Domain Name Wire

Domain Name Wire

Displaying posts tagged under "reverse domain name hijacking"

  • Reverse domain name hijacking ruling over SaintLazarusUSA.com

    1. BY - Aug 20, 2014
    2. Policy & Law
    3. 1 Comment

    WIPO panelist hands down RDNH ruling.

    Saint LazarusEvery once in a while I read a UDRP involving organizations in a world I simply didn’t know existed.

    Such is the case in The American Association of the Order of St. Lazarus, Inc. v. Thierry Villejust over the domain name SaintLazarusUSA.com.

    The complainant was found guilty of reverse domain name hijacking in the case.

    The respondent is “a member of the governing council of the Orleans obedience and serves as the Grand Bailiff of the Grand Bailiwick of the USA which engages in charitable activities in the United States through a nonprofit organization, Saint Lazare USA, Inc. Respondent registered the disputed domain name in 2011 his capacity as Grand Bailiff of the organization.”

    According to the respondent, both his organization and the complainant represent two obediences of the ancient “Military and Hospitaller Order of Saint Lazarus of Jerusalem” and each have used the names and symbols of the Order for centuries, beginning in the 11th century. Both parties claim their origins with the Military and Hospitaller Order of Saint Lazarus of Jerusalem, an order of chivalry founded by crusaders in the 11th century.

    (You can read more about it on Wikipedia.)

    The respondent notes:

    Respondent’s organization has roots in one faction of the Order. That faction has at times operated under the auspices of the Royal House of France, initially through the 1800s, after which time it operated without that protection. In 2004, when the Royal House of France resumed its protection, the Order split, resulting in more than one obedience. Respondent represents the US arm of an obedience that operates under the auspices of the French royal house known as the “Orleans obedience,” while Complainant apparently represents another branch of the order known as the “international Malta obedience.”

    That’s some rich history.

    Panelist Debra J. Stanek ruled in the respondent’s favor on all three elements of the UDRP.

    Stanek found the complainant guilty of reverse domain name hijacking on four grounds:

    - Although Complainant did establish ownership of US federal trademark registrations containing terms used in the disputed domain name, it did not provide any support for its claim of unregistered or common law rights in its domain name or ownership of an international registration for LAZARUS and did not persuade the Panel that either of the marks that it did own was confusingly similar to the domain name.

    - Complainant either knew or should have known, at the time of filing the Complaint, that it was not the “only legitimate organization” to use the name “The Military and Hospitaller Order of Saint Lazarus of Jerusalem” since the crusades.

    - Complainant either knew or should have known, at the time of filing the Complaint that Respondent was affiliated with an organization that had rights to use the name “The Military and Hospitaller Order of Saint Lazarus of Jerusalem” and other indicia related to the Order.5

    - The allegations of the Complaint were largely unsupported by facts, evidence, or argument and omitted material information regarding the history of the Order, and other pertinent facts that were, or should have been known to Complainant.

  • Roundup: this week in the Domain Name Business

    1. BY - Jul 26, 2014
    2. Uncategorized
    3. 3 Comments

    It was another exciting week in the domain name industry. Here’s a look back.

    Domain Registry of America may finally get cut off from ICANN. The notorious company that sends misleading domain renewal notices to domain owners has been suspended by ICANN and a full termination may be coming.

    Sedo is planning a big new TLD booth at September’s DMEXCO conference in Germany. Interested new TLD companies are invited to reach out to the company about participating.

    Amazon and Google settled some new TLD contention sets this week. The two companies settled their differences over .talk, .you, .play, .dev and .drive. Amazon.com let .group go to Donuts in a 5-way race.

    .Tokyo launched on Tuesday and got almost 10,000 domain name registrations. There were some other strong starts this week, and some slow out of the gate.

    Dealhunter A/S of Denmark has been found guilty of reverse domain name hijacking over DealHunter.com. Other RDNH’s this week include SinVodka.com and CityBank.com.

    Both Neustar and Verisign reported earnings this week. This was the first quarter in which Neustar’s numbers included .Co. Verisign had a slow quarter, stock investors like its forecast.

    Heritage Auctions held a successful domain name auction on Thursday, grossing $774k. Top sales include Digital.com at $373,500 and Cute.com at $230,000. The downside was that the highly anticipated auction for Bitcoins.com was removed for legal reasons.

    Webfair Virtual, an online tradeshow, was held on Thursday. It was frustrating to attend, but apparently if you got past the initial frustration it was worth the time.

    Google is registering “Music Key domain names. Is this the name of its new YouTube music service?

    There were four public six figure domain name sales this week, DNJournal reports.

    Disgraced celebrity chef Paula Deen was among the end users that bought domain names last week at Sedo.

