Domain Name Wire

Domain Name Wire

  • Open Season on OpenDental.com

    1. BY - Aug 10, 2009
    2. Policy & Law
    3. 67 Comments

    Sloppy decision should worry domain name owners.

    The domain name OpenDental.com has been awarded to a software company in a domain arbitration case. The details of the case are startling, and all domain name owners should pay attention.

    The key fact is that the registrant of OpenDental.com, a licensed dentist in South Korea, registered the domain name in 1999. The complainant, which operates Open Dental Software, didn’t start using the trademark in commerce until 2003. In fact, the complainant admits this in his additional submission to National Arbitration Forum:

    The assertion that, because the initial registration of the domain was prior to the establishment of the trademark Open Dental, it could not have been in bad faith has some merit, but is flawed. Given that the initial registration was not in bad faith, (as indeed Open Dental was not trademarked or in use by either party and that the respondent was considering using the name for a business, there have been additional registration updates that may have been in bad faith.

    The complainant refers to “registration updates”, which basically means renewing the domain name. Previous panels have found that renewal of a domain name doesn’t equate to a new registration.

    Clearly, this domain could not have been registered in bad faith unless, to use John Berryhill’s famous assertion, the registrant was psychic. (Berryhill was not involved in this case).

    But this major issue wasn’t even addressed by arbitrator Daniel B. Banks when discussing if the domain was registered in bad faith. Banks only wrote that offering to sell the domain is evidence of bad faith (even though the complainant initiated discussions) and that non-use of the domain is evidence of bad faith (it’s just a blank page).

    Bank’s decision reads like a template response to a domain dispute and is seriously flawed. If there ever was a clear-cut case to get the domain industry riled up, this is it. This is why companies roll the dice with UDRP. They get lucky sometimes.

    You can read the complete decision here.

    (Hat tip UDRPsearch).

67 Comments
  • [...] Now more than ever, it’s important to carefully consider how you respond to domain inquiries. Andrew reported on the OpenDental.com UDRP today, and the panel had one startling opinion: “Complainant [...]

  • abolishTheNationalArbitrationForum says:

    August 10, 2009 at 1:08 pm

    So registering a domain name, renewing it and paying the fees is not enough to own a domain name legitimately? Maybe Mr. Jee-Young Ko was busy running his dental practice in Korea? Just because he didn’t forward it to his other site or put something on it certainly shouldn’t expose him to “domain theft” from these domain pirates. Jordan Sparks from Open Dental Software knew back when he trademarked the phrase that the domain was taken so he registered Open-dent.com. He should be happy with that or he should have registered something else. Just because he “offered Mr. Ko some money and Mr. Ko didn’t want it or wanted more certainly shouldn’t expose Mr. Ko to domain theft. This is outrageous! Time to circle the wagons and remove your premium domains from brokerage houses or domain sale sites. Put sites up or forward them to other functional sites. Apparently we are just setting ourselves up for theft. Just because these corporate idiots weren’t smart enough to register the correct names years ago shouldn’t mean they are allowed to steal them via The National “Theft” Arbitration Forum. Blank pages bad faith?? Bullsh**t. Time to clean house, go to a proper court where domain assets are considered just that and some common sense is used. I feel bad for Mr. Ko. and as for the other parties involved, *&^%$&*!!
    The National Arbitration Forum, Daniel B. Banks Jr. and Jordan Sparks of Open Dental Software are all parasite thieves, imho.
    Good luck everyone.

  • That’s sickening and indefensible by the panelist.

    Yes…..it is time for the abolition of the National Arbitration Forum. That can’t go on, and it must not stand or everyone is doomed.

  • Great so now there are bad faith renewals. Even if I could begin to see some way to find merit in that possibility, the 1 guy who couldn’t possibly have a bad-faith renewal would be the actual dentist who owns a dentistry domain name, in use for their business.

    I have often wondered, has anyone ever looked into whether or not standard business insurance or maybe E&O insurance would insure us against this kind of crap, pay us for our losses, and pay for the UDRP? If you can’t stop this crap from happening maybe we can buy insurance to compensate us.

