After $450,000 offer rejected, ACE Limited filed and lost UDRP arbitration.
WebMagic Ventures, owner of Ace.com, has won an arbitration brought against it by ACE Limited, an insurance company. This is an extraordinary case given the value of the underlying domain name and egregious assertions brought by ACE Limited. However, the panel could not charge ACE Limited with reverse domain name hijacking. This is just one of many three character domain names currently in dispute.
WebMagic registered the domain name prior to ACE Limited’s first use in commerce claim on its trademark for “Ace”. However, ACE Limited claimed common law trademark rights dating to 1985.
The panel found that “ace” is a common term and not exclusively owned by ACE Limited. It didn’t hurt that WebMagic has a trademark for the term ace for the class of services for which it is using the domain name. WebMagic didn’t register the domain name in bad faith and is using it for a bona fide offering of services.
ACE Limited claimed WebMagic files trademarks simply for UDRP defense:
Respondent systematically stockpiles hundreds if not thousands of domain names for resale. In all respects Respondent is a cybersquatter in the business of buying and selling domain names. Further, in an effort to mask their business practice of cyber-squatting, Respondent files trademark applications for certain of their domain names listing the services as websites providing retail, advertising and various information links.
ACE Limited also said that WebMagic merely creates customized parking pages for its domains.
WebMagic was quick to point out that it has started several businesses:
Complainant chose to ignore the history of Respondent, who is in the business of creating businesses, and is additionally a service provider for clients. Respondent created and operated Toys.com, which after obtaining half the online marketplace in the U.S. for mail order toys and nearly all the market share in more than 20 other countries, merged with eToys. Respondent created the famous NASDAQ-listed company Pets.com, whose logo was seen in Super Bowl ads, Macy’s parades and branded merchandise.
ACE Limited never disclosed to the panel that it made multiple attempts to purchase the domain name from WebMagic. It made several offers, including a $450,000 offer that was implied to be a “starting point.” WebMagic repeatedly said the domain was not for sale. After years of failed attempts to buy the domain, ACE Limited filed the UDRP.
Although WebMagic won the dispute, the panel did not find reverse domain name hijacking. It found that ACE Limited does have limited rights to “ace” and made reasonable assertions that WebMagic may have acted in bad faith (even though they were debunked).
Much like the Shoppers.com decision, although this is not reverse domain name hijacking according to the panel it certainly seems unethical.