Workers compensation company fails at attempt to steal SFM.com domain name.
[Please note that there is more than one company that goes by the name “State Fund Insurance”. This article refers to the company that provides workers’ compensation insurance in Minnesota, Wisconsin, and South Dakota.]
State Fund Mutual Insurance, a company providing workers’ compensation insurance in Minnesota, Wisconsin, and South Dakota, has been found guilty of reverse domain name hijacking in its attempt to snag SFM.com.
The company filed for arbitration over the generic three character domain back in April. It was represented by Peter G. Nikolai, of Nikolai & Mersereau, P.A. Domain name lawyer Ari Goldberger successfully defended the domain name and got the panel to find that State Fund had attempted reverse domain name hijacking:
Complainant has engaged in Reverse Domain Name Hijacking. Complainant withheld information in its Complaint regarding its registered service mark incorporating SFM. Complainant failed to provide any support for its assertions of protectable rights in the mark SFM prior to its 2006 registration of the mark in conjunction with other terms for service mark purposes. This registration postdated Respondent’s 1999 domain name registration by several years and as such should have indicated to Complainant that there was no legitimate basis for filing the instant UDRP proceeding.
One of the interesting aspects in this case is that State Fund Mutual didn’t even have a filed trademark for “SFM”. Rather, it was part of its trademark “SFM. The Work Comp Experts” filed with a first use in commerce date of August 2006. It claimed common law trademark for SFM dating back to 1996.
Andrew,
See this recent case too regarding CollectiveMedia.com domain:
http://www.wipo.int/amc/en/domains/decisions/html/2008/d2008-0641.html
It almost reads as a joke …except it’s not.
It seemed the panel was going to reach a determination of Reverse Domain Hijacking but
they did not add those words to their conclusion.
Excerpt from Complainant:
“The Complainant notes that the disputed domain name was registered in May 2002.
It argues that it should no longer be registered to the Respondent, since it is confusingly similar to a mark the Complainant has used since at least October 2005.”
(Note: over 3 years after the domain was regged!)
“The Complainant also notes that it would be the owner of the disputed domain name but for the Respondent’s registration.”
Was this written with a straight face???
Andrew,
I demand you turn over the deed to your house to me.
I want to live there…and would be…if you weren’t living there.
Patrick
@ Patrick –
It’s odd how the panel didn’t come out and say RDNH, but they basically did.
That’s to reverse domain name hijacking wins for Mr. Goldberger in the span of a week.
“It’s odd how the panel didn’t come out and say RDNH, but they basically did.”
Yes, I know.
Really weird.
Now about that deed… 🙂
Patrick
“That’s two reverse domain name hijacking wins for Mr. Goldberger in the span of a week.”
Mr. Goldberger,
If you are listening,
ReverseDomainNameHijackingKing.com
is available at reg fee.
I know it’s tooooo long so you’ll be pleased to know that,
RDNHKing.com
is also available at reg fee.
🙂
Patrick
The problem with Reverse Domain Hijacking is that those who attempt it have so little honor anyway that the “badge of shame” carries no weight. It’s like blatant cybersquatters who openly trade in TM’s. They ought to feel shame and embarrasment, but have no principles so shame doesn’t exist. A finding of Reverse Domain Hijacking carries no real penalty, financial or otherwise. At the very least, such a finding should result in that organization being forbidden to file a UDRP for 5 years, 10 years, etc.
“The Panel also finds that Complainant has engaged in abuse of the UDRP process by engaging in Reverse Domain Name Hijacking.”
Great. So where’s the penalty?
Although it might seem like a big deal to the domain industry community, “Reverse Domain Name Hijacking” ( RDNH? ) does not mean anything in the real world. If anyone has a high traffic domain, a TM application would be advisable.
That’s essentially one problem with UDRP. As the others have said, RDNH really carries no weight other than just a moral victory or a mere “blot” on the complainant’s record with the provider.
Sure wish ICANN would re-open comments or something on possibly improving UDRP, though I’m not really keeping my hopes up.
Good Afternoon,
Incorrect Company listed
“State Fund Insurance Nailed for Reverse Domain Name Hijacking ”
It seems you article is using our Trade Marked name in your heading:
State Fund Insurance
This is incorrect and causing problems for us
It should read:
State Fund Mutual Insurance of Minnesota, Wisconsin, and South Dakota
We are not connected nor affilates
Steven T. DiClemente
State Fund Insurance
Home Condo Renters Auto
President/CEO: North East and South East Regions 100 Summer St 16th Floor Boston Ma 02110
(617)956-9999 F(617)933-7686
Florida: 801 International Parkway 5th Floor Lake Mary FL 32746
National: (800)241-1151
Steven – “State Fund Insurance” the the company’s name in the arbitration documents. I’ve added an additional message that this refers to the workers’ comp company in Minnesota.