Domain Name Wire

Domain Name Wire

Displaying posts tagged under "udrp"

  • An interesting dates question in a UDRP

    1. BY - Jul 23, 2014
    2. Policy & Law
    3. 1 Comment

    What if you registered a domain long ago, let it expire, and then registered it again?

    The date you first registered a domain name is a critical factor in a UDRP.

    Generally speaking, if your registration predates the complainant’s rights in a term, then the complainant can’t win a UDRP. That’s because it’s impossible that you registered the domain name in bad faith…unless you’re psychic.

    Some complainants have argued that the renewal of a domain name can be in bad faith. Some outlying panelists have bought this argument.

    Dates in a just-decided case for proquidity.com bring up another interesting question: what if you registered a domain a long time ago, let it expire, and then registered it again?

    If the complainant’s rights in the matching trademark were gained after the original registration but before the new one, did the rights predate the registration?

    The question is begged but not answered in the proquidity.com dispute. The re-registration of the domain name still predates the complainant’s rights, but just barely.

    Common sense suggests that a panelist, in a case in which this question does need to be answered, would consider the earlier registration as evidence in the question of “registered and used in bad faith”. Of course, the circumstances of the expiration and reason for re-registration would require examination.

  • Domain name owner loses UDRP, sues, gets $7,500

    1. BY - Jul 17, 2014
    2. Policy & Law
    3. 5 Comments

    MyArt.com owner can keep domain name and some cash.

    My ArtIn April I wrote about how the owner of My-Art.com filed its second UDRP against the domain name MyArt.com and won.

    It was a bad decision based, in part, on a incorrect claim that the domain name was transferred to a new owner after the first decision.

    The owner of MyArt.com didn’t respond to the UDRP filing, but sued after the decision was handed down.

    The lawsuit, filed by law firm Lewis & Lin LLC, claimed reverse domain name hijacking under the Lanham Act, as well as related state unfair competition claims.

    My Art SAS, the French company that filed the UDRP, settled after the lawsuit was filed. It won’t get the MyArt.com domain name and also agreed to pay statutory damages, attorney’s fees and litigation costs.

    Court records show the payment was just $7,500. Not much, but a nice turnaround from having to give your domain name away to getting paid for your inconvenience and legal fees.

  • ShoeBuy.com’s UDRP record drops to 3 and 3

    1. BY - Jul 03, 2014
    2. Policy & Law
    3. 4 Comments

    Company loses a UDRP for the third time in just 6 tries.

    ShoeBuyOnline shoe retailer ShoeBuy.com might need to re-read the Uniform Domain Name Dispute Policy.

    It just lost its third UDRP. It has only won three times.

    This latest loss comes courtesy of typosquatting recovery firm CitizenHawk, which helped ShoeBuy.com go after ShowBuy.com.

    Yes, w is right next to e on the keyboard. But a UDRP panel determined that ShowBuy.com, made up of two common dictionary words, is not confusingly similar to ShoeBuy.com.

    To be fair to CitizenHawk, this is the first ShoeBuy.com loss that it was involved with. CitizenHawk won three previous cases for ShoeBuy.com-related domain names. The two prior losses were on the hands of large law firms.

    [The original version of this article stated that ShoeBuy had three wins and four losses. One of the cases I read as a loss was actually when ShoeBuy was the respondent in the case and won. So it's record as complainant is actually 3-of-6.]

  • 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.

  • Hmm…UDRP panel orders transfer of Galvanize.com

    1. BY - Jun 27, 2014
    2. Policy & Law
    3. 9 Comments

    Panelist orders generic domain be transferred to local startup accelerator.

    A National Arbitration Forum has ordered the transfer of the domain name Galvanize.com in a highly questionable decision.

    At every turn in deciding the case, NAF panelist Dr. Reinhard Schanda gave the benefit of the doubt to complainant Galvanize LLC. That said, the respondent could have put up a better case.

    Respondent Brett Blair / ChristianGlobe Network bought the domain name in an expired domain auction at NameJet in September 2011 for $2,331. He did not mention this purchase price and the circumstances in the response, apparently.

    The complainant filed a trademark for “Galvanize” in May 2012 claiming a first use in November 2011.

    That alone should have been enough to show that the respondent didn’t register and use the domain in bad faith.

    Apparently Galvanize LLC filed an affidavit claiming that it had actually used the brand for its startup accelerators businesses prior to this first claim date. Although it provided more evidence of use of the brand, the panelist didn’t state that this evidence predated the respondent’s domain purchase.

    It’s highly unlikely that Galvanize had taken on a secondary meaning and was well known, especially where the respondent lives (Florida) at the time he registered the domain. It appears the complainant’s Galvanize.it domain was just registered in June 2011.

    I’d bet this domain was registered as an investment for its generic meaning.

    Based on my reading of the response, the respondent focused on a plan for legitimate use rather than stating that this was a purchase of a generic domain, which is legitimate.

    In fact, the panel wrote:

    In the Panel’s opinion the most realistic interpretation of the actions of the Respondent is that he registered the Domain Name in the hope that he might be able to sell it at a significant profit to the Complainant or alternatively to someone who could use the Domain Name to his commercial advantage by engaging in the activity contemplated by paragraph 4(b)(iv) of the Policy.

    So what?

    It’s highly unlikely that he registered it with the complainant in mind. He probably had know idea the complainant existed, unless he happened to traveled forward in time.

    The complainant also says it corresponded with a broker from DomainHoldings that said the domain was for sale for $100,000. The respondent does not recall ever engaging with DomainHoldings.

    This is not a clear cut case of cybersquatting. This was a bad decision.