Company gets BiBi.com domain name ‘canceled’.
[Update: The domain name wasn’t actually ordered transferred to Bibi, instead it was ordered “canceled”, so no one really won the case. ]Lamprecht AG, which sells a line of baby products under the BiBi name, has won the domain name BiBi.com from Future Media Architects through Uniform domain-name Dispute Resolution Policy (UDRP) gotten the ‘cancelation’ of an FMA domain name through UDRP. The complainant had lost a case for the domain BiBiBaby.com just a month earlier.
Future Media Architects (FMA) owns over a hundred thousand domain names, but never sells the domain names. It has been subject to a number of UDRP cases but has a winning record. It has successfully defended Jackass.com, EFX.com, and YIT.com.
Don’t think that this case is over yet — FMA has sued in the past when a panel returned an adverse decision, including for LH.com.
In this case, FMA argued that the complainant filed the case with the “true intent was to gamble the relatively minimal filing fee in the hope that the Panel would order a transfer of the Domain Name.”
That gamble paid off, assuming there’s no lawsuit.
FMA said it bought the domain name for a number of reasons, one of which was that it’s a four character domain name. But the panelist wrote that a domain registrant still has to do a trademark search on four character domain names, even if they are registering it for the generic attraction:
…The Respondent simply asserted that it registered the Domain Name because of its attractiveness as a four-letter expression.
That is a completely inadequate justification for registering a non-dictionary word without undertaking at least some bona fide enquiry to determine whether a third party trademark might be identical to the domain name. In the Panel’s view, there is no principle that very short alphanumeric strings are per se “fair game†for domain name registrations, without regard to the good faith of the registrant when registering and using the domain name…
…Thirdly, the Domain Name is not one in respect of which it might have been reasonably considered improbable that some third party might hold an identical trademark. The Domain Name consists of two easy-to-say, repeated, syllables, which phonetically might stand for the letters “BBâ€. In the Panel’s view, the chances of an identical third party trademark being out there somewhere should reasonably have been regarded as quite high, and should certainly not have been disregarded.
George Kirikos says
Actually, the decision was very wacky. The complainant didn’t get the domain name at all. The panelist unilaterally ordered that the domain name be CANCELLED! I think *both* sides are going to appeal.
Andrew Allemann says
@ George – I’ve never understood why WIPO has two different terms for essentially the same thing.
Tim Davids says
Interesting concept George…would be fun to send the name in question to auction and see what it’s really worth to the complainant 🙂
j/k
George Kirikos says
They’re not the same thing. Normally they order a transfer, if the complainant wins. The complainant ends up with the name in a transfer. A cancellation means that the registrar will hit the delete button, and the complainant *doesn’t* get the domain name.
So, the real winner will be whoever catches it if/when it drops.
And presumably the registrar can’t auction it off within their internal systems (e.g. via SnapNames or Namejet). They must actually delete the domain name. However, at a practical level, I expect the appeal by one or both of the parties will mean this name won’t drop.
Andrew Allemann says
@ George Kirikos – wow, you’re right. That’s such a stupid idea that I never really thought there could be a difference. I suspect that BiBi’s lawyers actually requested the domain to be “cancelled” rather than “transferred”, not thinking there was a difference between the two.
Needs new representation says
Elequa needs new legal representation.
The lawyer made a major mistake by not requesting 3 panelists. K&K is a top rated int’l law firm. But, the results are only as good as the individual lawyer’s ability.
I don’t believe he can win in U.S. Federal court. The corp. has too many TMs.
Sorry to see this happen to him.
Unfortunately, we are only at the beginning of reverse hijacking cycle.
George Kirikos says
Andrew: It’s worse than that. I think the complainant *did* ask for a transfer, but the panelist seemed to want to make a long speech, and various other points. See the entire decision.
e.g. “In the Panel’s view, it beggars belief that anyone would acquire a domain name with the intention of developing a website at it, and then leave that domain name in a “temporary” mode for such a period of time.”
Hmmm, maybe he hasn’t seen all the domains Yahoo has been selling off, or that are owned by other large companies that have never been used.
