Man loses DEACOM.com despite overwhelming evidence of rights and fair use.
Businessman Ben Dean lost a UDRP this month for deacom.com, a domain name he’s owned since 1997 and used for his business. He says he can’t afford to fight the action in court, but set up UDRPfail.com to tell the world about his predicament.
A company filed a trademark for DEACOM in 2006, claiming first use in commerce in 1995. It decided to file the arbitration case to get the corresponding domain name.
Dean registered the domain name in 1997 and started using it for business and personal uses. He is a sole proprietor operating under the name DEACOM. He even had a corporation DEACOM Inc from 2002-2006 registered in New Jersey. He has used the domain name for e-mail throughout, most recently using Google Apps. He provided the arbitration panel with screenshots of his Gmail inbox that he uses with the e-mail [email protected] to the panel, along with the relevant incorporation documents.
But National Arbitration Forum arbitrator Estella S. Gold seemed to ignore the evidence and Dean’s use of the domain name, stating “The Panel agrees with Complainant’s assertion that Respondent has not utilized the disputed domain name in an active manner.” Apparently the use of a domain for e-mail and business purposes is not a legitimate use.
If Dean would have hired a good UDRP lawyer to handle his case he probably would have won. But you can read all of the documents in the case on Dean’s web site. It sure seems that the evidence was overwhelmingly in his favor.
Patrick McDermott says
What an injustice.
And not having the right to challenge such
an incompetent decision without incurring extreme legal cost is also an injustice.
I just did a quick Google search on
Estella S. Gold.
I wanted to see if there is a bias pattern
to her decisions.
The only other decision I checked was a dispute over Dice.biz.
As I was reading through the case it seemed she was going to incorrectly (my opinion) make a determination for the Complainant but she did not.
She made the right decision then.
“Since Respondent has a legitimate interest in the mark, the Panel therefore shall dismiss this Complaint,…”
But that was back in August 2002.
Something surely happened to her in the
past 7 years.
Dice Inc. v. Dice Multimedia Europe B.V.
http://www.adrforum.com/domains/decisions/114360.htm
Andrew Allemann says
Patrick, I looked at Gold’s history too and found plenty of denials. So this one doesn’t make sense to me.
Alex says
This is exactly why there should be a “loser pays” clause. I agree that Dean would have probably won had he been able to retain a good attorney.
Knowing that I wouldn’t be liable for the legal fees if I won would have certainly given me the incentive to hire the best.
Steve Z says
This is a terrible decision. It would be nice to see how some of the prominent Domian/IP attorneys comment on this. Would make for a nice article on DNW. I don’t believe this would ever have happend with a 3 panel UDRP. What an injustice.
K says
“Registration and Use in Bad Faith.
Policy ¶ 4(a)(iii). The Panel finds that it is not limited to the Policy ¶ 4(b) factors when conducting a bad faith analysis; rather, the Panel considers the totality of the circumstances. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”).The Panel agrees with Complainant’s assertion that Respondent has not utilized the disputed domain name in an active manner, the Panel finds that Respondent engaged in bad faith registration and use under Policy ¶ 4(a)(iii). See Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the respondent’s failure todevelop its website in a two year period raises the inference of registration in bad faith); see also Caravan Club v. Mrgsale
, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use ofthe domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith).”
– The panelist made an ‘inference’ of bad faith registration because the Respondent made no use of the domain name for two years. What’s interesting is this decision was not based on the totality of the circumstance.
– There is no appeal and Federal court is simply another road block because of the cost incurred.
– Use it or lose it. It’s that simple.
1. Don’t park your domains,
2. Don’t use privacy protection
3. Don’t leave them unresolved (404).
1. Develop your domains
2. Set up email and use it
3. Create an LLC of the domain for ownership.
That’s your best and cheapest protection.
Patrick McDermott says
Ben Dean says on his site he was told he’d have to spend at least $75,000 to fight this decision in court.
I don’t know who told him that and if he shopped around with some of the top domain lawyers.
