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UDRP Cyberbullying Hits a New Low

Andrew Allemann — Tue, 16 Aug 2011 14:13:14 +0000

German company goes after three letter domain 16 years after it’s registered.

I’ve seen a lot of egregious UDRP cases over the years. This one may take the cake.

Imagine the year is 1995. You register the domain name GEA.com because your personal initials are GEA and you have a business called G.E.A. Design.

Then 14 years later, in 2009, a German company starts complaining that its acronym is GEA and you should sell it the domain name for a nominal amount so it can upgrade its web address from GEAGroup.com. When you refuse, a couple years later — 16 years after you registered the domain name — the company files a UDRP against you.

That’s exactly what happened when GEA Group Aktiengesellschaft filed a case against a California man this year.

The WIPO panelist sums up the bad faith argument fairly nicely:

The Complainant’s suggestion that the Respondent’s failure to display content on the website since 2007 would somehow confuse Internet users is not in the Panel’s view credible. In addition the Panel notes that the Respondent has apparently refused numerous offers for sale of the Disputed Domain Name from various organizations, including from the Complainant, on the legitimate basis that it has used its email address from this website for many years and that to sell it and to have to change email addresses would cause the Respondent considerable disruption and inconvenience. In these circumstances the suggestion by the Complainant of its impression, based on its lawyers’ communications with the Respondent in 2009, that the Respondent would be prepared to sell the Disputed Domain Name for a substantial multiple of the USD 2,000 sum offered by the Complainant, carries little weight.

Overall, the Panel’s view that the Disputed Domain Name has not been registered or used by the Respondent in bad faith is only reinforced by the delay of the Complainant in acting to obtain the Disputed Domain Name. Had the Complainant really been concerned about the Respondent’s illegitimate motives or about damage to its reputation it would not have waited so long after the initial registration in 1995 of the Disputed Domain Name to first communicate with the Respondent (the first communication with the Respondent by the Complainant’s lawyers appears to have occurred in 2009) and a total of 16 years to bring this Complaint.

Needless to say, the panel ruled that the domain owner can keep the domain name. But he should have also found GEA Group Aktiengesellschaft guilty of reverse domain name hijacking.

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WIPO Panel Censures Law Firm for Misleading Panel

Andrew Allemann — Thu, 14 Jul 2011 18:43:57 +0000

Panel blasts law firm for either trying to mislead panel or being “inexcusably careless”.

Last year a World Intellectual Property Organization panelist called a case represented by law firm Novagraaf Nederland a “flagrant abuse” of the UDRP. In that case, the law firm told the panel that its client had been in business from 1994 but didn’t disclose that it had just recently changed its name to reflect the domain name at issue. Novagraaf Nederland also stated that its client, a big bank, had a greater right to the domain name than the individual owner.

Fast forward less than 12 months and the same law firm is getting whipped by a WIPO panel again. In fact, the panel decided the case was reverse domain name hijacking and that the legal representative should be censured.

The case was filed on behalf of Coöperatie Univé U.A. for the domain name Unive.com. The complainant said it registered the domain name in 2000 but accidentally let it expire in 2010, and the respondent registered the domain name upon expiration.

But that’s not what happened. It let the domain name expire a long time ago, and the respondent was the registrant since at least 2003.

Furthermore, the complainant submitted evidence in the form of an email exchange with the respondent prior to the UDRP filing in which the respondent claimed this early ownership. This correspondence had been forwarded to the law firm, so the panel says it was “on notice” about the registration dates.

As a result, the panel writes:

The Panel is mindful of the concurring opinion in Credit Europe, supra, a case featuring the same professional representative as the Complainant’s representative in the present case. The panelist who wrote the concurring opinion, a member of the Panel in the present case, noted therein that the complainant in that case had misled the panel inter alia in its description of the facts upon which the complaint was based and called for “the limited censure available to the Panel under the Policy and the Rules, if only to deter similar conduct in future.” The Panel in the present case considers that it is lamentable that the Complainant’s representative appears to have failed to address these concerns and thus has brought two cases under the Policy within a year in which there is a real prospect that it has either deliberately sought to mislead the panel or has been inexcusably careless in the manner in which it has pled its client’s case. The Panel is unanimous that this deserves censure.

Novagraaf Nederland is an intellectual property law firm, by the way.

The respondent was represented by John Berryhill.

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Lazy Panelist Alert: This Should Have Been Reverse Domain Name Hijacking

Andrew Allemann — Thu, 30 Jun 2011 17:55:02 +0000

WIPO panelist doesn’t bother to consider a sure-fire reverse domain name hijacking claim.

I realize UDRP panelists aren’t paid much to handle cases, but there must be a minimum standard here.

Why the frustration? Take a look at the recently decided case for Cite.com.

The owner of the domain name registered it in 1997 and started a business called Cité Consulting. The complainant Systemware, Inc. didn’t start using the term “CITE” in commerce until 2011.

I understand that Systemware may not have been aware that the domain owner had a consulting company using the domain name. But the 14 year difference between his registration and the company’s first use of the term is enough to make this case a complete joke.

The respondent rightfully asked for a finding of reverse domain name hijacking.

But in one of the shortest UDRP decisions I’ve ever read, panelist Christopher J. Pibus didn’t even bother to consider RDNH.

Update: I have received a copy of the original complaint. Systemware’s lawyers cited Telstra v. Nuclear Marshmallows as rationale for how the domain could have been registered in bad faith if used later in bad faith. Also, the owner of the domain name belatedly discovered that the lawyers had sent an email inquiring about purchasing the domain, although he missed the email originally.

