This case makes the Wall of Shame even though the domain name owner WON! This case is shameful because it makes a mockery of the UDRP, but for reasons very different than the cases above. Both domain owners and trademark holders want a consistent, clear set of rules. In this case the Respondent registered domains based on a world-famous trademark and then tried to sell the domains back to Porsche for several thousand dollars. The icing on the cake is that the domain owner didn’t even bother to file a response. If this isn’t a violation of the UDRP, then what is? The lack of clear guidelines is turning the UDRP into a casino, where covetous companies queue up to pay the filing fee for a chance to roll the dice in a UDRP (see the Scalar.com case). If they win they get to snatch a valuable domain from the registered owner. WIPO and ICANN shouldn’t be celebrating. They should be ashamed that they let things degenerate to this point. Write up at TheDomains.