    • jp – I honestly don’t think this was a case of the arbitrator deciding that a renewal is bad faith. Based on the decision, it seems like he completely ignored the issue of when it was registered.

  • the domain was registered in Korea. Just file a court case in Korea and let the Korean court decide. I am pretty sure the Korean court will decide in favor of the Korean dentist

    National Arbitration federation and its corrupt judges are a joke.

  • “The domain name resolves to a blank website which serves as evidence that Respondent has not made any use of the disputed domain name.”

    Laughable. Sometimes a blank page is what someone sees while a domain name is being developed.

    “Complainant offered to buy the disputed domain name from Respondent for $500-$5000. Respondent’s engagement with Complainant in these offers and counter-offers is evidence of bad faith registration and use.”

    Even more asinine. “Evidence” of bad faith? No, it’s called responding to an offer. This decision would be overturned in Federal court.

  • 1. Register a trademark “arbforum”.

    2. Once registered, offer NAF $5000 for arbforum.com

    3. After they refuse to sell, wait until they renew arbforum.com (May 2001) then file a UDRP with them and ask for Daniel B. Banks Jr. as your “arbitrator”.

    4. Await for justice to be done.

  • LOL @ Drew.. I like that plan

  • Check this out. OpenDental.com complainant gloats about winning domain:

    http://70.90.133.65/forum/viewtopic.php?f=1&t=2111

    Prized line from another person:

    “It’s surprising to read that the respondant was a dentist and was not more ethical about giving up the domain he never used. Glad to see justice was served.”

  • My domain name, champion.com, was lost in US federal court in 2001. The judge asserted that my initial registration was not at issue, but that my renewal of the registration after being notified by a trademark holder is what violated the trademark holder’s rights.

  • abolishTheNationalArbitrationForum says:

    August 12, 2009 at 11:31 am

    Angie,
    Sorry to hear about that. That seems very unfair.

    @Andrew,
    http://OpenDentalSucks.com is available to register. Maybe we could setup a site and let everyone else know the kind of dirtbag Jordan Sparks of Open Dental is??

  • eh, can you really blame the complainant? They rolled the dice, the arbitrator made a bad decision, and they won. As more bad decisions are made, you’ll see this as a strategy.

  • abolishTheNationalArbitrationForum says:

    August 12, 2009 at 11:59 am

    Jordan Sparks knew when he registered the trademark for open dental that the domain name was not available so in my opinion it was a calculated effort to steal the domain from the rightful owner Mr. Ko. Sad state of affairs.
    Best.

  • It is important to note that domain names and trademark law are very closely related. Imagine that someone trademarks ‘CheesyTreat’, but never sells the product or uses it. Two years later someone decides to start selling a product under that name. This ‘someone’ can do so, and in fact can register their mark. the original trademark registrant failed to make use of the mark. Keeping your trademark REQUIRES you to USE the trademark. You cannot hold a trademark without continuing to do business under that trademark. Trademark law and courts have held this repeatedly to be true for over a hundred years.

    The same thing goes for a domain. If the dentist in this case had actually done business as ‘opendental’, he could keep the domain name. This decision was correct. Otherwise, one could register a name and hold it perpetually without use, even though there is demand for its use. That does not make sense.

    Read the cases that the arbitor based the bad faith decision upon.

    • Nathan – under UDRP, that aspect of domain names and trademark law are not at all related. This decision flies in the face of 99.9% of decisions made on the issue of bad faith. That’s because URDP requires a domain to be **registered** in bad faith. In this case that is impossible.

  • And to M. Menius, I would point out that the website has been blank for 10 years: no one is developing anything. All the respondent had to do was show that there were actual plans to use the domain name and the case would have gone the other way. But he could not.

