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  • Google files UDRP complaint against domain registered in 1991

    1. BY - Apr 16, 2012
    2. Policy & Law
    3. 22 Comments

    Google files complaint against two decade old domain.

    Google has filed a UDRP against a 21 year old domain name: Gmai.com.

    How could Google do such a thing? After all, the company was founded in 1998 and Gmail (of which this domain could be considered a typo) wasn’t created until 2004.

    Well, have a look at the page you’re forwarded to when you type gmai.com into your browser:

    This misuse of the domain wouldn’t be enough to make the case a slam dunk if it weren’t for another factor: the domain appears to have changed hands last year. So it counts as a “new registration” in the eyes of UDRP.

    It’s unclear who owns the domain right now. The domain is registered at ICANN accredited registrar BoteroSolutions.com S.A. There’s no whois link on its home page. There’s one inside the site, but it seems to call an external whois server. DomainTools can’t seem to connect to the company’s whois server, either.

22 Comments
  • John Berryhill says:

    April 16, 2012 at 5:03 pm

    Who could fail to love this one.

    The domain name used to be registered to a GMA Industries Inc. in Maryland, but it appears their ownership likely ended some time ago.

    The ICANN contact page for Botero Solutions includes a yahoo.com email address, which certainly inspires confidence. BoteroSolutions.com appears to use nameservers which are registered through OnlineNic and hosted in…. wait for it…. Karachi, Pakistan. My anti-virus software seems to believe that the registrar’s home page is a malicious site, and it wouldn’t be surprising if that was a bang-on assessment.

    The original registration of the domain name in 1991 is probably the least interesting aspect of this dispute involving the all-too-familiar award scam lander designed to use the colors and presentation of the targeted trademark owner.

    Someone needs to apply an industrial strength solution to the people responsible for these things and, whoever you are, you are going to someday get what you have coming to you.

  • John certainly offers great insight.

    Easy enough for Google to try the UDRP since they probably can’t even send a cease and desist letter.

    It will be interesting to see if the registrants replies to the complaint.

  • @John

    You say the “original registration of the domain name in 1991 is probably the least interesting aspect of this dispute”.

    Is this not the crux of it? When the “registration” for UDRP purposes took place?

    It seems to me to be central to what I understand DNW’s point is: whether this is one for UDRP or the courts, and a passing off or related action.

    I suppose if Google doesn’t know they can justify having a go. But an abuse of the UDRP is not merited in any circumstances, right?

    • @ Nic – because the domain owner changed, the registration date changed in the eyes of UDRP. So Google can and should win this case.

      Had it been the original owner, then this would be a case best determined by a different venue.

  • Frantisek Mrazek says:

    April 16, 2012 at 9:07 pm

    The domain could not have been registered in bad faith and therefore it should not be a case for UDRP. Dont understand Mr. Beryhill suddenly claiming otherwise. UDRP should not be even allowed in cases like this when domain was registered before the comoany existed, and its founders were still in elementary school having no idea what an internet is.

  • Andrew@
    “the domain appears to have changed hands last year. So it counts as a “new registration” in the eyes of UDRP”

    I’m not trying to change the subject here,but based on this theory Rick Schwartz could all so loose his smartglasses because it changed hand after the mark.No?

    • @ Rich – well, there is a registered trademark for “smart glasses”. But I think it’s also a general term for the new type of Google like glasses. The existing mark is for regular glasses. So it may not be a problem.

  • You can purchase a trademark from a company and be granted rights starting from the TM filing date but if you purchase a domain name, that’s considered as a new registration.

    Isn’t it time to get an equal treatment ?

  • John Berryhill says:

    April 17, 2012 at 1:53 am

    You can’t purchase a trademark registration for floor wax, start selling automobiles under that mark, and retain the priority of the mark for the floor wax.   

    UDRP Panelists, by focusing solely on title, tend to ignore when a change in title matters and when it doesn’t.  

    That said, the original registrant was NOT running a fake Google lander for the purpose of ripping people off.  That IS, however, quite obviously why the current registrant obtained the domain name.  

    That is not “unequal treatment” for domain names, it is the same thing.  Naked assignment of a trademark – without continuity of use of the mark in connection with the goods and services – is even worse, because it extinguishes the right in the mark.   

    The domain name was acquired in bad faith by THIS registrant, and that should be as obvious as the nose on anyone’s faith.   You are reading the clause “registered in bad faith” but forgetting the actor doing that registering.  The question is whether the Respondent – this dude here with the domain name – registered the domain name in bad faith.  

