Ace.com Owner Wins Arbitration
Friday, April 11th, 2008
After $450,000 offer rejected, ACE Limited filed and lost UDRP arbitration.
WebMagic Ventures, owner of Ace.com, has won an arbitration brought against it by ACE Limited, an insurance company. This is an extraordinary case given the value of the underlying domain name and egregious assertions brought by ACE Limited. However, the panel could not charge ACE Limited with reverse domain name hijacking. This is just one of many three character domain names currently in dispute.
WebMagic registered the domain name prior to ACE Limited’s first use in commerce claim on its trademark for “Ace”. However, ACE Limited claimed common law trademark rights dating to 1985.
The panel found that “ace” is a common term and not exclusively owned by ACE Limited. It didn’t hurt that WebMagic has a trademark for the term ace for the class of services for which it is using the domain name. WebMagic didn’t register the domain name in bad faith and is using it for a bona fide offering of services.
ACE Limited claimed WebMagic files trademarks simply for UDRP defense:
Respondent systematically stockpiles hundreds if not thousands of domain names for resale. In all respects Respondent is a cybersquatter in the business of buying and selling domain names. Further, in an effort to mask their business practice of cyber-squatting, Respondent files trademark applications for certain of their domain names listing the services as websites providing retail, advertising and various information links.
ACE Limited also said that WebMagic merely creates customized parking pages for its domains.
WebMagic was quick to point out that it has started several businesses:
Complainant chose to ignore the history of Respondent, who is in the business of creating businesses, and is additionally a service provider for clients. Respondent created and operated Toys.com, which after obtaining half the online marketplace in the U.S. for mail order toys and nearly all the market share in more than 20 other countries, merged with eToys. Respondent created the famous NASDAQ-listed company Pets.com, whose logo was seen in Super Bowl ads, Macy’s parades and branded merchandise.
ACE Limited never disclosed to the panel that it made multiple attempts to purchase the domain name from WebMagic. It made several offers, including a $450,000 offer that was implied to be a “starting point.” WebMagic repeatedly said the domain was not for sale. After years of failed attempts to buy the domain, ACE Limited filed the UDRP.
Although WebMagic won the dispute, the panel did not find reverse domain name hijacking. It found that ACE Limited does have limited rights to “ace” and made reasonable assertions that WebMagic may have acted in bad faith (even though they were debunked).
Much like the Shoppers.com decision, although this is not reverse domain name hijacking according to the panel it certainly seems unethical.
Further Reading:
- Arena.com Owner Wins Domain Name Arbitration
- PokerHost.net Owner Wins Reverse Domain Hijacking Charge
- Paris Wins Parvi.org in Disturbing Domain Name Arbitration Decision
Tags: National Arbitration Forum, udrp
[...] Source: Domain Name Wire [...]
Things are looking good in the courtroom.No trademark…no case.
Another victory for Generics.
With or without a TM, nobody should be able to claim exclusivity for such a common word.
[...] on two important UDRP decisions that were announced in the past two days. Shoppers.com and Ace.com were both retained by the current owners after large companies filed a complaint for each of these [...]
Andrew, you said that the panel Didn’t find reverse domain name hijacking (RDNH). Wonder if you can clarify what does it really mean with regards to the complainant, to the respondent and to the domain in question.
I think what I am asking is say when a panel found RDNH against a Complainant for a particular domain, is that domain free from claim from other, future potential Complainants?
thanks.
Amazing – Ace.com. Hey that’s my trademark. Give it to me. Such a common name. Should never have seen the light of day in court.
@ Tommus – finding that a company engaged in RDNH is really just harsh words from the panel. A slap on the wrist. It could be brought up in a future case involving the complainant, though.
It also doesn’t free the domain from future claims. It’s really just a knock against the current complainant.
Anyone who knows otherwise feel free to comment…
GREAT NEWS – I hope that EVERY EVIL Company which wants to steal a domain name from a domain name owner via Arbitration losses money and goes bust – out of business.
First person comes to a party get’s the cake (registeres the domain name) – if the other party wants the cake (domain name) they should buy it from the domain name owner (Seller).
Today’s Company’s are slowly waking up and realize that the domain names are priceless when it comes to expanding and establishing a great online presence so Idiotic and pathetic Company’s gave some money (bribes) to some senators in the USA Government so they can approve the Snowe Bill so this Idiotic Pathetic Company’s can steal the domain names from the domain name owners via Arbitration.
[...] [National Arbitration Forum - Full Decision] [Domain Name Wire - “Ace.com Owner Wins Arbitration“] [...]
[...] on two important UDRP decisions that were announced in the past two days. Shoppers.com and Ace.com were both retained by the current owners after large companies filed a complaint for each of these [...]
Well I had no idea that domain hijacking was so rampant, especially for 3 char domains. I know that three character domains can go for a nice junk of change, especially one like ACE which is great brandable domain. Where as other three character domains probably aren’t that brandable. Who knows though…