Perhaps he’d get lucky and one of the domain lawyers would represent him on the cheap just to fight this injustice.
So Ben if you see this did you contact several domain lawyers?
Do you need a domain lawyer contact list?
K says
“Perhaps he’d get LUCKY and one of the domain lawyers would represent him on the cheap just to fight this injustice.” PM
That gave me a good chuckle. You clearly do not understand lawyers or the legal system and what motivates them. It has nothing to do with ‘justice’. That’s a malleable word. It will cost 50-100K in Federal court, minimum ballpark, to fight this.
Johnny says
It really seems like the rules are being changed daily on these decisions.
Two years? Does anyone here remember just how damn hard it was to creates sites, host them, and get everything rolling back in 96′ to 99′? Everything was more expensive….computers, connections, software, good tech help, etc….. These judgments are being made based on how easy it is to slap together and host a site today b/c they were not creating sites in the 90’s …..so they have no idea what they are talking about.
Patrick McDermott says
““Perhaps he’d get LUCKY and one of the domain lawyers would represent him on the cheap just to fight this injustice.” PM”
Of course you’re right.
I don’t.
But once in a while a lawyer will take a case even Pro Bono because of a grave injustice.
It’s not just in the movies.
Long shot?
Of course.
But you never know unless you try and by trying what does he you have to lose?
Also the other side has legal fees too and they may indeed lose.
Patrick McDermott says
K,
“Arnold, Fortas & Porter was the only major law firm in the United States willing to represent (pro bono)the victims of McCarthyism. ”
http://snurl.com/ProBono
—
“Famous Pro Bono Cases ”
http://snurl.com/ProBono2
—-
“Phoenix Lawyer with Diabetes Takes Pro Bono Cases to Help the Phoenix Diabetes Community”
http://snurl.com/ProBono3
—
I’m stopping here.
You never know unless you try.
Miracles sometimes happen…even with lawyers.
ojohn says
How about establishing a “ Domain Owners Legal defense Insurance ” where for a monthly fee your legal expenses can be covered up to a million dollars (assuming that you are not intentionally infringing on anybody’s TM). I am not sure if the existing Insurance companies that provide professional liability Insurance also cover domain names or not.
gpmgroup says
The simple way to correct outlier decisions would be to keep the UDRP system as is but add a further stage.
Allow a losing respondent to file an appeal UDRP and have a different panelist consider the case.
i.e. they have to pay the same fees as a complainant did at the start of the UDRP and if the [initial] complainant wishes he can have the appeal heard by 3 panelists provided he pays the balance.
Of course either party could go to court but this would at least provide a much cheaper appeal route should a respondent feel aggrieved.
Andrew Allemann says
gpmgroup – you could also make the second phase go much faster by not allowing anyone to submit more information. Just take the documents and run with it. To avoid any bias, you could allow either party to appeal and pay for it and have the original decision not posted or made available until the appeal period is over.
gpmgroup says
The idea of allowing only the initial submissions for the appeal seems good.
Whether the appeal panelist should be allowed to see the initial decision is an interesting question.
I’m not sure about allowing either party to appeal. It could be bit like double jeopardy, with economically advantaged complainant’s making an appeal de rigueur.
Ramiro Canales says
This is a bad opinion. There are plenty of UDRP cases that hold that there is no bad faith registration and use when trademark rights did not exist at the time of registration. Additionally, using a domain name for email has been found to be a legitimate use. A California agency raised similar arguments against my domain name, but they failed. The advantage I had was that I am an experienced litigator with a background in trademark law.
GS says
You should appeal against the decision in a civil court.
The first thing is to hire a good lawyer to represent you in the proceedings and who understands the subject well.
I would recommend consulting http://www.domainconsultant.tel for issues relating to Domain Names
Greg says
gpmgroup makes a great recommendation. Too bad the powers that be won’t make it happen.