    Absolutely, whoever first registered the name in 1991 obviously did so for reasons having nothing to do with Google. But that’s not who we are talking about now, is it? No.  We are talking about the person who recently acquired it, and their motive is so brilliantly apparent you can see it through your eyelids with your eyes closed.  

  • John Berryhill says:

    April 17, 2012 at 2:00 am

    And yes, I’m typing on a phone with autocorrect on a screen too small for eyes my age.

  • Meanwhile, Gmail.it still belongs to another company!

  • If the decision will be based on what is on the web page now, I will say that Rick will loose saveme.com also based on the content which is badmouth the other side.

  • What am I missing? Isn’t this about Gmai.com? Does Google own trademarks for both “Gmail” and “Gmai”? If not, why is this a UDRP issue?

  • @Elliot – while Google has the trademark for the exact word GMail, there’s enough details on the domain’s current content (e.g. logo color and part of its design) that’s arguably riding on that mark. Besides, there are enough decisions where a difference in one character, extra or less, didn’t matter if the domain was still registered in bad faith.

    Arguably, anyway.

  • As for other folks: while I realize it feels unfair that some UDRPs aren’t warranted, an important thing is to look at the whole case in its entirety rather than seem focused on just one detail out of many.

  • John Berryhill says:

    April 17, 2012 at 9:28 am

    “If the decision will be based on what is on the web page now, I will say that Rick will loose saveme.com also based on the content which is badmouth the other side.”

    No. Rick could not have registered that name based on the trademark asserted in that proceeding, because he had that domain name long before the trademark existed. Rick’s a volatile guy, and the fact that he’s using the name, at this point in time, to express his feelings about the dispute, has nothing to do with ripping off someone’s mark. He has a, shall we say, characteristic way of expressing himself, but it’s certainly his right to do so.

    Whomever acquired the name in THIS proceeding did so well after GMAIL became a well known Google service; they did so precisely because GMAIL is a well known Google service, and their use of the domain name is manifestly to confuse people into thinking they are looking at a web page sponsored by Google.

    The two situations have zero similarities.

    “Does Google own trademarks for both “Gmail” and “Gmai”?”

    No, but if you start a fast food restaurant, paint it yellow and red, and call it “McDonell’s”, what do you think is going to happen?

  • @ Berryhill “That said, the original registrant was NOT running a fake Google lander for the purpose of ripping people off. That IS, however, quite obviously why the current registrant obtained the domain name.”

    You make some sweeping aspersions with regard to the intent of the owner of this domain. Not sure how the case at hand differs significantly from Goggle.com which was long registred and then sold to a user with an identical MO to the gmai guy. In that instance, despite the strimingly similar circumstances a transfer was not granted. Ya think the goggle guys had a significantly different motive than the one you are dissceting here?

  • John Berryhill says:

    April 17, 2012 at 12:08 pm

    @Thai – the Goggle.com dispute was resolved on the basis of the panel declining jurisdiction. There was a contractual agreement between Google and the Respondent in relation to the registration and use of the domain name. The two situations are not even remotely comparable.

    http://domains.adrforum.com/domains/decisions/1403690.htm

    “The Panel declines jurisdiction over this Complaint”

    What the panel decided is that the UDRP didn’t apply to that dispute. There was no determination made of any UDRP element.

    “You make some sweeping aspersions with regard to the intent of the owner of this domain.”

    Not being judge, jury, or advocate in the case, I’m certainly entitled to express my belief that this registrant is engaging in scummy behavior, and apparently using a registrar that can’t spell “registrar” on their own home page in their purported native language. If anything, the registration appears to be designed to attract people to visit that registrar, to receive their complimentary download of JS/Agent.zbq malware. You can get that from them with more reliability than you can get WHOIS data.

  • Thanks for the time & info John.

    You folks disagreeing w/him; this is what John does for a living. Day in and day out. And has for many years.

    So he knows what he’s talking about.

  • @andrew (or perhaps john berryhill or someone else with good legal knowledge)

    i’v got an interesting question for you…

    i have a couple domains but i registered them in someone else’s name and all THEIR contact info not mine. i do however fully control the email address and the domain account, and i pay for the renewal with my credit card. (this is to hide my info in that domain from a seller i want to buy a similar domain from).

    technically then if i put it into my name i could be hit with a udrp coz it’s a “new reg” right?

    how would my credit card statements hold up in my defense that they were always mine and never changed hands? i would argue that i simply used a privacy service but 1) didn’t need to pay for it since i used a friend, and 2) i don’t trust privacy svcs coz i worry that i could otherwise never prove it was mine and they could “disappear”.

    any thoughts/comments?

  • This person actually tried to defend himself:

    http://www.udrpsearch.com/naf/1435467

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