“However, where an entity registers and acquires multiple domain names… and it focuses on valuable four-letter domain names, the onus is clearly on that business to satisfy itself that such domain names are available, in the sense that they will not be identical or confusingly similar to existing third party trademarks. Where registered trademarks are concerned, it is not a matter of great difficulty or expense to search the Registers in major jurisdictions, such as the United States, the European Union’s Community Trademark and Japan.”
That’s BS. The only TMs that matter are where you are located (e.g. if you’re in the USA, you do not have any onus to look at Euro marks). Using that logic, perhaps people registering marks should be doing a search of all domain name registrations, in all countries, before making their applications?
“In the Panel’s view, it does not help the Respondent that there are other parties, apart from the Complainant, who hold BIBI trademarks, or use the name “Bibi” in their businesses or other activities. Rather, the existence of other such parties supports the Panel’s view that the Respondent should have recognized that the term “Bibi” would likely be attractive as a trademark, and be registered as such. The Respondent does not claim to have the consent of any of those other parties, or otherwise to derive rights or a legitimate interest through one or more of them.”
What planet is he on? This is another wild idea, that if a term is common, with multiple marks, that you need permission from some of them? Crazy stuff. The mark is indeed *weaker*. And indeed, this guy doesn’t seem to be aware that new businesses are free to be created in new classes of goods/services, even if their marks are identical to those in other TM classes. By definition there’s no conflic (unless it’s a “famous” mark, or the mark is very strong due to it being purely fanciful, e.g. a made up term like Verizon).
“The remedy of cancellation appears to be seldom used by UDRP panels, at least when transfer is requested by the complainant.” (implies that the complainant did indeed request a transfer)
And then he outlines 5 points why he’s making a cancellation instead of transfer (including delay, other existing marks, etc.).
This is why folks should use the court system, instead of wacky UDRP.
Andrew Allemann says
Wow George, you’re right again. I skipped over that part. Indeed, it appears that the panelist made the decision to cancel instead of transfer.
tom barrett says
Actually, “cancel” is not the same as “delete”. There is nothing to prevent this name from going to auction.
tom barrett
encirca
John Berryhill says
The UDRP term “cancel” does not correspond to any particular action to be taken by a registrar. It is entirely dependent on how the registrar chooses to interpret it.
It used to be that I would pick up UDRP cancelled names to have a bit of fun with them. After that, cancellations died out for a few years, but it looks like some folks didn’t get the memo.
It is a little odd that the Respondent didn’t spring for a three member panel here, though.
John Berryhill says
“The remedy of cancellation appears to be seldom used by UDRP panels”
LOL, yes, because in a lot of instances, the Respondent would re-register the name, and most panelists figured out that it was an idiotic remedy.
chandan says
may be they making april fool 😀
stu says
What gets me why do we domainers have to be forcefully put through WIPO or UDRP,surely it’s against human rights somewhere in Europe,i may have to take this to the European human rights court,i mean to be forced into something which is not a legal representation has got to be illegal in Europe.
George Kirikos says
We had been debating above whether a registrar can interpret “cancel” to mean a re-auction of the domain through their drop service (e.g. sending a name to to NameJet/SnapNames). Just to followup on this topic, it appears Moniker has sent the name to deletion (i.e. bibi.com is now in Redemption Grace Period).
I’m surprise neither side appealed. Should be fun to watch the drops in a few weeks (although, the name could still be recovered from RGP, if someone appeals in court quickly enough).
We’ll get to see how NSI interprets cancel soon, given the recent wooot.com decision at NAF to cancel (instead of transfer).
Andrew Allemann says
Thanks for the info, George. Would appreciate you following up after we know what happens to wooot.com.
George Kirikos says
It’s been nearly a month since the wooot.com cancellation order from UDRP, and the name is still at NSI resolving normally. It’s unclear why…..it might be:
(a) lawsuit/appeal is keeping maintaining the status quo
(b) NSI will wait until the name expires naturally (good for the respondent, as they’ll get PPC at Sedo for almost 2 more years) as its interpretation of “cancel”
(c) NSI will wait until some other date before hitting the delete button (or sending the name to NameJet)
It doesn’t appear the registrar has sent the name to NameJet.com yet, though.
George Kirikos says
I just checked again, and wooot.com went into redemption grace period (on May 25). So it looks like everyone will have a chance to get it in a few weeks.