Jeffery Cockburn says
first post – ” As I was reading through the case it seemed she was going to incorrectly (my opinion) make a determination for the Complainant but she did not. ”
There seems to be a racket in the domain dispute system. Even someone who keeps their domain after paying the $5k to the ‘ecosystem’ is a loser of money time and grief.
Look for EXTRANIOUS REASONING especially in the cases where the domain registrant wins. This unnecessary reasoning can then be used as cover for future complaints; so that the complaint does not look completely unfounded. The cases are daisy chained by reference and fake popular reasoning and thus the legal ball is moved down the field; not on every down but in time to get the first and ten. This pattern is most apparent in cases where the domains are pure generic.
There is also a giant history of confilcts of interest that can be established. IMHO the behind the scenes records from the beginning of the udrp until today is a study in crookedness.
The lawyers run in packs and there are some that stay out of the public record.
The next moneymaker for certain thieves will be the generic words registered as trademarks that are uncontestible because they have been sitting for five years 🙂
P.S. the most offending cases are usually filed around holidays, because people have less time to respond.
donnacha says
@GS – it is kind of scummy to recommend a domain consulting firm without making it clear, in your post, that you own the firm.
Anna Hillshill says
Err.. Not so fast Cockburn. If there is a racket operating in the udrp ‘ecosystem’ then somebody by now would have paid the $160 to respond to a udrp (or a federal lawsuit) complaint with a federal RICO lawsuit. There is about nine years worth of cases with many many witnesses that could be easily tapped. The patterns would be easy to find for someone witting with lots and lots and lots of time on their hands.
This is America where legal opinions are just that opinions, there is never that type of criminal liability associated. In MY humble opinion Lawyers are safe from such claims.
Learn Your history Cockburn! Reverse Hijacking provisions are there to protect the weak from criminal extortion by pirates.
Jeffery Cockburn says
I will have to agree with Anna that RICO is something all domain owners should read up on. (I have not read the case that started this thread and I am not saying anything about anyone involved in the case that started this thread.)
For those without money – going down and filing a federal lawsuit without an attorney does not cost that much money. I would do that before going to udrp anytime. IMHO the court should help find the truth unlike udrp scare tactics and wierdness. (barcelona.com case, original court got it wrong but the appeal court got it right and duly noted the ‘phantom’ document)
If there is extranious reasoning in the case that started this thread as the first post suggests to me then I am interested in looking further. I will have to check out dice.biz situation also, sounds interesting.
My advice to anyone being domain hijacked is to get the advice of an very old attorney who has been around the block and knows how organized crime actually works and who the players are behind the scenes while other attorneys take hits for the team at times.
IMHO such an experienced person will be able to connect the dots in the udrp history and all of the prior public disclosure in this small world not provide a defense for those systematically destroying the weak domain registrants.
K says
“For those WITHOUT MONEY – going down and filing a federal lawsuit without an attorney does not cost that much money.” JC
That’s an oxymoron. If you don’t have any or not much money then DO NOT go filing Federal lawsuits, especially not without a lawyer. You’d be setting yourself up for disaster.
If you choose to you can as an individual. But, if you own your domains or anything else for that matter as a BUSINESS you are required to have legal representation in Federal court. You cannot file on behalf of your business unless you are a lawyer yourself. It’s just another hurdle laid before the commoner.
M H says
As gpmgroup posted, there should be an appeals process available at cost to the parties involved. BOTH parties should be charged an appeal fee. Appeal fee to go towards 3 panel judge, the party winning the appeal gets refunded the fee. Losing party pays for the panelists.
Jeffery Cockburn says
the term HIJACKING when used in as a legal term is strong language with a history of severe penalties. We are now at the point where some attorneys rush in where angels fear to tread and they attempt to HIJACK domain registrations under various guises of reasoning. Enough of these type of cases have been documented. I am refering to the cases where there is only the appearance of merit if that.
post – 22 ‘If you choose to you can as an individual.’
My impression is that many individuals have sold there domains at the last hour in response to threats.(this is revealing)Many of these names have been excellent generics? For those that held out many of these cases have been withdrawlllln??