  • abolishTheNationalArbitrationForum says:

    August 12, 2009 at 12:57 pm

    Domain names should be treated as “assets” not as trademark “concepts”.
    If I buy a piece of property and pay taxes (renewal fees) on that property forever but don’t develop it; is it not still my property. Just because I didn’t develop the property shouldn’t mean someone else with another “plan” can come in and steal it. Comparing domain names to trademarks is not logical. imho.
    I can find hundreds of premium .com’s that haven’t been developed yet were the owners have religiously paid the renewal fees on them. Just because they haven’t begun to develop them shouldn’t set them up for theft.
    ihmo.

  • >Otherwise, one could register a name and hold it
    >perpetually without use, even though there is demand
    >for its use. That does not make sense.

    Hey Nathan,

    You know that lot you bought in the Bahamas 5 years ago that you haven’t built on yet? Yeah, the one right next to the new hotel. I need to talk to you about that.

  • I think Nathan is right. domains so far work like trademarks, not property and are handled by the courts as such. So the question comes up again, are we better off with them as property or like tms

  • abolishTheNationalArbitrationForum says:

    August 12, 2009 at 1:13 pm

    @Drew,
    EXACTLY! The sooner individuals or corporate pirates that were too slow out of the domain gate understand that the better.
    Best.

  • abolishTheNationalArbitrationForum says:

    August 12, 2009 at 1:14 pm

    @jp
    Property.
    Best.

  • Well, to Drew first,

    I know you are joking to make a point, but if you look up ‘Adverse Possession’ You would find that if you are using the land in the bahamas, and I am not even though I own, it, the courts would likely give you owernship. This has happened thousands of times for hundreds of years. ‘Adverse Possession’ is well established in common law, and sometimes codified in written law. Wikipedia has a good article, or you can read some law books or articles. Unfortunately your jest proves the point.

    Adverse possession is a principle of real estate law whereby somebody who possesses the land of another for an extended period of time may be able to claim legal title to that land.

    Also Andrew, you may want to review the Doctrine of Laches. You may likewise look it up in a law dictionary or just google it.

    Also Andrew, I appreciate your point that it is impossible that the registration itself was made in bad faith, but you are defining registration too narrowly… really. If you read the decision you will see that ‘being registered’ itself in bad faith is required, not what happened in 1999. Read this from the decision, and see if you can tear a hole in the logic:

    “Also, the panel finds that Respondent’s failure to make an active use of the domain name is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii).”

    It is not this panel member only, but precedent that has held up that he must base his decision on.

    • @ Nathan – Doctrine of Laches does not apply to domain disputes. This is actually unfortunate, because it would help respondents out. It would prevent companies from going after a domain 10 years after it’s registered.

      With regards to renewals, 99% of panels find that only the initial registration is what matters; not renewals. I’m sure you can start to understand my frustration with UDRP. Your case cites some “precedent”, but I could cite a thousand other cases that would disprove the precedent. Both WIPO and NAF have very inconsistent rulings. I guarantee you that if a competent UDRP lawyer represented the respondent, you would have lost your case.

  • And to abolishTheNationalArbitrationForum, it does not matter if you pay your renewal fees, it is not right to register a domain name perpetually because you ‘might use it’ someday. Use it or cough it up. You sound like the kind of person who checks out hundreds of library books, never reads them and never returns them.

  • Thinking about it, I don’t think domains she be treated as property or TMs. Why does it have to fit into some midevil category? Can’t we make a new category: Domains?

    And regarding registering domains and not using them. Just park them at least. That counts as use, or should count as use considering the domain registrant recieves a benefit from the domain name and often so do the visitors to the domains.

  • abolishTheNationalArbitrationForum says:

    August 12, 2009 at 2:41 pm

    @Nathan,
    Sounds like you are on of these bandits that helps people steal domains. As for me “stealing” library books???? I appreciate Andrews site very much and rather than launch into a diatribe about what I think of you Nathan, I’ll respectfully pass.
    Thanks again Andrew for keeping us informed. Circle your wagons everyone the pirates are on their way.
    Best.

  • Nathan, Library books are free, domains are not. Welcome to capitalism. You must be the guy that wrote the previous wiki article on domaining calling it cybersquatting.

