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Correcting the Law in a Later Decision Wrongly Stated in an Earlier One

There is no intra-UDRP procedure for correcting a wrong decision. To state the case charitably, there are some decisions that deserved more than a single set of eyes, but the Policy provides no procedure for appeal. Recourse is to a national court, which in the United States would be a claim in district court under the Anticybersquatting Consumer Protection Act (ACPA). Either the law upon which a panelist rested his or her decision or his or her understanding of the law was grounded on a false premise. Such decisions are legal dead ends. Unfortunately, parties with small means are discouraged by the expense of a plenary action to mount a de novo challenge to a UDRP decision.

While it is no comfort to the losers of an earlier case, it does happen that the correct law is applied in a later one. An example of this is Loma Linda University Adventist Health Sciences Center, et al. v. JM XTrade, Inc., Joseph Martinez, D2009-0036 (WIPO March 11, 2009) in which the sole Panel determined that the Complainant had a superior right to <> and <> even though “Loma Linda” is a geographic location and not registrable as a trademark. The decision was recently voted the worst reasoned decision of 2009 by a distinguished panel at the T.R.A.F.F.I.C convention is Los Vegas.

The correction to “Loma Linda 1” came in a majority decision in “Loma Linda 2”, Loma Linda University Adventist Health Sciences Center, Loma Linda University and Loma Linda University Medical Center v. Development Services, StateVentures, LLC, D2009-1059 (WIPO December 18, 2009) (<>). The dissent, no other than the sole Panel in Loma Linda 1, stuck to his original position that although “geographic indicators do not qualify as a trademark right … [nevertheless] the name ‘Loma Linda’ should constitute an exception to the general rule.”

The majority in Loma Linda 2 rejected this position. “Complainant cannot rely on its United States registrations because those registrations specifically disclaimed any exclusive rights to the term ‘Loma Linda’.” And, in any event “the Complainant’s claim of secondary meaning in LOMA LINDA fails because over the years LOMA LINDA has become utilized by others in numerous contexts. Indeed, LOMA LINDA has become the name of a city with some 22,000 inhabitants.” The Respondent’s legitimate interest in the domain name rests on proof that it “is in the business of developing geographically-oriented websites featuring information and services about municipalities and other geographic regions.”

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