Domain owner shot himself in the foot in UDRP response, so he’s asking a court to let him keep the domain name.
The owner of OpenTime.com, who lost the domain name in a UDRP decision last month, has filed a lawsuit (pdf) to try to retain ownership of the domain name.
If you look at the facts, it may seem surprising that the panel ordered the domain name transferred. After all, registrant Kevin Burns has a trademark in Japan for “Open Time”. The term is also descriptive.
But it seems that Burns or his attorney really upset the panelist by making false or questionable statements, and this played against Burns. For example, the initial response stated that Burns owned the domain since 2000.
That’s not true. A simple check of DomainTools shows that this domain was part of the UltSearch portfolio acquired by Marchex and then GoDaddy. It turns out Burns bought the domain through Afternic in the middle of 2016. After being called out, Burns said that something in Afternic’s membership agreement made him the “owner” since the domain was originally registered in 2000. The panelist didn’t buy that.
Burns was represented by Steven Rinehart. This isn’t the first time a respondent represented by Rinehart has obfuscated the ownership date, and both times it has backfired.
The panel also called into question other documents Burns submitted.
So now Burns is defending the domain name in Arizona court, asking for declaratory relief. He may well get it, but I’d suggest being careful what he submits to the court.
KoolBranding says
Clearly both the respondent and his “lawyer” are bumbling idiots! Trying to hide a domain ownership history especially after it hadn’t work for the lawyer the first time is beyond crazy. Nonetheless it is always good to see domain owners fighting on and not succumb to a UDRP decisions as if it was final. I hope he gets it back and both him and the lawyer learn from this.
AJ says
I’m not quite certain only the incorrect (false) Dates were the issue. It appears the respondent’s entire argument was full of holes, incomplete or no evidence and misleading information! It was a mess all over
C.S. Watch says
This dispute is a yard sale of nebulous claims and supplemental filings, which at least illustrates one point very clearly: If a domain was registered by ‘any’ person, predating the trademark at issue, then the ACPA does not apply. That ancient, predating registration evidences lack of distinctiveness, and evidences lack of bad faith as it proves the URL has inherent value.
Certain UDRP panelists’ must acknowledge that ‘any’ ancient registration which predates the mark takes the domain name out of the UDRP’s purview. Failure to do so invites asset hunters. And this, perversely, has begun to burden the courts (ie., BESPOKE.COM).
The UDRP is being used as a tool by which opportunists may illegitimately defeat an open field, attaching valuable, million-dollar assets to which they have no right. The end result is that after they’ve taken their potshot, federal taxpayers are stuck with the court cost of correcting the UDRP’s decision.
(This OPENTIME.COM dispute involves a US complainant, a US respondent, and a US registrar. There’s no UDRP excuse for directly causing lawsuits, because that is directly counter to the UDRP’s objective. ‘I get to ignore applicable law like AirFX and just decide according to my mood,’ is not a tenable attitude. It is ego, and it is frivolity which is grossly expensive to respondents and taxpayers.)
Fatuous disputes like this will continue to stack up and bog down US courts until panelists remedy their failure to respect the logic of ancient registration doctrine. Note that overly disoriented panelists can easily spare themselves any handwringing by simply Googling the text string at issue. If a given domain was registered by ‘any’ party fully 17 years ago, then of course it will be a generic. The expression ‘open time’ appears in dictionaries and in over 400K webpages. If this panelist knew how to gauge genericness, he wouldn’t be stripping assets in favor of opportunists who’ve only just put the URL in their sights a moment ago. Unlike the many others who have been using it for years.