Even if it were my business that was being HIJACKED, I would keep my money and go file a federal RICO lawsuit claiming that myself and my business are under fire. I will admit that Recognizing the paterns and knowing how the back end works is important. That way the discovery process will rock.
IMHO it is only a matter of time before someone drags the bad apples out of this barrel of crookedness that sits withing the udrp record of nine or so years. THIS PIG IS FAT.
JUSTICE will return, its a small world after all.
Anna Shillhill says
It just occured to me – if a defense attorneys filed a RICO lawsuit against the hijacking group (if such a group exists) then they would in effect dry up a big part of their furture business.
In my career I have seen more than one threat of CRIMINAL prosection made against a domain registrant who did not even have a page and I think threating financially devistating fines is common practice for attorneys trying to acquire domains.
Innocent domain owners really need to get outside of the domain ecosystem to get good advice.
I will agree with you on this point Cockburn, the udrp record is ripe for someone to come in and have a field day with discovery. To me it really is an open secret that a lot of people have made a lot of money (and taken some good domains) making bogus and framed up claims. Having created their own injuries so to speak? Does anyone know if this is true?
The ‘slip and fall’ trademark owners will not be hard to find through discovery. Someone who likes to kick discovery ass will have fun for sure. I hope they post.
Who funded these trademarks?
Is it true that some attorneys act as domain judges and also file and defend domain cases? NICE!
donnacha says
I think the arbitration companies are running the real racket here. With no oversight from ICANN, they have been left free to increasingly ignore the UDRP rules and focus upon improving their publicly published percentage of Complainant Wins, knowing that potential Complainants will always bring their thousands of dollars to the arbitration company which they think will give them the best chance of winning. In this game, giving fair judgments means losing customers to competing arbitration companies.
If you think about it, greed has actually lured them into quite a vulnerable position – I’m pretty sure that you could prove, statistically, that panelists who hand down decisions for the Respondents tend not to get invited back. Reading back on decisions over the years, it is clear that they have become increasingly anti-Respondent. If you can show a link between the arbitration company’s interests and it’s choice of panelists, you’ve got a pretty solid case.
donnacha says
What I’m saying is that, just as with the banking system, the gold rush mentality has pulled these companies into a very exposed position.
We think we are powerless but we could be sitting on a very straightforward class action, one that could result in ALL past UDRP decisions being reviewed and substantial damages for anyone who can show that they have lost a domain due to unfair bias.
I would imagine that it would be fairly easy to find a lawyer willing to take on such a case Pro Bono, especially when you consider the potentially massive consequences.
Jeffery Cockburn says
We are not powerless, you are correct donnacha. Although we have been made to feel that way by what has become an increasingly ridiculous system of settling ‘disputes’. A real howler. Think Greed your right.
various elements of this system may have dirtied themselves, the system design may have ‘lured’ this, which in a way serves as a protection (distraction) from the head which is not involved in the process publicly. IMHO there is an actual coordinating element that appears to be at arms length, for the few that are aware of its involvement.
I believe that a certain small set of people can be identified and that some research will reveal certain participants in quite a number of important cases are related. Many reports to this effect have already been made over the years if my memory serves me well. These reports are often quickly removed from the net.
I believe that I have found a pattern that results in a markedly tight circle of results and people.
The thieves without vision do not know when to quit and they get bolder and bolder. Unwitting attorneys see others getting away with the game and think the water is fine. Nine years later we have a record. Fraud and extortion not in every case but mixed in, IMHO.
I think that the game will probably move from arbitration to the courts in the next five years, when this happens good people need to tie the crooks back to their arbitration deeds in an effort to reveal the truth which will be alot easier in a court of law provided that one can see the bigger picture and legally articulate it to the court.
gold rush = claim jump
ceratain groups are patient, these groups operate on 5-10-20 year plans. Certain groups with $$$$$$$$$ know the history of how other crooks pulled it off in the past. aka gold rush claim jumpers for example.
