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  • Wow: Judge orders UDRP transfers, including Apple typo, to be reversed

    1. BY - Jan 12, 2012
    2. Policy & Law
    3. 26 Comments

    We do things differently in Texas.

    District Judge Royal Furgeson has ordered (pdf) that World Intellectual Property Organization cases from as early as 2010 be overturned and ordered a number of domain names now owned by Apple and Public storage be transferred back to the typosquatter that previously owned them.

    Yes, you read that correctly.

    The case involves domain names that belonged to a company tied up in the courts when UDRP cases were filed against the obvious typos. The complainants in the cases won and four of the domains were transferred to their rightful owners:

    publicstorge.com, pulicstorage.com, puplicstorage.com transferred to Public Storage
    aplle.com transferred to Apple, Inc (it apparently has already been transferred back)

    But the judge says the cases never should have gone forward because of the court challenges involving the respondent.

    In other words, you can cybersquat all you want if you’re in legal limbo.

    So now the judge wants domain name registrar Fabulous to undue the transfers. In other words, take a domain name that belongs to Apple away from Apple. He also wants them to halt the transfer of over a dozen other domains lost in UDRP that Fabulous never transferred like it was supposed to.

    Oh, and Furgeson wants Fabulous, which is based in Australia, to tell the court within two days that it has complied with the order.

    Furgeson also required ICANN to confirm that it has complied with the order, even though ICANN can do absolutely nothing at this point. Domain name transfers involve only a registrar and registry.

26 Comments
  • If the domain owner did not use the domains in an infringing way, why is this cybersquatting?

    Both “Apple” and “Public Storage” are common words/phrases used in common talk every day. It would be OK if someone else owned Apple.com since it is a dictionary word, but not OK to own Aplle.com? I don’t get it.

  • To add on… if you relate physical real estate to virtual real estate… Walmart buys land and builds a store. The store gets a lot of customers. Someone else buys the lot next to Walmart and opens a pizza shop. The pizza shop will get some of the benefit of Walmart driving traffic to its real estate. But Walmart has no claim to that land. Just my 2 cents.

  • You use the word “cybersquat” quite liberally. The fact that a person can use domains (yes, even typos) for other purposes than take advantage of another should be noted.

  • It appears that his ruling had to do with a technicality. Your incredulous tone seems uncalled for.

    Yes, the names seem like “obvious typos,” as you say, but proper procedure should be followed.

  • 1. Aplle wasn’t parked or developed – owner responded and lost the case.
    http://www.udrpsearch.com/wipo/d2010-1917

    2. publicstorage typos – owner didn’t respond.
    http://www.udrpsearch.com/wipo/d2010-1782

  • Aplle.com was parked. I wrote about it here:

    http://domainnamewire.com/2010/11/12/is-apple-entitled-to-appl-com/

    I think it’s quite obvious what the company was doing. Look at some of these:

    dailycand.com, dailycandi.com,
    dailycandychicago.com, dailycandynyc.com, fanngo.com, jandango.com, and
    jobfandango.com, korresproducts.com, amicains.com, gravelymowers.com

    I’m the last one to call something cybersquatting if it isn’t. Let’s be realistic here.

  • What if Aplle stands for: American People Looking Like Eagles? And the poor guy can’t have the Aplle.com? It makes no sense to restrict any one from registering a available alphabets they want.

  • Andrew,
    It’ll be fine with me, if you did.
    My position is that anybody should be able to register anything that’s available for registration; the use is what could be monitored, if someone is infringing on someone’s anything, then they should go to COURT to deal with it, not udrp or any small body like that.

  • Domainers need to deal with reality. Just because it is in the dictionary does not mean it is fair game for all purposes. If you park it and there are ads shown competing with a trademark owner on a dictionary word used in a non-dictionary way (ie apple for computers), or words, it is very likely to be considered cybersquatting. If you put two dictionary words together that are trademark protected (ie public storage) and park it with ads competing with the trademark owner, you have a likelihood that it will be subject to transfer.

    It always amazes me how even after all these years, people who presume to do business in this area fail to appreciate the most basic points under the UDRP and ACPA. You can argue whether the law is fair but you can’t argue the reality of the situation.

  • Agreed with Enrico. The law is the law – a judge couldn’t care less about your feeling about the law. Ignorance of the law isn’t an excuse either.

  • If you are gonna be in the business, you need to understand the risks. Don’t park you best domains. The ads typically gravitate towards trademarks. Develop them in a non-infringing way or keep them passive.

  • Andrew, you didn’t link to the stay and I haven’t read it, nor the motions filed in the case, but from what you wrote it appears that the judge ordered the names returned because the WIPO cases improperly went forward while the registrant (the “typosquatter”) was involved in court challenges.

    That’s why I said he ruled on a technicality. Since these names do, in fact, appear to have been registered in bad faith, I would think there’s a good chance the transfers will take place in due time.

  • Enrico Schaefer,

    Let me put it to you this way:

    Would you like to go to court and have your case decided by a commissioner, or a lawyer moonlighting as an alternative judge on weekdays? I didn’t think so.

    Most people will not waive their rights to have a case decided by a jury, or a competent court of valid jurisdiction.

    What the big companies, and big money is doing to us, is to set up all these Kangaroo bodies to decide cases involving domain names, and they end up stealing domainers properties because these established dinosaur …companies have deep pockets, and can influence these rulings. The little guy gets the shaft all the time. If an alphabet, or a string of alphabets have a TLD or gTLD attarched to them, it changes the whole name. ABC.COM is different from ABC.DE, and therefore different from ABC.US, and consequently ABC by itself. Period.

  • I agree.
    I don’t park domains.

    And, you are right when you speak of the reality of the situation.

