Software company fails to snag USU.com domain. But where’s the beef?
A three person panel at WIPO has ruled in favor of the current registrant of USU.com in a domain dispute. However, in a brief opinion, it failed to consider the issue of reverse domain name hijacking.
The domain name arbitration case was brought by software company USU AG of Germany, which was represented by Hössle Kudlek & Partner, Patentanwälte, Germany. The respondent was represented by domain name lawyer John Berryhill.
Although USU AG was founded prior to the domain being registered, the software company had not established rights to the mark in the United States at that time. Furthermore, the domain’s owner created a legitimate business at the domain. Even if the software company had established rights to the mark in the United States and the owner hadn’t used the domain, it would still be a long shot to prove that a generic, three character domain was registered in bad faith.
USU AG tried to convince the panel that the domain was registered in bad faith because the domain’s owner entered into negotiations to sell the domain to the software company. But the panel didn’t buy it:
Nor can the Panel find anything justifying a finding of bad faith registration and use from the unfulfilled negotiations between the parties over the sale and purchase of the disputed domain name. A 3-letter domain name is a valuable asset and the Respondent was quite at liberty to attempt to sell this asset especially in view of the Panel’s finding of Respondent’s use of the domain name in connection with its business.
But the question remains, why didn’t the panel consider finding reverse domain name hijacking in light of USU AG’s week case? The panel’s decision is particularly brief. Perhaps time was of the essence?
Mansour says
with the value of the 3-letter and generic domain names skyrocketing to 6 and 7 figures, those domain names are becoming more of a target for reverse domain name hijackers than ever before. I am sure that usu.com is an abbreviation for thousands of businesses and services worldwide. It is very hard for anyone to figure out if the domain name he is buying or registering has a trademark in every country in the world. I was very concerned when the owner of ehotels.com which is definitely a generic domain name, was stripped of his domain.
1.To slow down the trend, ICANN should implement a penalty that includes respondent’s cost and legal fees if he wins.
2.Everyone who loses a domain name through WIPO and feels that he has been taken by the panelists, should get an appraisal for the domain name and go to court to request that the complainant pay the market value for the domain name. This will send a clear message to ICANN and WIPO and everyone else that you will not get something for nothing.
Andrew Allemann says
@ Mansour – eHotels.com was a unique case with unique facts…not as cut and dried as it would seem at first.
D says
Someone could do a page with list of all companies who tried (and sometimes even succeeded) a domain name via UDRP
Mike says
I guess entering into negotiations with a TM holder is not bad faith if you have a legitimate business, but not if you’re a domain investor. I wonder when domaining will be considered a legitimate reason to own a domain.
UDRPtalk says
It’s inexcusable that a 3-member panel would ignore the RDNH element requested by John Berryhill.
This clearly demonstrates WIPO’s bias favoring the complainant in order to protect its business model and revenue stream.
Mansour says
Andrew, there is nothing cut and dried anymore. I have received a cease and desist from register.com for a website I have, nextRegister.com, claiming that they own the Term Register, and from eloans.com for the domain name useloans.com, and lately from godaddy claiming that they have found the term daddy in one of my advertising campaigns in China, failing to mention which campaign they are talking about. I believe that the intellectual property lawyers ,representing the powerful trademark holders, feel that they can control the Internet. If you go to the USPTO and search for ‘Air France trademark,‘ you will find that they are registering over 1,000 generic products from diapers to erasers to tickets, every product you can imagine. From Google, ‘The Oxford English Dictionary contains full entries for 171,476 words in current use, and 47,156 obsolete words’. I wonder with 100 million domain names registered already, how will we be able to satisfy the needs of all companies to have domain names in the year 2020. By then there will be more trademarks to claim each and every dictionary word and phrase that anyone can think of.
John Berryhill says
“Perhaps time was of the essence?”
I’ve never seen a 3-member panel that was pressed for time. Panels routinely grant themselves extensions of time for rendering a decision.
The question directly posed to the Panel was that when a domain name has been registered since 1996, and the entire “bad faith” argument turns on circumstances which arose in 2008, then is it not incumbent on the Complainant – certifying its Complaint as “complete” – to address the fact that more than a decade of registration and use transpired before any evidence submitted by the Complainant on the issue of “bad faith”?
It is a question the Panel chose not to answer.
Anyone here can spend a minute or two with the Internet Archive (www.archive.org) and clearly see where this case was going to go. Why should a Complainant not be required to conduct some sort of minimal diligence before making unsupported accusations?
Patrick McDermott says
“and from eloans.com for the domain name useloans.com,”
They are obviously using some type of automated software to search for domains that contain “eloan”.
It’s surprising (or maybe not) that someone doesn’t actually look at the supposedly offensive domain and use some common sense.
Afternic initially refused to allow me to list a domain with Sprinting as it was a TM of infringement of Sprint telecom.
Ebay goes after many domains that contain “ebay” including domains such as ChesapekeBay
which, of course, contains the “ebay” TM.
Ridiculousness has no boundaries.
Andrew Allemann says
@ Patrick – yes, I’ve received something from eLoan before for a completely unrelated domain. When I responded pointing that out, I never heard back.