J.Y. says
C.S. The word apple is a generic term but it also functions as a trademark, so by your logic apple would not have a claim against someone who got a domain name including the word apple after apple got rights. That is simply wrong. If I understand the case correctly, the guy registered the name in 2016 after the other party had established trademark rights but then tried to pretend he had rights going back to 2000 which, it turns out, was false. So your premise does not apply here
C.S. Watch says
J.Y. — There are ~4000 trademark registrations ‘containing’ Apple which have been filed with the USPTO. Plenty happily coexisting, plenty of which post-date Steve Jobs, and plenty more to come. If I register Applecart.com today, that is no concern of theirs, unless I sell software. If you are referring to the unsavory doctrine of distinctiveness, that might offer protection to a global ad-money behemoth like Apple Inc., but definitely not to two fellers in Lewisville, Texas in their relatively new use of ‘open time.’
Genericness (as separate from distinctiveness above) constrains the UDRP. ‘Open time’ is generic. The text string is used by many parties, was registered by others prior, is found in dictionaries, and appears in hundreds of thousands of webpages. Had genericness been considered, and this complaint tossed out, then we could have dodged bogging the federal courts with this. (Note that in no wise do I contest your position that this respondent appears to be a disingenuous boob.)
But my point in the last comment is that the UDRP must not consciously seek to reach a different conclusion than the federal courts it operates to unburden. That is inane. The AirFX decision recognizes the alienability of domains, and held that a prior, unrelated registrant’s first date of registration is the effective registration date for purposes of the ACPA. So 2000 should have been the registration date in this dispute, not 2016.
Alienability is the framers’ intent, for many reasons of fairness, public policy, and naked practicability. The complainant’s freshly-minted rights certainly do not supersede the decades-old property rights of the parties who sold this asset forward to the present registrant. And the prior registrations are de facto proof that this domain has value apart from this complainant’s alleged use. It’s hilarious that the Panel believes that the registrant filed a TM and bought this name to exploit two squirts in Lewisville, TX who don’t even care enough about this enterprise to put up a LinkedIn page. They started a business in 2016 (or even 2012) and couldn’t get the domain name? Then they had actual notice that others’ rights preceded them, and they have shown up to steal. There are zero exceptions to that rule.
Even outside of the dictionary definition, this is a domain name with inherent value unrelated to the complainant. For evidence, how about Hewlett-Packard’s TM registration of ‘OpenTime’? (Expired 1996.) What if HP turned out to be the prior registrant of this domain, can one reclaim one’s purchase price from HP? And does HP then sue the party which sold it to them? (Does it clarify things to remember that some names sell for 35M USD?)
JY says
CS. While I like your passion on the topic I think your argument glosses over a bunch of things. I don’t think you can say open time is generic. A term is generic if stands for the thing itself, like car, food and music. I don’t think open time stands for software, which is what the parties were using open time for. So I agree with the writer of the article that it probably could be seen as descriptive. However, when I carefully re-read the decision two things struck me. Both sides seem to be claiming trademark rights in open time for software and both had trademark registrations (Complainant in the US and respondent in Japan; so those trademark offices clearly didn’t think open time was generic for software) and both parties seemed to be involved in software development. So this was really a dispute as to who had rights first in open time for software. The respondent looks to have claimed that he had prior rights in open time as a trademark for software and apparently made all kinds of bogus claims that were rejected. So this doesn’t look like a fight between a trademark owner and someone trying to use a domain name for its descriptive or other meaning. Rather it seems that the respondent who is also in the US registered the domain name to make money off the name and to deprive the guys in Texas from having it (he also seemed to have used it with a page with links that related to software linked to the complainant and not some other descriptive connotation). By the way, I don’t agree with the notion that the small guy should have no rights because their business is small or starting out. Just because the guys in Lewisville are small doesn’t mean that the other guy didn’t know about them or try to upstage them. The two squirts who started Apple in a garage, for example, obtained prior rights in apple for computers after they started using that name for their first computer products. If thereafter someone started using apple for computers to upstage them, then even as a garage based business, they would have had rights to assert against those parties. It will be interesting to see what happens in court in this matter. Claiming open time is generic will likely fail for the reasons stated above, so the fight will likely turn on who is first in the software space and whether the respondent acted in bad faith in registering the domain name.
C.S. Watch says
Gads. Who trolls a law post? #AimFunner