Santa Monica loses UDRP for IAmSantaMonica.com.
Remember that guy Stephen Webb, who started showing up at domain conferences a couple years ago promoting his “Iamcityname.com” and “WeArecityname.com” domain names? He had a bit of success, striking deals with a couple cities and even selling IAmSeattle.com to the Space Needle in Seattle.
But one former client apparently didn’t understand the meaning of “lease”.
Santa Monica Convention & Visitors Bureau entered into a lease with Webb’s company for the domain name IAmSantaMonica.com. When the lease ran out and Santa Monica didn’t renew it, Webb rightfully removed the visitor bureau’s web site. He offered to extend the lease or sell the domain name. It’s kind of like when an apartment lease runs out how the landlord gets to keep the apartment and rent it to someone else.
Claiming trademark rights to the domain, Santa Monica filed a UDRP with National Arbitration Forum.
In a split decision, the panel decided in Webb’s favor. Amazingly, the panel decided that Santa Monica had trademark rights to was confusingly similar to “I Am Santa Monica”. This seems to fly in the face of everything I’ve seen with geographical locations, and I hardly find “I am Santa Monica” to be confusingly similar. It’s very different from “IamCocaCola.com”.
Certainly Webb’s registration of thousands of similar domain names also shows that he wasn’t targeting Santa Monica.
You can read the decision here.
This article edited for clarity; see comment #20.
That serves Santa Monica right. They should be punished for their stupidity. First the name is ridiculous, and then the leased it.
I am going to contact them and see if the are interested in leasing WeAreIdiots.com.
Rob Sequin says
If I was him, I would post the document on iamsantamonica.com
2). a majority of the Panel finds that Complainant has failed to meet its burden of establishing that Respondent has no rights or legitimate interests in the domain names, and 3). a majority of the Panel finds that the domain names were registered and used in bad faith by Respondent.
I thought the panel had to stop when they declared a negative. Now, with #3, he has been declared to have registered domains in bad faith and that might come back to haunt him in the future.
I wonder if the contract was not written well enough to protect the owner from such a stupid claim by Santa Monica.
David J Castello says
A very strange ruling, indeed. The panel seemed to ignore previous rulings about geographical domains not being trademarkable (in this case, servicemarked), but they went with Webb on his right to use the domain and not using the domain in Bad Faith. Panelist Sorkin’s name rings a bell. Was he part of other notable decisions?
Andrew Allemann says
David – here are the cases Sorkin has been on.
Andrew Allemann says
David, Sorkin was actually the “good guy” on LH.com and dissented with the other two. He wrote:
“I respectfully dissent. I simply do not believe it is likely that Respondent’s reasons for acquiring the disputed domain name were related in any way to Complainant or its mark, and therefore would not find that the domain name was registered in bad faith, as required by Paragraph 4(a)(iii) of the Policy.”
David J Castello says
Yes, he was part of the CityOfDearborn.com decision in which the name did not transfer to the City of Dearborn: http://domains.adrforum.com/domains/decisions/99602.htm
Andrew – how is it a split decision? It looks like all 3 panelists agreed on the decision.
“Panelists Professor David E. Sorkin, Paul M. DeCicco, and David P. Miranda, Chair, concurring.”
I don’t see any dissent.
Andrew Allemann says
Elliot, there was no overall dissent, but they disagreed on two of the elements. So I guess it’s not really a split decision, but there was dissent.
M. Menius says
I think this case further illustrates that city government is often behind the times. Then, when faced with their own mistakes, they try to use government muscle to get their way despite being in the wrong.
We live in the world of domains. Which is largely foreign to them. As evidenced by leasing “IAmSantaMonica” in the first place.
One more comment…this is an example of why California is bankrupt. The decision making process by government leaders (state and local) is just a comedy of errors. They are not smart enough to create their own domain, so the pay Webb with taxpayer money to lease one. Then they lose Visitor revenue because they lose their domain. Then they blow more taxpayer money trying to get it back. Is there no end to the wasteful spending and insanity in California state and local government.
Stephen Douglas says
Stephen Webb. A guy many of domainers made fun of the first time he showed up at the DomainRoundtable 2007 wearing a tshirt with “Iamdomains.com” on it. Tall, David Hasselhoff-looking guy, big smile and lots of dreams about his domains. He didn’t look like the rest of the domain crowd.
Then I talked to him and heard his story. It intrigued me, cuz he had the balls to move forward with his somewhat flawed portfolio of domains. I gave him some free advice as Ron Jackson, Seth Coman, Jennifer from Grassroots.org, and a few others drove around in a taxi van finding the best steakhouse in Seattle. After hearing his pitch at dinner, I saw some possibilities in his weird domain ideology and wished him success.
Later that night, Eric R emailed me and said that the admin of Domainstate was dogging Stephen Webb on a new thread. I checked it out and did my thing in answering derogatory comments from “domainers” who weren’t at the event and never met Webb.
Biggest post thread on Domainstate for at least a year or two. Cuz they HATE me there! heh heh… They wanted Webb to fail, and expected him to disappear quickly. I took a stance on soft ground to defend him, and earned the infamous title “Jude 2”. I took that as a compliment, actually.
Doesn’t look like Mr. Webb is an insignificant boob now, does it? Why? Because HIS UDRP is making all the geo domain owners sit up and focus on that doggie treat that may be taken from them if this kind of UDRP by (ashamed to say, San Diego), is given to the city that failed to nab their own domain. And I’m no attorney, but I can bet that there is no “king” or “owner” of the city of San Diego, other than what they may claim are the “taxpayers”. Uh huh.
