The Bleach Boys

In a razor thin 2-1 decision, a WIPO Panel held in favor of the registrant of <> on a Complaint brought by Clorox.  Although the Panel found that NetEgg had made bad faith use of the domain name for over a year from October 2008 to February 2010, a majority of the Panel held that there was no evidence that NetEgg had registered <> in bad faith ten years earlier.  Cloro is Spanish for “chlorine” and “bleach.”  After finding that Respondent provided evidence that it had amassed a collection common Spanish language domain names, the majority held that, “[i]f Respondent did not register . . . the domain name at issue in this case, with an intent to use the Domain Name in bad faith, then he may use the Domain Name in any legitimate way he choses, including to attract Internet users to adult content sites.”  The Panel further held:  “Businesses are entitled to register domain names with generic meaning and value as an investment and decide what to do with them later. They may use them for any non-infringing use, or sell them, as they see fit.” The Clorox Company v. Domains for sale, dba Netegg, Case No. D2010-0831 (August 13, 2010).

The case also contains a biting dissent from the President Panelist who would have found in favor of Clorox, as well as a finding that there were no special circumstances to justify the Panel’s consideration of Supplemental filings in the case.  Notwithstanding the absence of any WIPO rules that would allow for the filing of supplemental papers, Clorox submitted not one, but two sets of supplemental papers.  The Panel found that if such filings “were to become frequent in UDRP disputes, the disputes would likely become significantly more resource-consuming to all actors (the parties, the dispute resolution service, and the Panel) than is currently the case, which presents an outcome that seems contrary to the original intention of the Policy and the Uniform Rules in their present form.”  All good stuff as far as I’m concerned.  Most supplemental filings are a waste of time and money.

The decision is interesting not only because we won (we represented the Respondent, NetEgg, in the proceeding), but because it presents a clear example of how the same set of facts can lead to different results depending on who the panelists are.  If NetEgg had not paid for a three member panel, would Clorox be speaking Spanish today?