    Do you consider Parking domains as using them?

  • @ATNAF
    301 redirects do not provide protection, nor do extensive use of the telnet, smtp, and ftp protocols. At least they did not in my case.

    My use in commerce of the name for smtp services continuously for 5 years carried no weight. The judge had only ever heard of httpd, and use of that protocol under that domain name is all that mattered to the court.

  • I maintain ICANN needs to create a certification program for Judges and panelists to be able to decide on Domain Names. Using a domain for just an email address should be enough. What about all of the people that have been emailing you at that address for years. Whoever takes the domain takes all that email traffic, with the opportunity to steal those clients.

  • Andrew,

    forget the renewal argument, this is not what the panel ruled on. Just because an argument is made in a domain dispute does not mean that that is what the decision was based upon: you are focussing on an argument that was made by the Complainant and ignored by the Panel, your article should mention that the Panel did NOT agree or disagree with that argument that you quote.

    You may be mistaken, and you are saying you could ‘cite a thousand other cases’ that would disprove the precedent, yet you fail to cite a single one. (Yes, I am calling you out, go ahead, cite some law on me).

    Once again your article shows a lack of understanding that the argument that was made is not addressed by the Panel because there is no need. The Panel had sufficient evidence WITHOUT even addressing this: there is NO REQUIREMENT that an aribitor, Panel or Judge ever address all arguments made, particulary if they are not germain.
    I would guess that you are correct in that that particular argument was wrong, or at the least, weak. But that does not make the decision wrong as it is NOT what the decision is based upon.

    Are you going to cite one of those thousand of cases?

  • Well jp, you obviously haven’t done your homework, the Respondent in this case DID NOT use an opendental.com email address. NO USE was made of the domain name. Try and find an opendental.com email address.

    OOps, there goes that ill-formed argument.

  • Sorry Nathan. Regarding the email comment, I was referencing Angie’s comment just prior to mine about losing her domain that was used for SMTP services. Didn’t mean to fog up this thread.

  • jp- i see after reviewing the sequence of posts I see that your argument was more a general complaint about the fact that a judge is not likely to consider other use of a domain (like email addresses, FTP etc) when deciding a case where a domain has not been used. Fine. But that is a complaint about the law itself and I have no comment, I do apologize for my tone.

  • No worries Nathan. I actually appreciate your comments although I don’t agree with all of them. They all seem very well formed and thought out.

  • Nathan – are you ready to fly to Korea and appear in a proper court there? You might want to rethink this… the courts in Korea DO have jurisdiction on this matter as both the Registrant and the Registrar are located there.

    You’d best be praying the dentist doesn’t file… because you know you’ll lose in court.

  • Nathan are you the complaintants lawyer? Sorry if I missed that above

  • Nice try on the “adverse possession” Nathan, but how the hell can anyone “occupy” someone else’s domain name?

    This system you’re advocating where domains are awarded to the people who most deserve them the most – where did you think this up? In CommiePinko101 ?

  • Time to stick a fork in NAF too. How is it they’re still allowed to do UDRP? When is DOJ gonna come in and bang some heads?

  • Fortunately South Korean IP Law is actually more on Open Dental’s side that UDRP guidelines. The Law on Internet Address Management, implemented in July 2004, gives the government broad power to administer Internet protocol addresses within South Korea. The law establishes a centralized system of Internet-address registration and management; upholds trademark claims on the use of Internet addresses by outlawing cyber-squatting; and provides a state-appointed committee to resolve private disputes over Internet addresses. The law bans staking pre-emptive claims on domain names for the purpose of “unfairly gaining profits and interfering with business”.

  • @Drew,

    don’t get too upset about what I said about ‘Adverse Possession’, it has nothing to with Domains and only is mentioned in response to the comment about property in the Bahamas. It is not communist (LOL :) really Drew I am not a pinko) but is based in English Common Law and many decisions about real estate today around the world use Adverse Possession as a tennant of common law.

