An example of why UDRP needs reforming.
This was going to be a rant about “why would a lawyer take on this UDRP case for the complainant”. But then when I realized who represented the complainant (not a lawyer), I changed it up.
Here’s the deal. A St. Louis area woman is getting ready to launch “Sheryl’s SHAREABLES”, a bite-sized meat product that both dogs and humans can eat. (Note that just about any meat product a human eats can also be eaten by a dog.) She filed an intent-to-use trademark application with the U.S. Patent and Trademark Office, but hasn’t started using the mark yet in commerce.
So she filed a UDRP to get the generic domain name Shareables.com from its owner Skylabs Corporation.
Skylabs registered the domain name in 2002.
In other words, not only did the respondent register the domain almost a decade before the complainant plans to introduce the brand, but the complainant hasn’t even introduced the brand yet.
I figured some lawyer took Sheryl Rhodes for a ride in a UDRP that simply couldn’t be won. But it turns out she was represented by an outfit called SpiffWorks LLC, which is a software and web design company also in St. Louis.
Skylabs was represented by a third party, which I presume is a lawyer. Which means Skylabs had to spend time and money to defend a completely basis UDRP, or at least call in a favor to a friend.
As I’ve suggested before, one UDRP reform should be a check box on a complaint that says:
“Do you believe you have trademark rights in this name that pre-date the current registrant’s registration of the domain name?”
If the answer is no, the case shouldn’t proceed.
Bret Moore says
Yeah I commented on this, too. Pretty silly. It seems to be common misconception that he who has a trademark has superior rights in a domain name, no matter what. That might be true in court, you never know. But it’s most certainly not true under the UDRP.
steve says
Good idea.
Unfortunately these laws turn out to be hard to pass. You can’t take away people’s right to sue!
SL says
Imho, there is a mindset of entitlement out there with regard to domains.
Per her Google profile, Sheryl Rhodes has an MBA and worked for Nestle as a Marketing Manager or somesuch for 20 years. She obviously isn’t clueless about trademark issues and can’t claim ignorance.
The process is simple. If you don’t have trademark rights (which almost all don’t), then make the existing domain owner an offer. If it’s refused or an agreement can’t be reached…tough! Move on to a different name or TLD.
Don’t do the immoral thing (essentially trying to steal it) like Ms. Rhodes was attempting.
Hopefully this mindset will change eventually.
Steve 2 says
Large fines should be levied against people like this. I guess all of that schooling didn’t teach her not to try and steal what is rightfully someone else’s. Hopefully karma will sort things out in the end if the system can’t.
Bret Moore says
The system sorts this out just fine. How much did the owner have to pay to defend this? I’d think not very much at all, I mean this was open-shut easy. I’d probably have charged a very minimal hourly amount. And they could have done it themselves by culling information from various blogs out there.
Hell, the Panelist probably would have rejected the complaint even in the absence of a response! It’s certainly that bad, and there’s been several of those denials lately.
Barry Lebovitz says
The UDRP system is CORRUPT! They just want money. They will let any ludacris case like this in because 1.) they don’t respect domainers and 2.) they get their fee. It should go to a preliminary to first decide whether or not the claim has any basis. Then if it does, the domainer should need to spend time and money defending their property.
Steve 2 says
“It should go to a preliminary to first decide whether or not the claim has any basis.”
Exactly, the rightful owner shouldn’t even have to spend a moment on it. Without large prohibitive penalties this nonsense will continue, guaranteed.
Cheers.
Meyer says
We do not know if she knows anything about
domain ownership rights.
I suspect someone counselled her that she
could get it if she went thru WIPO.
They might had convinced her that it was
worth the $ 1,500 – 2,000 risk to get
a domain like shareables,com.
I don’t believe she owns her own company
name. She might want to start there.
SL says
@Meyer: Humbly disagree. I have a relative who is a marketing manager (doesn’t everybody?). Not only is it part of the job to understand the basics of trademarks, there is no way anyone competent would venture into the land of UDRPs without spending 5 minutes learning how it works. It’s not hard to figure out what is and isn’t a blatant hijacking attempt. This one’s a slam dunk imo.
Brad says
This dispute is a joke. There needs to be more of a penalty for attempts like this.
Seems like many companies just see UDRP as a lottery ticket to try to acquire premium generics for cheap.
Brad
steve says
Wow , nobody took her side.
Usually one nutball sides with the nutball.
Bret Moore says
There’s plenty of “penalty” built into the system: she had to pay to file it. And she had to pay whoever gave her bad advice and wrote the complaint, presumably. We don’t know what the defender paid, but I should hope not very much. Yeah, that part kinda sucks, but now he can build that as a line item into his sale price to her. 🙂
Tony says
(Note that just about any meat product a human eats can also be eaten by a dog.)
Andrew this line is great 🙂
And certainly agree that crap like this should not be allowed to cost domain owners $
Don says
I have a shareable, it’s called beef jerky
Joseph Slabaugh says
“completely basis UDRP”… you mean “completely bogus”?
roddy says
I am always amazed at the greed of some people , i did once see a dog refuse to eat Mc Donalds burger …not so sharable !
Stephen Douglas says
Great point, Dub-A.
“””As I’ve suggested before, one UDRP reform should be a check box on a complaint that says:
“Do you believe you have trademark rights in this name that pre-date the current registrant’s registration of the domain name?”
If the answer is no, the case shouldn’t proceed.”””””
How about this, if the complainant actually CHECKS that box to admit that the domain was registered before their prodservs were on the market, then ICANN must disallow the UDRP to be filed, and prevent a “no show”default protection for the Defendant. ICANN should either drop the case, and put the Complainant on a “watch list”, and then ICANN should give free EXPERT advice in any following legal case the plaintiff is forced to defend.
Gina says
Well I am researching this because I believe I am the victim of reverse domain hijacking.
I bought a domain and a 1 member panel has awarded it to be transferred to the complainant!
I can’t believe it – they claimed I was cybersquatting, that I had no legitimate rights to it and that I was not a bona fide company!! (none of which are true!!)
I am googling now to see what I can try and do about it.
I’m not giving up without a fight!!
Bret Moore says
Gina, there’s probably nothing you can do, unless you want to file a lawsuit. Is it really worth that much? You should have responded to the complaint… did you?
Gina says
Yes I did respond.
The problem I have is that my brother registered the name for my company and it was still in his name – therefore they say he has no legitimate interest in the name – even though I asked him to register it for me, it points to another domain of mine and I do have a bona fide interest in the name.
Yes, it is worth a lot to me and to them infact, but I can’t afford a lawsuit like they can!
I can’t believe this 🙁
To have a transfer outcome issued to them means they are supposed to have 3 criteria and meet all 3, but they don’t.
They are saying that I am not a named party, but it’s my domain – the complaint was filed against my brother because he stupidly left the registration in his name.