Domain owner wins case but panelist’s rationale is troublesome.
The owner of the generic domain name Commentary.com has successfully defended his domain name from The American Jewish Committee (AJC) in a UDRP.
AJC has operated Commentary Magazine since 1945, thus its interest in the domain name.
The owner of Commentary.com registered it all the way back in 1997. He immediately started using the site to publish executive summaries of Chinese commentaries in English. After a few years he suspended this activity due to lack of subscriptions, and used the domain name off an on through the years for various purposes. But now it’s just a holding page.
AJC has offered to purchase the domain name on two occasions, both times rebuffed because the owner said he planned to use the domain name again shortly for a new project.
Given these circumstances it’s no surprise that AJC lost. But I’m disappointed in how panelist Charles A. Kuechenmeister determined the case.
Kuechenmesiter wrote a lengthy discussion of whether or not the domain owner had rights or legitimate interests in the domain name.
To me this is a slam dunk: the owner registered it back in 1997 and began using the site. Just because he isn’t using it now is less relevant. In fact, that AJC told the panel that “Respondent has not used the Domain Name since it became registered in 1997” is blatantly false. That should be grounds for reverse domain name hijacking.
Yet the panelist gave some credence to AJC’s arguments, writing:
The Panel notes with concern the extended period of inactivity, or at least lack of substance or actual content, on the web site resolving from the Domain Name and is hesitant to find that Respondent has demonstrated rights and legitimate interest in it in the face of such extended inactivity. Actual commentary appears to have been presented only from 1997 until early 2001
Ultimately the Kuechenmeister finds that the domain name owner does have rights or legitimate interests in the domain name. But in doing so he cites the owner turning down two offers for the domain from AJC, writing:
Had Respondent not been seriously planning and preparing to use the Domain Name for the purposes stated, it is difficult to imagine that it would have passed up an opportunity to be paid some $27,500 for it.
We’ve seen panelists “appraise” the value of domain names before, using it against domain name owners. Had the domain owner said “I’m planning to use the domain name, but for $100,000 I’ll abandon those plans and sell to you”, would the panelist have found in favor of AJC?
The ultimate decision against AJC was correct, but the panelists’ rationale concerns me.
Meyer says
“From July 2008 through October 2009, Complainant extended offers to buy the Domain Name from Respondent. The first offer, in July 2008, was for $15,000. The last offer, in October 2009, was for $27,500.”
Just because they offered to purchase the domain does not mean they would have completed the transaction.
Many times trademark owners use that to prove ‘bad faith’.
The domain owner was lucky this time. I’m sure AJC is not going away.
My suggestion for domain owner – create a use for the domain.
And, the next time (there will be a next time) hire an IP lawyer (like Stevan, Ari, John, Brett, etc). That is his only chance in round 2.
Domainer Extraordinaire says
>the next time (there will be a next time)
I’ve found that 80% + of those complainants that lose in kangaroo court give up.
Larry says
It always pays to get three panelists (at extra cost) then to just go with a single panelist. It is more likely that with the right panelists (you decide panelists with approval from the other side) you will end up in the right place. The wisdom effect of the multiple panelists give you a better chance of the right thing happening.
Bret Moore says
I don’t think you can use your own offers as proof of the registrant’s bad faith. Really “commentary.com” ought to turn on the strength of the trademark. Assuming it’s even registered, that’s such a generic word that there’s no way a UDRP panel ought to be even considering transfer. This should most definitely be punted to court. If they want it that badly, then they can sue in court or pay him a price that will induce him to sell.
SU says
This kind of shit is only going to get worse, until it is legally challenged.
Looks like it needs to be decided in the courts that domains can be acquired and held Solely For Investment Purposes.
As long as you are not infringing on a trademark (bad faith), is it Illegal to Invest in domain names?
It should not matter whether you do anything with the domain or not.
It should not matter whether you have good content, bad content or no content at all.
It should not matter whether you consider offers, invite offers or negotiate for the sale of your investment just as you would in any other investment.
The courts should Not allow these organizations to dictate such policies, especially in such a random and arbitrary manner with no set of standards.
TD says
Is it part of the job for UDRP panelists, such as Charles A. Kuechenmeister, to assess values for domains? By virtue of the words he wrote on this particular case, does Charles A. Kuechenmeister fail to recognize the practice of domain investing as “fair use”?
Meyer says
Bret,
Many times TM owners use a 3rd party to make
offers to the domain owner.
If the domain owner states they are not
interested in selling, the TM owner will
say they tried on a number of occasions to
work with the domain owner. (like this case)
If the domain owner counters then they can
use it as ‘bad faith’.
I don’t know if AJC used a 3rd party.
Dave Zan says
@SU
I could be wrong, but I think there are few legal decisions supporting that. Just that these things are fact-intensive and decided on a case to case basis.