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August 6, 2007: DecoderPro.com Ordered Transferred

As described previously, Matt Katzer registered the decoderpro.com domain name to prevent us from using our own trademark. He then transferred it to current registrant Jerry Britton through a settlement agreement which required Jerry Britton to pay $20,000 and Katzer's attorneys fees if Jerry transferred the domain name to JMRI. When we filed our Complaint with the court, we included a claim for cybersquatting and a request that the Judge order the return of that domain name.

Katzer's lawyers seized on that request, and argued that because we'd not "joined all necessary parties" -- that is, the current registrant Jerry Britton who lives on the other side of the country -- the judge had to dismiss the whole cybersquatting claim. There is a legal rule that a case has to include all people whose interest might be seriously harmed, so that they can have a say in the case. Katzer tried to use this rule to force us to either drag in Jerry Britton, another model railroader who just wants Katzer to leave him alone, or drop our request to get our domain name back.

To avoid bringing Jerry in, and to get our domain name back, we brought a proceeding under the "Uniform Domain Name Dispute Resolution Policy" (UDRP). We filed a complaint with the World Intellectual Property Organization, describing Katzer's misbehavior and misuse of the decoderpro.com domain name and asking them to order that it be returned.

Focusing on Katzer's settlement agreement, the WIPO panel returned a decision that had an entire section on "Katzer's Bad Faith", including:

  • "Indeed, the evidence supports the conclusion that Katzer had no purpose in registering the name except to keep it out of others' hands, including Complainant's hands."
  • "it is difficult to conceive of a legitimate use Katzer could make of the Domain Name."
  • "In the Panel's view, there is essentially a purpose on the part of Katzer to disrupt the business of a competitor by interfering with Complainant's exercise of his trademark rights."
and ended with the statement that:
  • "The Panel concludes that Complainant has demonstrated sufficient evidence of bad faith registration and use of the Domain Name on the part of Katzer"
The WIPO Panel then ordered the decoderpro.com domain name transferred.

It's undeniable -- this is a win for JMRI. An impartial panel, experienced in Internet and trademark law, has made a clear statement that Katzer had acted in "bad faith". Although that's been clear to us in the community since the beginning, having an impartial panel ruling in our favor is a big step toward holding Katzer accountable for his actions. Further, it allowed us to continue to press our cybersquatting complaint against Katzer, and prevents Katzer from entangling Jerry Britton in the case.

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