All geo domain holders should watch this case, and be prepared for more like it. I have clients who have some of the biggest city domains in the world, and they’re VERY interested in how ICANN is interpreting this case.
Keep up the good work, Mr. Webb. And great article, Dub-A. You even got that Elliot guy to post a comment! 😉
Huw Williams says
Using tax payers money it was worth a try, that’s how Santa Monica probably saw it, just imagine if they were awarded the case it would have opened up a can of worms on a gigantic scale, the case could be used in many future Geo related UDRP notices.
i think there are a few running for the Kaopectate reading this.
I spoke to and saw an “opinion letter” from a well known internet attorney at a show a few years back on this very issue of Geo domains. Not the “IamPodunkville.com” type stuff, but the pure city names. We were going to but one and were advised strongly against it, that this was treading on thin water. he was very adamant that some of these domain “geniuses” trading in this were goin g to wake up one day with their fingers in an indescribable place, AND….that some of these advertisers were not going to be so happy if they read some of this. Forget the Kaopectate, better grab a little Vaseline. lol.
Andrew Allemann says
Brooks – this has mostly been settled over the past decade. There were some challenges — including MyrtleBeach.com — but courts of consistently found in GeoDomain owner’s favor.
One other thing that might be of interest to GEO domain holders. All it takes is a weak case brought against some obscure GEO holder and they lose, to establish some really bad case law that could really upset the apple cart. Any advertiser that gets wind of that, especially some national company and not Elmer Fudd’s local pizza joint, is going to be really apprehensive about continuing in any lease arrangement for fear of liability. Not to mention the possibility of the GEO holder being sued by the advertiser. Not a very secure business model. Many not to pleasant things could, at least theoretically, come out of it. Recovery of any profits like the ones often bragged about on posts. That will be interesting to see a cross examination of that.
Andy….I hope you are right. The problem, as I am sure you know, is that there is always someone trying to take something from someone because they didn’t think of it first.
Thanks for your site. It is a great benefit to a lot of people.
Andrew Allemann says
Brooks – I hope I’m right, too. The good news is the Geo Domain owners are a tight nit group and will come together to help each other if they are ever challenged.
Kristine Dorrain says
A few clarifications from the National Arbitration Forum:
1. This decision was just reissued due to a typo in the finding section for bad faith. The word “not” was missing. This should help the person who wrote comment #2 make more sense of things.
2. This statement in the article: “Amazingly, the panel decided that Santa Monica had trademark rights to “I Am Santa Monica” based on its trademark of the city name “Santa Monica”. ” is incorrect. The panel did not find Complainant had trademark rights in “I Am Santa Monica”. It did find that “I Am Santa Monica” was confusingly similar to the trademark “Santa Monica.”
3. There was no dissent or “split.” The Panel Chair concurred (which means, it agreed with the outcome, but for a different reason).
Stephen Webb says
First off, many thanks to the many open minded entrepreneurs out there in the domain world who have consistently listened to both sides of reason (mine included)and stood up in support(Stephen Douglas and Andrew Allemann in particular).
They have not simply scoffed at my “Iam” and “WeAre” branding concept because it chipped away at the solidity of their “pure” domains but they realized that we live in a very, very big world where many differing ideas can prosper.
Despite the economy, we are blessed that the concept has moved forward in not only the GeoDomain front(WeAreLondon.com, WeAreRichmond.com, WeAreSeattle.com, WeAreSanDiego.com, etc.)but the Concept front as well with, among dozens of others, WeAreSmallBusiness.com was purchased by Intuit/Quickbooks for a very pleasing 5 figure sum). We have on our desks right now negotiations for over a dozen names beginning with “WeAre” or “Iam” to a wide variety of institutions ranging from top marketing and branding firms to Fortune 500 companies to global media companies.
This recent decision will, I hope, help to pave ways for domain owners the world wide in their honest and lawful pursuit of commerce in this exhilarating field of domaining.
Stephen Douglas says
@ Stephen Webb
Bro, I took some major heat for you for a long time on Domainstate.com. I suppose that thread is closed, and a lot of “expert forum members” are wanting to ummm… apologize maybe? Thanks for the recognition here, my friend. I’ll play the piano for you again soon, but be sure we’ve had a few pops of some nice scotch like the last time!
You’re rocking it, and I’m VERY stoked for your insight, hard work, and entrepreneurial spirit regarding domains. You’ve made the naysayers look, well… like they have no balls to do what you did…
Playing it safe gets us nowhere… you didn’t play it safe and you showed some hope for all those domainers with new ideas to push forward, be strong, be smart and know your craft. Continued success to you!
Karen Bernstein says
No doubt, the Complainant shot itself in the foot when it signed the lease and admitted that Respondent had rights in the domain name. It’s good to see lawyers do stupid things. Always makes me feel good even though I’m one of them:)
Gidget Epidy says
It will be interesting to see if Webb and IamDomainNames.com goes after the “Good Will” generated while the SMCVB used IamSantaMonica.com…meaning the web site content and their filing for a trademark of IamSantaMonica. Any thoughts?
The lease language is very clear.
LICENSEE acknowledges that LICENSOR owns the Domain Name. LICENSEE acknowledges that any goodwill generated by its use of the Domain Name pursuant to this Agreement inures to the benefit of LICENSOR, and does not create in LICENSEE any right to the Domain Name, including any trademark rights.