    I am arguing that it is unfair reality. Like in most cases, the system and process is skewed, I just want them to read this and know that, we do know that the process, and the system set up is unfair, and stupid, and that they should do everything to make things fairer, either by deciding some of these cases fairer, or changing the rules to actualize a reflective, and moral conscience; and to know that the little guys are NOT stupid, we know the deck is stacked to steal these domains from people who had the fortitude and foresight to register them many years ago. If a company can wake up any morning and grab any domain from their rightful owner, WHY SHOULD THEY BOTHER REGISTERING a name until they really need to use it? It maked no sense to equate ABC.COM with ABC. Those two names have ABC in common, but there is a .COM on one of them, which makes it totally different from the naked ABC. That’s all I’m saying. Spinning it otherwise is a crock of bullshit, and they know it.

  • Addendum to Enrico:

    By the way, Enrico, follow me on the example I gave with ABC.COM; if the logic is that ABC.COM is the same as ABC, or that ABC should own ABC.COM, then why not also, by the same logic infer that ABC should get AB.COM, and A.COM for that matter, after all there’s AB, and A, in in ABC? If a law or process is fair, it should be followed to it’s logical conclusion. If a UDRP judge awards ABC.COM to ABC, with the stupid excuse that somehow ABC holds a mark on those alphabets, he should add AB.COM, A.COM, B.COM, BC.COM, AC.COM, C.COM, and so forth, to the loot, and award them to ABC. Why stop with ABC.COM? If they own those alphabets, they should get all those, and in all TLDs and gTLDs!

  • Jeremy Leader says:

    January 12, 2012 at 8:06 pm

    If the company was in the middle of bankruptcy proceedings, that means that it wasn’t settled who owned what parts of the company, right? So who should properly have been the respondent in the UDRPs? I think the answer is that we won’t know until the bankruptcy case is finished. So on that basis, it seems reasonable to claim that these UDRPs were adjudicated without the true owner having had a chance to respond, and thus may be invalid.

    Is that what’s going on here? I’m not a lawyer, I’m asking for clarification from those more knowledgeable about the relevant laws.

  • @Uzoma

    That’s one way to look at it. If one only views it that way, though, that can: a) needlessly frustrate one if s/he chooses to ignore the realities of the situation, and/or b) not help him/her understand the risks involved and take steps to avoid them.

    Guys, a couple of things to remember:

    1. UDRP is not a court, but an administrative panel. UDRP is part of your registration agreement that you “legally” agree to when you registered the domain with the registrar, even if you personally don’t.

    (There’s a looooooooong story behind how UDRP started and all, so I won’t go into that.)

    2. Part of UDRP’s rules includes allowing either the complainant or the respondent to dispute the decision in the “mutual jurisdiction” originally chosen in the UDRP complaint. Since the mutual jurisdiction part has to be either that of the registrar or the registrant, I gather it’s the latter since I noticed some of the domains’ listed addresses is in Texas.

    3. Following up to #3, I gather the respondent or whoever subsequently filed suit in Texas in conforming with that. Then…this happened.

    Sorry for the boring and maybe distracting explanation above, heh. Now, back to topic at hand.

    AFAIR a Fabulous executive commented online somewhere (NamePros, I think) that they “tend” to obey court orders if issued within their jurisdiction or that of the registrant. I gather that’s how other registrars generally treat court orders as well, and they can also ignore those not issued from either one. (although they can always choose otherwise…)

  • The order is the first link in the story.

    Yes, this is a “technicality”, not a question of if the domains should have been won in UDRP. That’s what makes it interesting…judges reverse UDRP decisions all the time when someone sues after a UDRP is decided.

  • Uzoma: Letter strings may be a step removed from single dictionary words and combined dictionary words. But if you put a parking page up on acb.com and it shows ads for television programs or studios, there is risk, especially under the acpa since you may now be using the domain name with a bad faith intent to profit. Under UDRP, the arbitrator may infer that as well.

    Dave: Registrars screw up the transfer part fairly often. They either transfer before the 10 days, or don’t transfer for weeks or transfer in spite of a court action. It will be interesting to see if Fabulous obeys this one…

  • Jason Hayden says:

    January 13, 2012 at 11:06 am

    All of these domain names are tied up in a huge litigation case between Texas International Property Associates and the owners of the Manila Industries portfolios (in what might be the greates cases of irony the domain community has ever seen).
    If these companies had done even the slightest bit of diligence and sent a demand letter they would have received notice of the pending lawsuit from the court appointed receiver and SHOULD have known not to file a UDRP. The representatives wasted their clients time and money. Additionally, one of the requirements of the UDRP is to state if the names are a part of any current legal action (typically section 9 of the Complaint and section 18 of the UDRP Rules). Lastly, Fabulous, I’m sure, has received multiple orders from the court to lock the domain names until the litigation was resolved, and they should have notified WIPO or NAF during the deficiency check of the Lock, and they definitely should NOT have transferred the names without a court order. Failure all the way around – which makes for an angry judge.

  • “ICANN can do absolutely nothing at this point”

    You always make statements like this without any explanation. ICANN can do just about anything they want and nodody is going to stop them. ICANN has authority over all these activities and processes.

    • @ RS – I don’t believe ICANN has any technical capability to transfer domains between registrants or registrars, except a bulk transfer in the case of registrar de-accreditation.

  • @Enrico – heh, no surprise there.

    @rs – ICANN indeed can. But they probably rather not with all the “arrangements” they’ve made that – for the most part – worked fine ever since.

    I could be wrong, but a court order might have more “effect” if it were issued where ICANN is operating in. Of course, I’ll let the lawyers clarify that as long as it helps to understand these things more.

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