Dori Media International called out for Reverse Domain Hijacking by WIPO arbitrator.
Fred McCaw was a bit late to the domain market. Getting started in 1999, he realized all of the good english-language domains were registered. So he registered generic domains in foreign languages, including his native Filipino. The first domain he registered was Rebelde.com, which means “rebel” in Spanish and Filipino.
Over the holidays McCaw successfully defended a reverse domain hijacking attempt by media company Dori Media International, which has a spanish language soap opera called “Rebelde”.
I caught up with McCaw by phone this afternoon.
Here’s the saga. McCaw registered Rebelde in 1999 and used it as a free e-mail service for several years. He wasn’t making much money with the service and shut it down. He started parking the domain and was surprised by his stats: He made $7,000 in revenue the first month he parked it at Sedo. Surprised, he decided to figure out why he was getting so much traffic.
“I Googled my own domain, at which point I found out why so much traffic was coming,” said McCaw. The domain was getting traffic from people looking for various entertainment such as soap opera. He decided to reach out to companies that might have been interested in the domain. He contacted EMI Records which has a band called Rebelde. But it wasn’t long before he was notified by Dori Media International that they wanted his domain and were going to take legal action rather than trying to buy it.
Dori Media and its law firm, Keats McFarland & Wilson, LLP, apparently didn’t think it was important that McCaw registered the domain several years before the soap opera debuted. In his written opinion, World Intellectual Property Organization panelist W. Scott Blackmer blasted the company and the firm for abusing the UDRP process:
The corporate Complainant, represented by reputable intellectual property counsel in Beverly Hills, California, claimed bad-faith registration and use of the Domain Name despite evidence of years of legitimate use and the glaring fact that the Complainant had no trademark rights at the time the Respondent registered the Domain Name in 1999. It is surprising and disappointing that experienced counsel would prosecute a UDRP complaint with such obvious defects, and it suggests overreaching on the part of the Complainant.
Accordingly, the Panel finds that the Complaint represents an attempt at reverse domain name hijacking.
For his part, McCaw said he’s spent “tens of thousands of dollars” in legal fees defending the domain. He is considering suing for stress and expenses. “It’s a good thing I mad the money from Sedo” because it covered some of the legal expenses, he said. But he’s still in the red. He also doesn’t understand why a large company wouldn’t want to buy a domain that would send thousands of qualified customers to its doorstep every week.
McCaw plans to monetize the domain again in the future and plans to restart his free e-mail service.
Basicity says
Thanks for covering this.
Congrats to Fred! This is indeed a big victory. He should definitely consider countersuing for whatever that’s legitimate. Also, hope that there is/will be some monetary penalty instituted against complainant found guilty of reverse domain hijacking.
David J Castello says
Bravo!
Cogratulations to Fred McCaw and a tip of the hat to W. Scott Blackmer for his wise ruling/comment.
However, I’m curious as to how Mr McCaw incurred so much in legal fees if this went through UDRP arbitration.
Andrew says
David, I have a hunch on why the legal fees were high. But I asked Fred to comment with a specific answer.
Thanks
Steve M. says
Unfortunately (or not depending on whether one wins or loses their UDRP), Basicity, there is no “countersuing” option available via this arbitration only option/venue.
Fred would have to sue in an actual court of law; which would of course entail costs even higher than a UDRP.
The good thing here is that Fred should be able to use this “case” as ammunition should anyone else attempt to again steal what is rightfully his.
M. Menius says
Excellent story Andrew and a case illustration that should be referenced for years to come. A perfect example of how the UPRP process gets abused. For domain hijackers, it’s their “cheap” way of trying to steal. But rules are rules, and the defendent won because panelist Scott Blackmer did his job and did it well!
Jim says
Seems rebelde.com is not resolving. Looks like Sedo has discountinued service to the domain name.
Fred McCaw says
Hello everybody, this is fred mccaw. Thank you very much for all of your kind words. It was a tough ordeal with countless sleepless nights over the past year and a half. Rebelde.com was my very first domain that I registered. The thought of a big bully trying to take it away is like, to me, someone trying to steal my first born child!
Fred McCaw says
To answer Jim’s comment (#6):
I intentionally took down Rebelde.com from Sedo for now. I will be posting the complete decision of the World Intellectual Property Organization on the index page. Yes, I do need the money from the domain monetization, but I want the Internet omniverse to know that not all little guys can be bullied around.
This financially fruitless victory has far more significant value and benefit beyond that money can measure.
