A reseller for online payment gateway company Authorize.net has prevailed in a UDRP case at WIPO. Authorize.net filed the complaint against Cardservice High Sierra of Colfax, California on May 14, 2008, claiming that Cardservice High Sierra was infringing its brand by using Authorized.net as its domain name to resell Authorize.net’s services.
But this particular case hinged on the fact that Authorize.net had implicitly (and then explicitly) given Cardservice High Sierra permission to use the domain name. The domain was registered in 1998 and in 2005 Authorize.net requested a disclaimer be placed on the web site:
“AUTHORIZE.NET, the AUTHORIZE.NET logo, and ECHECK.NET are trademarks or registered trademarks of Authorize.Net Corporation or its parent company Lightbridge, Inc.”
By requesting this disclaimer be added to the page it shows that Authorize.net essentially blessed the use of Authorized.net by the reseller. The panel found that Authorize.net was aware of the use of Authorized.net much earlier and didn’t do anything about it. The sole panelist, Richard G. Lyon, even quoted part of a Sherlock Holmes novel to question why Authorize.net dodged the question as to why it took a decade after the the domain was registered to file the complaint:
“There is…no explanation for Complainant’s six years of silence before the 2005 email requesting a trademark acknowledgment,” Lyon wrote. “The Reply’s omission of this issue is either inexplicable or the eloquent dog that did nothing in the night.”