    Law is usually comprised of three parts, codified law (written law), common law, and case law (what other court’s and higher courts have decided). Back to your comment Drew,

    Without seeing the Bahama’s post, the Adverse Possession comment doesn’t mean much. Just as a parallel was drawn to property possession (real estate) I simply was saying that the law on real estate would give the same result: to draw the metaphor back to the case in point.

    I am the complainant’s brother.

  • “The law bans staking pre-emptive claims on domain names for the purpose of “unfairly gaining profits and interfering with business”

    Your claim to the TM did not even exist when he registered the name, so unless the dentist is also The Amazing Kreskin, he could not possibly have registered the domain with you in mind.

  • No, sorry, re-read the Bahamas post again.

    It says NOTHING of occupation of your lot by someone else.

    It says that you aren’t using your property, and based SOLELY on that (not possession) you should have to give it up to whoever covets your property. That’s what you’re saying should happen with domain names, and is EXACTLY what happened here.

  • Drew,

    Right, but we are talking about intellectual property here. With this metaphoric excercise (to all reading I am talking in metaphor now) we were using the intellectual property (the name OpenDental) while it sat vacant (the domain). Thus I bring up ‘Adverse Possession’. I do not insist that we agree.
    Cutting to the crux of the difference in your opinion and mine (perhaps) is that I believe domain names to be intellectual property akin to a trademark, and your think of it as an entirely different beast.

    I agree Cartoonz that he did not have that company in mind, but you see, he cannot establish that he had anything in mind. It is really easy to establish that sitting on a domain name for ten years has a negative effect on other businesses if there is a demand for that domain name. Again it boils down to the fact that I think the law sees domain names like trademarks and that if use is not being made of them then others who have used that mark (name) should be able to use that domain name. It is in the interest of commerce. It makes sense that you would disagree if you are trying to make a business plan of pre-emptively reserving domain names and selling them, which I feel is wrong.

  • abolishTheNationalArbitrationForum says:

    August 12, 2009 at 8:31 pm

    Nathan,
    Regardless of whatever “law” you and others like you hide behind your brother new the domain was not available when he trademarked the phrase. Period.

  • Right, it was not available. But even though you say period, it does not end there. If I trademark a phrase, and then do not trade under that name, guess what? I LOSE the trademark. A domain name is not very different than a trademark, and I predict that future law will further tie the two. It is only that law lagged technology that there was a .com name rush in the late ’90s at all.

  • Nathan,

    If I were you, I’d hope and pray that the current owner doesn’t decide to file a lawsuit within the next three days to block the transfer.

  • Reminds me a lot of the Myspace.co.uk case.

  • abolishTheNationalArbitrationForum says:

    August 12, 2009 at 10:23 pm

    Maybe we could start a fund on Mr. Ko’s behalf and see if Mr. BerryHill would like to oblige.
    http://www.JohnBerryhill.com
    :)

  • abolishTheNationalArbitrationForum says:

    August 12, 2009 at 10:27 pm

    Maybe we could call the fund GDD.
    Gorilla Domain Defense.
    :)

  • He is right about trademark law, if you don’t use it you lose it. Worse yet, under trademark law if you get a trademark under several categories, and you use it on all but one of the categories the entire mark can be invalidated, even though you were using under the other categories.

  • “…it boils down to the fact that I think the law sees domain names like trademarks and that if use is not being made of them then others who have used that mark (name) should be able to use that domain name.”

    Fortunately, it doesn’t boil down to what you “think”… the law does not see it through the same rose colored glasses that you do, evidenced by countless similar cases decided in court, not by the the NARB kangaroo system.

  • Also under trademark law, part of proving intention to use in commerce is the existence of a website or domain name held by the applicant.

  • Good point Angie

  • [...] registered and used in bad faith in order for a complainant to win. This wasn’t the case in another National Arbitration Forum case for OpenDental.com, in which the domain owner registered the domain several years before the complainant even [...]

  • If I register a domain name, and I’ve paid for that registration, I should be allowed to do whatever i wish with it, or nothing at all if that is my wish. I’ve paid for that year’s registration and that should be that.

