UDRP complaint for insurance.pro denied – Complainant accused for front-running

A UDRP complaint for the domain name insurance.pro was denied at the National Arbitration Forum.

Complainant was Christopher Copeland, represented by John M. Bray of Moreno & Bray Law Firm, Texas, USA.  Respondent was Michael Silver, represented by John Berryhill, Pennsylvania, USA.

On January 15, 2014, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, Hector Ariel Manoff, Esq., and James A. Carmody, Esq., (Chair)  as Panelists.

Respondent claimed that:
“The instant dispute constitutes a trademark dispute outside the scope of the UDRP, and the parties should resolve the matter in court. Complainant’s registration of the INSURANCE.PRO mark constituted “front-running:” the practice of registering a mark that includes a generic top-level domain (“gTLD”) that has not yet been officially launched by ICANN.  Moreover, there is evidence that Complainant committed forgery/perjury in the documents it sent to the USPTO to support the renewal of its INSURANCE.PRO trademark in 2013. Further, there is evidence that Complainant abandoned its INSURANCE.PRO mark and is not using the mark in connection with any insurance products or services. Therefore, substantial, non-frivolous questions exist as to the validity of Complainant’s INSURANCE.PRO mark, and the Panel should deny Complainant’s request for the transfer of the <insurance.pro> domain name.”

“Respondent originally registered the <insurance.pro> domain name a “number of years” ago.  However, prior to Respondent’s registration of the disputed domain name, the domain name had been owned by a third party as early as August 22, 2005: nearly nine years ago. Given Complainant’s failure to bring an adverse UDRP action before now, the Panel should apply the equitable doctrine of laches to deny Complainant’s requested relief.”

The Panel agreed that this trademark dispute falls outside the scope of the UDRP:
“It appears to the Panel that the instant dispute constitutes a trademark dispute outside the scope of the UDRP, and the parties should resolve the matter in another forum such as a court of mutual jurisdiction or before the USPTO. Respondent offers three arguments as to why the instant dispute is outside the scope of the UDRP.  First, Respondent asserts that Complainant’s registration of the INSURANCE.PRO mark constituted “front-running:” the practice of registering a mark that includes a gTLD that has not yet been officially launched by ICANN.   Second, Respondent argues that there is evidence that Complainant committed forgery/perjury in the documents it sent to the USPTO to support the renewal of its INSURANCE.PRO trademark in 2013.  Finally, Respondent asserts that there is evidence that Complainant abandoned its INSURANCE.PRO mark and is not using the mark in connection with any insurance products or services.  Respondent concludes that substantial, non-frivolous questions exist as to the validity of Complainant’s INSURANCE.PRO mark, and that the parties should determine the matter in another forum.  The Panel agrees.”

“This controversy having been found not to be appropriately resolved within the mandate of the UDRP,  the Panel concludes that relief shall be DENIED.”