  • North Carolina company guilty of Reverse domain name hijacking

    1. BY - Jul 01, 2014
    2. Policy & Law
    3. 0 Comments

    Company claims rights dating to 2010 and domain name was registered in 2002. But…

    Personal Communication Systems, Inc of Winston-Salem, North Carolina, has been found guilty of reverse domain name hijacking.

    The company filed a UDRP against the owner of HealthWave.com. Healthwave is the name of an automated medical appointment reminder system that Personal Communication Systems sells.

    It has a trademark for Healthwave, but the earliest claimed use dates to 2010. The domain name was registered in 2002.

    This was the basis for the company losing the UDRP as well as being found guilty of reverse domain name hijacking:

    The question before the Panel on this topic is whether the Complainant knew or should have known that it could not prove registration in bad faith at the time that it filed the Complaint. In the Panel’s opinion, the answer to that question must be in the affirmative. The content of the amended Complaint itself makes this clear. Paragraph 8 expressly sets out the date of registration of the disputed domain name, namely October 13, 2002. Paragraph 12 contains a specific averment regarding the month and year on which the Complainant is said to have adopted the use of the HEALTHWAVE mark in commerce, namely June 2010. Despite listing these dates, the Complainant makes no attempt to address the obvious issue of the lengthy intervening period between them. Nor does the Complainant attempt to demonstrate the existence of any earlier rights in its HEALTHWAVE mark. As such, the Panel considers that the Complaint was bound to fail and that the Complainant knew or ought to have known this at the point of filing.

    Unfortunately for the complainant, it hired lawyers that don’t know how to look up historical whois records at DomainTools. The whois record for the domain name changed from someone in Italy to a company in Panama at the beginning of 2013.

    Based on common ownership of other domain names including Premiums.com, I don’t think the owner actually changed. But pointing out this change would have probably been enough for the company to escape the reverse domain name hijacking charge.

  • Egton loses Patient.com UDRP, but it should have been reverse domain name hijacking

    1. BY - Jun 12, 2014
    2. Policy & Law
    3. 0 Comments

    Egton Medical loses big time, but panel doesn’t admonish it for frivolous filing.

    Egton Medical Information Systems Limited has lost a UDRP it filed against Health Axis Group LLC in March over the domain name Patient.com.

    This was a particularly egregious filing and obvious abuse of the policy. The three person panel found that Egton Medical didn’t prove any of the three prongs of the UDRP.

    Egton also made ridiculous arguments, such as Health Axis Group’s ownership of patient.me being evidence that it’s cybersquatting.

    Egton operates at Patient.co.uk. Here’s an example of one of the overtures Egton made in an effort to buy the domain name:

    […] we get many visits from overseas to the medical information at ‘www.patient.co.uk’. As such we are looking to move to a “.com” domain to position us more appropriately to an international audience. I noticed your domain name had been advertised for sale in the past. Please can you advise as to how much you would want to sell the domain name to me? Kind regards. Ben [F]. Operations Director, Patient.co.uk EMIS.

    After inquiring about buying the domain name multiple times, Health Axis Group finally responded with asking prices between $500k and $2.0 million, which are perfectly reasonable asking prices for this domain name.

    Yet the panelists never mention reverse domain name hijacking. It’s possible, or even likely, that the respondent didn’t ask for it. But it’s the panel’s obligation to consider reverse domain name hijacking when it believes a case has been filed in abuse of the policy. Given that Egton satisfied none of the requirements of UDRP — not even the trademark requirement — the panel certainly should have considered it.

  • Why no RDNH for Thingify.com?

    1. BY - Jun 11, 2014
    2. Policy & Law
    3. 0 Comments

    A classic abuse-of-proceeding case, but no RDNH finding.

    A WIPO panel just handed down a decision in a UDRP for Thingify.com. It follows a familiar story line:

    1. Person starts company, but matching .com domain is taken.
    2. Company opts to use a different extension, in this case Thingify.net.
    3. Company then tries to buy .com but can’t strike a deal at the price it wants.
    4. Company files a UDRP it has no chance of winning.

    In the case of Thingify, Inc, it knew that Thingify.com was registered before it started using the mark. It knew there was no way it could show the domain name was registered in bad faith, but filed a UDRP anyway.

    In fact, here’s how the WIPO panelist summarized his findings:

    Complainant’s own statement of facts and Whois evidence demonstrates that Respondent registered the domain name at issue long prior to the date of first use of the THINGIFY mark by Complainant as well as well prior to application and registration dates for Complainant’s trademark registration.

    It appears the domain name owner represented himself in the proceedings and probably didn’t ask for a finding of reverse domain name hijacking. Still, it’s a panelist’s mandate under UDRP rules to consider a finding of RDNH if warranted.

    I believe it was warranted in this case.

    Panelist David S. Safran didn’t mention it. Instead, he wrote what was effectively a three line determination in the case.