Who on this board knows what they say about FAT PIGS?
Ben Dean says
I have read and appreciate this article, and everyone’s comments here.
For the record, I used the domain consistently from 1997 to present, there was no period of inactivity, outside of some months where http://www.deacom.com returned a 404. Even then, there was plenty of active, legitimate use of the domain (email, other host names, development etc.)
On the legal front, I did consult an attorney when I received the Complaint, and we all agreed they had no case, and that a simple Response would suffice. I don’t think anyone could have anticipated a 404 page being deemed “bad faith use and registration”, especially given the *actual* “totality of the circumstances”.
As for moving forward, today is my “10-day” deadline from the UDRP. However, I am considering all options and while having the domain would be good leverage, there is nothing stopping me from filing a suit in the future. In the meantime, I’m gathering the great advice and stories coming through my site http://udrpfail.com and hope to bring more attention to all sides of this issue.
Please feel free to contact me view the form or comments on my site.
Thanks.
donnacha says
I don’t think it is a conspiracy as such. The system is simply moving to where the money is, like a flower turning to the sun.
The advantage that the corporations have had is that they are organized and can afford to work together, whereas small businessmen tend to operate in isolation, ignoring problems until they affect them directly.
Again, just like the banking system, in which they thought they had discovered a never-ending carousel of easy money, the arbitration companies have been allowed to operate unchecked for years, encouraging ever more audacious decisions as each competes to be the toughest, most anti-Respondent crew in town, a safe bet for any Complainant willing to slap down $1,300.
Just like the banks, however, they may have gone too far. If we lift the rock and expose the actual statistics to daylight, it will be pretty obvious that “arbitration” is little more than a racket and, the way justice goes, if you can show that, you can start rolling back every decision ever made under that system, and damages to those affected by it.
Yes, I know it sounds crazy but, seriously, it wasn’t that long ago that the idea of tobacco companies paying out $365.5 billion to people who voluntarily smoked cigarettes would have seemed ludicrous.
Do we have an arbitration system which has been corrupted by the financial interests of the arbitration companies? – I think we do.
Do we have a large, well-monied organization which is meant to be over-seeing this arbitration system? – Hello ICANN.
Can we anecdotally show that the system is producing increasingly bizarre and obviously unjust results? – We certainly can.
Can we show that statistically? – I believe so, it certainly feels as if there is a solid trend.
The key thing, however, is that we need to stop thinking as loners and start standing together.
Jeffery Cockburn says
donnacha, do not let me discourage you, by all means do something, but I will tell you that the statistics thing has was disclosed in the new york times many years ago, for what defense this might provide your target.
I get the impression that you have not been on the receiving end of unsolicited advice from opposing counsel that you seem to have committed a crime for which you will soon be prosecuted should you not transfer your domain.
I get the impression that you have not been unduly threatened with the $150,000 cybersquatting penalty.
what about..
Having ‘investigators’ physically approach you?
Have you got the first day back from vacation and you now have ten days to find counsel, research your case, read the ruleset, research state and federal law and drop everything else your doing treatment.
How about the having your name dragged through the mud treatment. What about the threat of dragging your name throught the mud treatment.
I do not think you have found the pattern that I have found. If you know to watch certain names, and the business interests involved then there is a real good match with the outcome and filing of what appears to be a NICE string of cases.
On a different note. Does anyone know, is it true that there was a famous SMILEY case where the launch of the .biz was determined by a real judge in the real courts to have been an illeagal CRIMINAL lottery? I sure would like to know. Who was facing the sun here?
I am sticking with RICO and a couple of other State and Federal laws as my approach to understanding what is at foot here. Brushing up on the unfair business practices law of each state is also revealing.
When you know the gimmicks and tricks they turn out to be calling cards for a certain set.
As it turns out certain methods or tricks and above mentioned patterns run through the same set people and cases if you understand what I am trying to express that I believe. Nine years was too long. This is just my opinion, but I do agree FOLLOW THE MONEY into the forest.
