Panelist calls out company for trying to breaking “spirit” of UDRP.
Tulsa, Oklahoma payment processor Blue Financial Corporation — which runs Bluefin Payment Systems — has been found guilty of reverse domain name hijacking by a WIPO UDRP panel.
This case was particularly egregious. Blue Financial has a trademark for “Freebird” for “Providing temporary use of on-line non-downloadable software for use in electronic authorization, processing and management of card present and card not present credit card, debit card, electronic check transactions and payments conducted via global computer networks.” It filed for the trademark in 2005 with a first use date in 2003.
The Freebird.com domain name was registered in 1997. The panel noted the impossibility of the domain name being registered with this later trademark in mind and found Blue Financial guilty of reverse domain name hijacking.
A visit to the page shows that, if anything, it is targeting the most popular use of the term — the Free Bird song by Lynyrd Skynyrd.
There are other uses for the domain name, too. Here in Texas we have a burrito restaurant chain called FreeBirds. Writing this story made me hungry. I’ll be right back.
Tim says
Blue Financial Corporation is seemingly another domain thief wanna-be.
Glad you joined the list Blue Financial Corp….you and your Bluefin Payment Systems scheme. Welcome to the domain thief list of attempted domain thefts.
Jon says
I have a feeling these are the same guys who filed a UDRP for 7days.com. In the 7days.com UDRP. they claimed they were a food processing company from Greece. Now that they won the name, that is obviously a lie.
http://whois.domaintools.com/7days.com
http://7days.com
Andrew Allemann says
@ Jon – it is strange that that domain was transferred to a Tulsa company when the UDRP said it was greek. A response would have helped, though.
ppc user says
Jon, I feel your pain.
However, the OK. company is a U.S. sub. of the greek company.
http://www.nonnisfoods.com/facts-about-nonnis.html
Brad says
So what is the actual penalty for reverse domain name hijacking? Without actual penalties these disputes will get more and more ridiculous.
UDRP is not being used now for what the original intention was.
Brad
Jon says
@Andrew – Agree. It was terrible oversight on my part not to have responded. Will never happen again. Meanwhile, the Greek/Oklahoma company is using it for PPC http://7days.com
Oh, well. Good for them; (I guess) they won it fair and square. 😉
Jon
Blutarksy says
From an actual review of the domain history it’s apparent that the domain name was transferred in April of this year as well as in 2007. Transfers are considered new registrations under the UDRP for purposes of bad faith.
“Consensus view: While the transfer of a domain name to a third party does amount to a new registration, a mere renewal of a domain name does not amount to registration for the purposes of determining bad faith. Registration in bad faith must occur at the time the current registrant took possession of the domain name.”
The domain name holder was simply lucky. The arbitrator was either unaware of this, or just didn’t care.
I would refile this case if I were the Complainant.
mnm says
@bluetarsky
that “consensus view” comes from a wipo “guide”.
is it anywhere in the udrp itself?
does the udrp say that a transfer amounts to a registration?
the wipo guide is for arbitrators who need “guidance”.
it’s not binding on any arbitrator.
if the udrp drafters wanted to cover this situation where the name is transferred after a confusingly similar TM is granted (a forseeable situation to any competent drafter), they could include language addressed to it. did they?
maybe “bad faith” is an evolving concept with respect to domain names?
what’s “bad faith” yesterday might not be “bad faith” today, and what’s “bad faith” today might be accepted practice years from now.
should a company consider domain names (i.e. if the name is available) when choosing a trademark or service mark?
do you think in 2005, this company checked whether the domain was available?
why didn’t they file a udrp complaint in 2005?
Butarsky says
mnm:
You are misunderstanding the difference in function between the UDRP and WIPO. WIPO is one of the bodies that interpret the UDRP; the UDRP is not self-enforcing. The UDRP is meaningless until it’s applied to fact patterns in each case.
I agree with you that the concept of bad faith changes over time, it’s called common law. That’s why cases with similar fact patterns are supposed to be decided similarly.
Like it or not, WIPO (not the UDRP) requires as much. You will be hard pressed to find a case that doesn’t cite to other similar cases because that’s how common law works.
As such, when you file a case with WIPO, the UDRP does not exist in a vacuum, as many in the domain industry would like.
There are a dozen or more cases that explicitly state that transferring the domain is considered a “new registration” for purposes of bad faith. Here are just a few for your review:
d2008-1701
d2007-1856
d2010-0246
d2005-0819
d2008-1986
As to why the company did what it did, I have no idea and neither does anyone else. That doesn’t change the fact that the arbitrator was out to lunch.
Andrew Allemann says
Even if it counted as a new registration, it’s clear that the domain name wasn’t registered to infringe on this payment processor. Lynyrd Skynyrd might have a case, but not this company.
Butarsky says
Andrew.
You misunderstand the law. The stricter “likelihood of confusion” standard only applies in a trademark infringement analysis. The standard under the UDRP is “confusingly similar” which gives little deference to the goods/services of asserted by the domainer, especially in cases where the domain displays phrases like “This domain for SALE” which is in itself evidence of bad faith.
Reviewing what I said earlier, if the trademark holder has the money I wouldn’t bother refiling this case with WIPO. I would sue this domainer under the ACPA. A district court in the US won’t make the same obvious errors as the panelist did.
Andrew Allemann says
@ Butarsky – I wouldn’t bother filing a UDRP again, because they usually only re-hear the case if there was something unknown to the complainant at the time of the filing. I’m not sure if the complainant noted in its case the change of ownership, but either way it should have known about it and brought it to the attention of the panelist should they have thought it was important.
I don’t care about “confusingly similar”, that’s a gimme in almost all of these cases. This is a case where the domain wasn’t registered in bad faith, especially to the complainant in this case.