First reported by Domain Name Wire, Automattic has won their Uniform Domain-Name Dispute-Resolution Policy (UDRP) case against Chris Pearson. UDRP requests are a process established by the Internet Corporation for Assigned Names and Numbers (ICANN) for the resolution of disputes regarding the registration of internet domain names.
Automattic Wins Thesis.com
According to findings by the UDRP panel, in late 2014, a third-party who owned Thesis.com approached Automattic and Pearson to see if they were interested in buying the domain. Automattic won the domain by bidding $100K.
Soon after winning the domain, Pearson filed a UDRP request with ICANN seeking relief requesting that the domain name be transferred from Automattic to himself. In June 2015, a three-member panel was appointed to review the case.
According to rule number five set forth by ICANN for the UDRP process, Respondents have 20 days to respond to the Provider. If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel decides the dispute based upon the complaint.
In a controversial move, the Panel accepted and reviewed Automattic’s late response.
The Panel notes that Respondent failed to submit its response within the requisite time period, failing to comply with ICANN Rule #5. In its discretion, the Panel considered Respondent’s arguments in the late filed Response in the interest of justice.
Pearson satisfied two of the three burdens imposed under the Policy in order for the Panel to order transfer of a domain name from the entity registering it. Pearson failed to provide evidence that showed Thesis.com redirects to Themeshaper.com. In its response to the Panel, Automattic admitted to using the domain in this way but it appears to have had no affect on the Panel’s decision.
The Panel noted that if Complainant’s submissions are insufficient, it may request additional exhibits or information under Rule 12 but given the outcome, the Panel chose not to seek additional submissions.
You can view the panel’s findings in this public document. The panel concluded that the Complainant (Pearson) failed to establish all three elements required under the ICANN Policy and that relief shall be denied.
A party must satisfy all three of the burdens imposed under the Policy in order for the Panel to order transfer of a domain name from the entity registering it. Here, Complainant failed to establish that Respondent registered and used the disputed domain name in bad faith.
See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)). Therefore, the Panel finds that Complainant failed to support its allegations under Policy ¶ 4(a)(iii) and finds for Respondent.
Therefore, Thesis.com is allowed to remain under Automattic’s ownership.
Automattic Strikes Back
On June 16th, Automattic struck back by filing a petition for cancellation with the United States Patent and Trademark Office. In their petition, Automattic argues that the three trademarks owned by Pearson, DIYTHEMES, THESIS THEME, and THESIS, should be cancelled.
When questioned about the Thesis.com domain and petition to cancel Perason’s trademarks, Automattic responded with the following statement:
Chris Pearson tried to seize a domain Automattic owns through the UDRP process. As part of defending ourselves we have dug into the trademarks that were being claimed by the aggressor, as that was the basis of his claim.
We’re happy the panel ruled in our favor. We think Thesis.com is a cool, generic .com that could be used for a variety of things. Just because you have a small WordPress theme doesn’t mean you have a right to seize generic English word .com domains.
I’ve reached out to Pearson for comment but have yet to receive a response.
Automattic’s Interest in Thesis.com Remains Unexplained
There are a lot of unanswered questions that need to be answered. For instance, why did Automattic participate in the bidding process for Thesis.com when it has nothing to do with WordPress.com or associated services?
The turbulent history between Matt Mullenweg and Pearson in 2010 nearly resulted in a lawsuit over GPLv2 compliance. The statement from Automattic fails to clarify why the company pursued Pearson again years later by bidding on a domain relevant to his business, apart from stating that it’s “a cool generic.com”. Going after Pearson’s trademarks in order to have them cancelled raises questions as to whether the move is motivated by retribution.
We’ll keep a close eye on the trademark cancellation petition and if there are any updates, we’ll let you know.