David Einhorn, Partner and Chair of Scarinci Hollenbeck's Technology Law and Domain Name Dispute Resolution practice groups, recently served as arbitrator in a high-profile domain name dispute involving Bill Gates’ investment firm, Cascade Investment, L.L.C. Serving as a panelist for the National Arbitration Forum, Einhorn dismissed Cascade Investment’s cybersquatting complaint after finding that the company failed to demonstrate it possessed the necessary trademark rights.

Resolving Domain Disputes

Arbitration is generally available to recover a domain name if the owner of the domain registered it in bad faith, lacks legitimate rights, and has registered a domain name which is the same or confusingly similar to a registered trademark. In fact, when registering most domain names, registrants must agree to the mandatory arbitration of domain disputes. Once a complaint is filed, the claim is decided by a private arbitrator. If the complainant is successful, the domain name is transferred to the rightful owner.

The Uniform Domain-Name Dispute Resolution Policy (UDRP) has been adopted by registrars accredited by the Internet Corporation for Assigned Names and Numbers ICANN) for all generic top-level-domains (gTLDs), such as .com, .net, and .org. There are several other domain name dispute resolution policies in place for other domains, such as the usTLD dispute resolution policy for the United States country code, .us.

Arbitration Decision Involving Cascade Investment

The domain dispute in Cascade Investment, L.L.C. v. Royal Freight / Royal Frieght Inc. was governed by the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (Policy). Under that Policy, a complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

• The domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
• Respondent has no rights or legitimate interests in respect of the domain name; and
• The domain name has been registered or is being used in bad faith.

The domain name at issue, , was registered by the Respondent, Royal Freight, on April 21, 2020. On March 30, 2021, Cascade Investment filed a complaint with the National Arbitration Forum, alleging that the Respondent should be ordered to turn over the domain name.

Because the Respondent failed to submit a response in the proceeding, the complaint was resolved on the basis of the statements and documents submitted in accordance with the Policy. As the Panelist in the case, Einhorn determined that Cascade Investment failed to establish all three elements required under the usTLD Policy. In reaching his decision, Einhorn noted that Cascade offered no evidence that it has common law trademark rights in “Cascade Investment.”

“Complainant does not allege or provide any evidence of any trademark registrations which it owns with any national trademark authority. However, Complainant claims common law rights to the term CASCADE INVESTMENT,” Einhorn wrote. “However, the documentary evidence provided by Complainant in support of this allegation shows use of this term as a trade name, not as a trademark. The use of a trade name by Complainant is insufficient to establish rights under ¶ 4(a)(i) of the Policy.”

Because Cascade Investment failed to satisfy the first prong of the Policy, Einhorn did not need to address whether the Respondent had rights or legitimate interests in the domain name, or whether Registrant registered or used the domain name in bad faith. Although Cascade Investment was unable to obtain relief under the usDRP, Einhorn noted that “this is not a determination whether or not Complainant may be able to obtain relief in federal or state court.”

In addition to frequently serving as an arbitrator with respect to domain name cases, David Einhorn handles intellectual property and technology matters in areas involving domain names, patents, trademarks, service marks, trade dress, and copyrights. To learn more about David Einhorn and to get in touch with him, please visit https://scarincihollenbeck.com/attorney/david-a-einhorn.