    It’s ike a movie club membership. I can pay for a year, but I don’t have to rent/watch any movies if I don’t want to.

    I pay car insurance for a year, but I am not required to file a claim within that year if I don’t need to.

    I buy health insurance but I’m not required to visit my doctor in order to maintain the insurance plan. I just have to pay the premium each year. Should my insurance company cancel my policy because I DIDN’T file a claim?

    To me, registering/renewing a domain is similar to buying an option. I can opt to use the domain, or not to use it. If I do use it, I must be careful that I am not using it in such a way that might confuse my visitors in thinking that I am somehow related or connected to another entity which conducts the same (or similar) business under that same (or similar) name.

    But other than that, I should be free to use the domain to post my family photos, publish a blog, park the domain, develop an e-commerce site to sell something, list a bunch of links, post some information, create a fan site, publish a forum, send and receive e-mail, or just have it display “Hello World” if that’s what I want. As long as what I’m doing with the domain is not illegal, it should be my right to do what I want with it.

    Or I can just let the domain sit unresolved (“Page Not Found”) if I want. Who cares if I have plans for it or not? That shouldn’t matter. And it shouldn’t matter that someone else comes along and does business under that name after I’ve registered the domain. And it shouldn’t matter if I renew the domain even while someone else is doing business under that name. If I don’t try to sell the domain to that party or attempt to profit from that party’s TM, they should have no business taking my domain away.

    Why should someone be able to take my domain away — that I might have paid a great deal of money for in the aftermarket — solely based on usage — or non-usage?

    If you want my domain, make me an offer. If I like your offer and I want to sell you the name, I will. Don’t try and steal it from me.

    There is a “Guild of Domain Thieves” and it appears membership is growing rapidly.

  • abolishTheNationalArbitrationForum says:

    August 15, 2009 at 2:30 pm

    Parasites and corporate criminals are everywhere unfortunately. Fueled by bad law, idiot arbitrators and greed they are after our assets. Nothing new really, it’s just migrating to the domain space. The National Arbitration Board and many of their arbitrators ARE THE PROBLEM. Moving these issues to Federal courts may help bring some common sense back into our world.
    Best.

  • Remember: Never, ever, ever bring a case to an arbitrator unless you are the more powerful party of two business parties. Arbitration is a known joke, a sort of kangaroo court to decide cases for businesses, against individuals.

    There are arbitrators who’ve literally decided for companies, against individuals 98% of the time or more over the course of a decade. It’s a black hole for consumer rights, and in this case, while we have two business entities, one of the two is clearly a company, the other an individual practitioner, and a foreign national to boot, and much closer to an ordinary joe than the other company.

    Had the individual dentist been challenging the software company, and the facts likely been the same, we would have seen the dentist’s case rejected. This is how arbitration works: it’s a rubber stamp.

  • Come on Ella, think about what .com was designed for. Consumer rights demand that .com domain names be used by companies or by individuals engaged in commerce, that is what they were designed for. The responding party was not a business entity at all, there was no business happening, that was the problem.

  • Put down the crack pipe, Nathan, and back away from your daddy’s computer.

  • Check out http://www.opendental.com website.
    The text is great (and funny).

    now it says (in part):
    Dot.com domain is an international domain, not domestic domain (esp. US).

  • [...] in arbitration to covetous newcomers who are not entitled to them. Last year a Korean dentist lost opendental.com to a company that did not exist at the time he initially registered the domain. A technology [...]

  • Nathan (Sparks?), when you add everything up and leave spin out, you are essentially a thief and an IDIOT. If a bigger company wants the name to ‘better use’ it by investing $50 Million in it, should we take it from the thief, you?

    I am starting a company called Insurance.com even though I don’t have the name but you will probably help me steal it. I’ll use ins-u-r-a-nce.com for now until I file an arbitration.

    May karma get you losers

  • [...] result can be as easy as a clean, quick transfer of ownership or an ugly drawn out court case or sloppy arbitration, and everything in [...]

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