Law firm found guilty of abusing UDRP.
It’s bad enough when anyone tries “reverse domain name hijacking” through domain arbitration. It’s worse when the culprit is a law firm.
But Bin Shabib & Associates of Dubai tried just such a stunt, filing a case for BSA.com. A three person National Arbitration Forum didn’t buy it.
Bin Shabib & Associates argued that it had rights to the term BSA on the basis that it has filed a trademark application in the United Arab Emirates. As further evidence, it provided copies of its letterhead using the BSA mark an its web site (currently BSA.ae).
According to the respondent, here’s how the pre-UDRP correspondence between the two parties took place:
Respondent had no knowledge of Complainant until receipt of a September 23, 2009 email stating that Complainant had “full rights over the domain bsa.com†and demanding that Respondent “vacate or transfer†the domain to Complainant. The same day, Respondent emailed stating “The domain bsa.com is not for saleâ€. The next day, Complainant insisted, stating “I need to buy the subject domain due to email project work I have to do†and asking for a price. Respondent replied the same day stating “the domain is NOT for sale for any amountâ€. Complainant persisted with another request on September 24 to which Respondent immediately replied “Please stop sending us emails, we told you clearly twice already the domain name is not for saleâ€. Apparently not satisfied with taking no for an answer (twice), Complainant file the instant UDRP.
The respondent had purchased the domain name for $17,850 earlier this year at NameJet.
The panel found that the law firm had no rights to ‘BSA’, and that it was guilty of reverse domain name hijacking. The respondent was represented by domain attorney Paul Keating.
Andrew,
What are the penalties when a complaintant is found guilty of guilty of reverse domain name hijacking?
@ Lance – nothing, other than it’s harder to win a UDRP in the future
Even though the domain owner won, he lost.
He lost time and mental energy.
And had to spend money on legal fees to defend his domain ownership.
@ Domain Investor – in fact, when the respondent requested RDNH, he stated that it wasn’t fair the complainant could file this case for $1,500 which cost him $5,000 to defend.
There are no penalties of consequence. It’s past time that a UDRP Reverse Hijacking finding result in financial penalty. All parties have to agree with this in principle as there is no justifiable dissent that anyone could/can offer. It should have been implemented long ago.
At a bare minimum of fairness, complainant should pay the respondent’s time and legal expenses. And complainant should bond this amount in order to file the UDRP.
Actualy the defense cost $9,500 + $1,500 for 3-member panel, dunno why they wrote there ony $5,000
@ BSA – OK, even worse.
Andrew, In the “would you hire them as your law firm” category………. They had only an application but no registered tm. To support their claim for the mark they also provided a copy of a confidential memo they had written to their client about a very public real estate dispute. Not something that bestows confidence.
“they also provided a copy of a confidential memo they had written to their client about a very public real estate dispute”
Wow.
they may try for USA.com soon :p
as usa stands for united saudi association lol 😀
“It’s past time that a UDRP Reverse Hijacking finding result in financial penalty. All parties have to agree with this in principle as there is no justifiable dissent that anyone could/can offer.”
The answer to this question has remained the same for years:
Why have a financial penalty against UDRP abusers in the UDRP, and no financial penalty against cybersquatters?
The domain registrant can go after the UDRP complainant on a tortious interference theory, among others. Typically, this sort of claim will settle long before it gets to court, since having a UDRP panel find that the complaint was an abuse of the process is pretty convincing evidence that it was an abuse of the process.
Just because you don’t see something happening is not an indication that it isn’t happening, and that’s about all I can say about that.
“Why have a financial penalty against UDRP abusers in the UDRP, and no financial penalty against cybersquatters?”
But there is (maybe). A UDRP finding of bad faith is a factual determination. The only recourse under the UDRP is by way of proceeding challenging the result under 4(k). By submitting the complaint the complainant must agree to the jurisdiction of a “mutual jurisdiction”. An MJ is either where the respondent resides or where the registrar is located. In cases where the MJ is in the US, the respondent may be able to file a claim for tortious interference, conversion, etc and assert the UDRP and other costs as a form of damage. It would be nice to see this occur and depending on the MJ it could even be a small claims action provided the local rules allow for foreign defendants.
Paul, I agree. I also believe that ICANN Policy should institute some sort of Rule 11 standard. That would at least put some limits on how far complainant’s attorneys are going these days and make them pause before they file frivolous complaints because they are too greedy.
“An MJ is either where the respondent resides or where the registrar is located.”
Ah, thanks Paul… if you see her, could you tell her to come back home?
This is a big problem that’s going to get bigger if ICANN doesn’t do what we all know has to be done. Reverse Domain Name Hijacking needs to have a penalty or companies will just keep buying the $1,500 lottery tickets…
We should all get involved in ICANN. The UDRP rules committee was stacked with trademark holder interests last time.
And we need to push Congress to amend the ACPA to explicitly provide for statutory damages for RDNH, in addition to attorneys fees. Some district courts have awarded damages. The Federal court in Arizona seems hesitant.