Andrew Allemann says
“Does anyone know, is it true that there was a famous SMILEY case where the launch of the .biz was determined by a real judge in the real courts to have been an illeagal CRIMINAL lottery?”
Yes, and apparently the registrars were sued, too.
Jeffery Cockburn says
P.S. the everybody’s doin it defense is not going to work either because everybody is not doing it, just certain crooked attorneys. They have tried to involve and dirty as many others as they can, but at the end of the day, all of the efforts to pre disclose and create the appearance of arms length will backfire, IMHO.
Anna Shillhill says
Is it true that some trademark holders have attempted to acquire a particular domain under the pretext of protecting their trademark from ads appearing on the parked page of a generic domainname when it is the trademark holder or its agents who were involved in placing the ad or engineering the appearance of the ad? There are ways to do this. Would this be a crime or an example of facing the sun?
Andrew have you heard any reports of this type of engineering?
donnacha says
Jeffrey, I understand that individuals and determined groupings of individual can do terrible things and I hope you were never hurt by those thugs.
All I’m saying is that, clearly, the system itself churning out miscarriages of justice on an industrial scale. Fighting individual cases is like pissing to hold back the tide. The key to all of this is right before us – greed and lack of oversight has made the system so carelessly and blatantly corrupt that the whole rotten structure will collapse in on itself once the system itself is targeted, not individual decisions or individual examples of extortion.
Jeffery Cockburn says
‘determined groupings’, in my opinion determined to go to federal prison, unless the Hobbs Act has been repealed. My friends call me sir prints alot, the reason is because I have been printing most of what I have seen that relates to this for more than ten years now. In some instances, individuals have been so shocked at their loss in arbitration that they have posted online details of how the law firms in the case are related along with hidden conflicts of interest that they have discovered.(during the short time before thier domain is taken from them) PRINT.
Message borad posts – PRINT
websites – PRINT
State and federal records etc. PRINT
As I stated earlier, I have not read the case that started this thread, nor have my comments been directed toward anyone involved in that case, but lets remember the lessen of this thread being that: you better get a lawyer or this is what happens; you lose.
I think that it can be established that some have lost their only homes by putting lawyer fees on credit cards in order not to lose thier dream and investment. The vaulue of the domain is directly proportional to the amount of money and elaborate collaboration put into the individual stings created by determinde organized corporations and the attorneys, or cases.
The moral of the story – take the offers that are made by those making threats – and sell the domain worth millions given enough time to properly market and provided that you want to – for the $50K offered by the the racket during the rollout of their sting. In other words cooporate with the MAFIA tactics.
If I remember correctly the judge in the sex.com case put out a federal warrant on behalf of the individual registrant. Justice delayed was not justice denied. So the federal court system may be the avenue of recourse for those individuals that are having to protect themselves.
Some would be surprise that within certain jurisdictions that fraud is actually excused by the bar for certain attorneys depending on who their clients are, but I doubt that extortion is permitted or is it? What about RICO?
Jeffery Cockburn says
press releases PRINT PRINT
business wire PRINT PRINT
PR pieces PRINT PRINT PRINT
I almost always print multiple copies so that way if my office burns down my backups will still be available.
The udrp in particular is useful for situations where the complainant actually has no case.
Also as I stated before, the game is moving from arbitration to the courts. So it probably is about time for the arbitration system to be quasi ‘cleaned up’
Next stop the courts with the generics that have had the five years to mature so that they can be put to their intended use.
M H says
@ donnacha
April 30th, 2009 | 2:23 pm
Well there is very recent precedent with lawyers filing class action against Network Solutions for its recent policy of pre-registering domains searched on its website.
And you are correct. A simple data mining tool is all that is required to prove any bias in arbitration. I think those who lost Domains to fraudulent arbitration are way more motivated for payback than those who were forced to register domains with Netsol.
Definitely not a simple open/shut case as with Netsol, but if bias can be shown, a easy case to bring “name recognition” in the industry to any lawyer/law firm.