Fred McCaw says
A rebuttal to M. Menius’ comment (#5):
Yes, the WIPO panelist was indeed thorough and fair. He really knows his stuff. He cited each of the Complainant’s concerns and issues and gave a justification as to why they were dead wrong! For example, Dori Media has trademark rights for their Rebelde brand in over a dozen Spanish countries but not in the USA. Also, their trademark only was approved in 2002 & 2004. My domain was reserved in 1999. Mr. Blakmer set them straight by replying (kinda a long comment):
“The Complainant does not squarely address the Respondent’s use of the Domain Name for more than six years before he parked it with Sedo, nor his stated reasons for registering the Domain Name in 1999, even though much of this was disclosed in earlier correspondence between counsel for the Complainant and counsel for the Respondent. The fact remains that the Domain Name is a dictionary word in Filipino and Spanish, and the Respondent demonstrably operated a website offering email accounts and other services targeted to a Filipino and Spanish audience for years before the Complainant’s mark was established. Thus, even if the Complainant proved that the Respondent acted irresponsibly in 2006 and 2007 in allowing an automated Internet advertising service to use the Domain Name in a way that arguably exploited the fame of the Complainant’s REBELDE mark, it seems impossible for the Complainant to establish that this was the Respondent’s intent when he registered the Domain Name in 1999. See, e.g., Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827 (the Policy requirement is conjunctive, and this element of the complaint is not established without a showing of bad-faith registration as well as subsequent use in bad faith).”
Fred McCaw says
Btw, I am the RESPONDENT. Dori Media & attorneys are the COMPLAINANT.
Fred McCaw says
In response to Steve M (#4):
“Fred would have to sue in an actual court of law; which would of course entail costs even higher than a UDRP.”
Steve is absolutely correct! There is no countersuing with the WIPO and there are no monetary rewarding. I would have to sue in civil court, which would entail even much much much higher legal cost and my time.
Thank you Steve.. Excellent comment!
Fred McCaw says
To David & Andrew (#2 & #3):
My legal battle with them actually started in 2006 when I contacted the Spanish division EMI Records who at the time were in charge of REBELDE the musical pop sensation to sell my domain to them.
The average attorney fee is about U.S.$300 per hour. You multiply this times dozens and dozens of hours and you’ll get an idea. Did you know that even if the attorney asks his/her assistant to xerox some paper and express mail or email to the Complainant and let’s say that took an hour to do, did you know that $300 would be charged to the client? A phone conversation by my lawyer in which he is talking to the Complainant’s lawyer for half an hour, I just got billed $150 for that call. Needless to say it has costs me thousands and thousands of dollars already. I haven’t done official reconciliation yet, but when I do I’ll let you know.
Andrew says
Fred, re #12, I think the reason David asked about legal fees is because there are a number of domain lawyers who respond for about $5k. (someone correct me if this number is wrong.). These lawyers specialize in UDRP and know exactly what to do, so they can keep their costs down.
This case was probably a bit more involved.
Associated Domains says
Fred, thanks for sharing this story and commenting on this post. It would benefit us all if you would recount the story, document your ordeal, and share your lessons learned on your web site once it’s up again…may be in blog.
Again, congrats on the victory.
M. Menius says
Fred – No rebuttal needed. I’m squarely in your camp on this and glad you won. Dori Medial Intl are the ones in the hall of shame, imo.
Fred McCaw says
The following is a link to the official domain dispute decision of the World Intellectual Property Organization:
http://www.wipo.int/amc/en/domains/decisions/html/2007/d2007-1525.html
Fred McCaw says
When reading the WIPO decision, I am Sikreto LLC. This is my limited liability corporation that my domains are sheltered in.
The WIPO’s decision makes for a good read. Enjoy!
David J Castello says
Two things.
1) We were challenged in ICANN arbitration for our Caution.com by a guy who sells Caution Underwear (no joke, he was on the Howard Stern show). He also has a trademark for the word Caution. How did we beat him? It was actually quite easy. He accused us of things that weren’t true. Among them was that my brother Michael and I had seen his underwear for sale in a gay bookstore before we bought the name (I can assure you that a gay bookstore would be the last place you’ll find me and my brother). He also called our elderly mother in Florida to tell her that my brother had been in an automobile accident to try and get his new phone number (he’s damn lucky I’m a law abiding man).
Sure enough, he was trounced on trying to prove Bad Faith. Total cost? I handled it all myself: $250.
2) Advice to Mr McCaw. In the future, no matter how well intended, don’t get “creative” in approaching people to sell your name. In fact, don’t approach anyone who may think they should own the name. It’s like ringing the dinner bell for these sharks.
Andrew says
re #18: David, I just read the UDRP for Caution.com. I assume the part about “The Additional Submissions of both parties contain extensive argument with little if any additional material factual allegations or information not contained in the Complaint and the Response” is where the complainant made those crazy accusations.
http://domains.adrforum.com/domains/decisions/159460.htm
David J Castello says
Actually, he made his ridiculous accusations upfront when I was served with a complaint the size of a large telephone book. After my intial response that factually pointed out his falsehoods, he replied again with more of the same.
The funny thing is I had no idea we’d won on July 1, 2003. In October 2003 I started dating my future wife who was a Private Investigator at the time. Considering the fact she was a dropdead gorgeous PI, she did the logical thing and wanted to know the scoop on this “Internet guy” who’d just asked her out for sushi. She was the one who told me about the Caution.com decision.