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
  • “…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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