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Pac-10 Goes After More Domain Names

Andrew Allemann — Thu, 26 May 2011 13:40:13 +0000

Sporting conference files dispute over three domain names.

The Pac-10 conference, which now has twelve teams with the addition of Colorado and Utah and will rebrand as the Pac-12, is again turning to the World Intellectual Property Forum in an effort to get domain names related to its new brand.

The group filed a complaint (and won) over pac-12network.com, pac12network.com, and pac-12network.org. All three are registered to an Ontario man.

The collegiate athletic conference first used World Intellectual Property Forum (WIPO) for a domain name dispute earlier this year when it tried to get the domain name Pac12.com. The owner of that domain name decided to avoid the WIPO process by suing the Pac-10 instead.

The suit was later dropped, but Pac12.com is still in the hands of a Utah man. He directs it to a page with a dozen products related to the late rapper Tupac, calling it a “12 Pac of Tupac”.

The Pacific-10 has been a bit behind with its web presence. Pac10.com was owned by publicly traded Marchex until 2009.

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Fortune 500 Company Goes After Three Letter .Com But Loses

Andrew Allemann — Thu, 26 May 2011 01:20:44 +0000

Company with $5 billion in annual sales decides to try to nab domain through arbitration rather than buy it. The price just went up.

The owner of TDS.com has successfully defended his domain name from Telephone and Data Systems, Inc in a UDRP case.

Telephone and Data Systems, Inc. is #450 on this year’s Fortune 500 list and generated nearly $5 billion in revenue last year.

TDS.com was originally registered way back in 1991. The current registrant, Daniel Wang, started working for the domain owner Trident Data Systems in 1997 and was listed as the Administrative and Technical Contacts for the domain name as of 2001.

Trident was then acquired by General Dynamics Advanced Information Systems (GDAIS).

In 2009 Wang worked with the company to transfer the domain name to his ownership.

Wang later parked the domain name, which may be where Telephone and Data Systems saw its opportunity.

The panel found that the complainant didn’t prove that Wang lacked rights or legitimate interests in the domain name.

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Mrs Jello Gets a Win for Geo Domain Owners

Andrew Allemann — Mon, 16 May 2011 18:42:29 +0000

Domainer wins case over geographic domain name brought by petroleum company.

What do you do when the name of a place has also been incorporated into a business name?

This was the issue in a recent UDRP case involving a Brazilian petroleum company and the domainer commonly known as “Mrs Jello”.

Ipiranga Produtos de Petróleo S.A. filed the case in an effort to get the domain name ipiranga.com.

Ipiranga happens to be the name of a famous river in Brazil as well as a historical district of São Paulo, Brazil.

The three person WIPO panel made a detailed argument about place names that are also brand names:

The incorporation of the name “Ipiranga” into the trademark of what is now a large oil company might be compared with other examples such as Sudan Petroleum Company; British Petroleum (BP); Gulf Oil International; Royal Dutch Shell; China National Petroleum Corporation; and Saudi Aramco. It is recognised, for the Complainant, that the location “Ipiranga” may now have a diminished meaning as a source of the Complainant’s products or activities. Nevertheless, it is unlikely in the context that a company name could grant exclusive rights to a geographical term such as Sudan, British, Dutch etc., or to a common dictionary word such as “shell” or “petroleum” unless used in a trademark sense in conflict with the trademark holder. Not even the use of a geographical descriptor standing alone, such as the one-time marketing of the brand “British” standing alone by British Airways, or “Danish” for bacon, could necessarily grant the trademark holder exclusive rights in the geographical description except in strictly a trademark sense. Only where a place name is associated more readily with its product than with the place, for instance Champagne, might the word arguably be claimed to stand alone as a trademark for the product.

This is well written and can be used in similar cases in the future.

It also didn’t help Ipiranga that it registered ipiranga.com.br back in 1996. Ipiranga.com wasn’t registered until 2003 and then the company didn’t even send a cease and desist letter until 2010, prompting the panel to write:

…the Panel notes that the rights the Complainant asserts so strongly were slept upon for at least the 7 years between the registration of the disputed domain name and the issuance of the cease and desist letter

Mrs Jello won the case.

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Incumbents Opposed to UDRP Reform

Andrew Allemann — Tue, 10 May 2011 15:31:12 +0000

Two largest UDRP providers opposed to UDRP reform.

The two largest UDRP providers — National Arbitration Forum (NAF) and World Intellectual Property Organization (WIPO) — are opposed to reforming the UDRP at this time.

Representatives of NAF and WIPO made statements this morning on an ICANN conference call regarding “The State of the UDRP”.

WIPO also released a written statement that you can view here.

It seems that intellectual property interests are concerned that reform is being pushed by people who want to reduce the protections afforded rights holders.

Here is one telling excerpt from WIPO’s statement:

The anticipated ICANN process does not inspire confidence that it would meet these standards. Even when it comes to trademark policies, IP institutionally appears to occupy only a minor ICANN role. Indeed, the more vocal advocacy observed thus far does not suggest a desire to enhance the UDRP’s effectiveness as a rights protection vehicle.

In other words, it’s domain owners that are pushing for UDRP reform and IP interests wouldn’t be able to get their way.

I don’t know that I agree — I think IP interests would manage to push through a lot on their behalf.

However, existing providers did say there are some procedural issues that need to be addressed.

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