All I can say is “wow”.
We have a new candidate for worst UDRP decision of 2010: Testosterone.com.
National Arbitration Forum panelist Fernando Triana Esq. awarded the domain name to Monsterops, LLC, despite the respondent having registered the generic name three years prior to Monsterops’ using the trademark in commerce. The registrant of the domain name registered it way back in 1995, yet somehow Monsterops was able to snag this generic from him 16 years later.
The entire decision is a joke. Panelist Triana considers the issue that the domain was registered two years prior to Monsterops’ filing the trademark application. (The trademark wasn’t even used in commerce until 1998, three years after the domain name was register, and wasn’t granted until 2004, according to the decision.) But Triana only considered this in the first section of UDRP — whether or not the domain was confusingly similar to a trademark held by the complainant.
The panelist was correct to dismiss this issue for the first section, since the first section does not address timelines. However, Triana then completely ignores the date in deciding if the domain name was registered in bad faith!
Even if the trademark were registered before the domain name, there’s no justification for awarding a generic domain name like this to the complainant.
This decision is an example of what’s wrong with UDRP. If you ever wonder why companies file “long shot” UDRP cases, it’s because they know they can occasionally get lucky like this. The downside of losing a case as a complainant is just your legal and filing costs.
Dave Asmar says
This kind of practice puts a lot of domains in danger. Some kind of action needs to be taken against panelists by a group or organization supported by domainers to avoid this kind of decisions. Every time these go unpunished, the number of such decisions is likely to rise. Can’t the panelist be sued by an organization, maybe on behalf or in cooperation with the parties losing such generic domains with no valid reason. Even if there is a trademark, it is clearly a generic name. This means something like this can happen to any generic name holder.
Mr. Triana is from Colombia. Ironically, Testosterone.co is on sale.
What is alarming IMO is the assessment by the panelist that there is no legitimate use of the domain by the respondent. It seems that ANY use other than web use – even if the domain is used, for example, as a mail server or an FTP server – is grounds for “bad faith”. In other words: always set up a web site even if you don’t offer anything via the web.
Kevin Murphy says
That is indeed an extraordinarily lame decision.
Also quite interesting is the fact that “web services” and the use of “www” seems to be relevant.
The respondent was asked to provide evidence of using the domain, and he replied “We do not and have never had any services associated with the DNS name http://www.testosterone.com. We use the domain for things other than web services.”
And the panelist seems to have found against him partly for that reason.
I wonder whether the “www” was a factor there. It certainly looks like it.
I’m disgusted with this horrible decision! Everyone who reads this should voice their opinion on t-nation.com’s forum.
On the other hand, the rightful owner of the domain did little to “fight” for the domain it appears. What’s wrong with this guy? This is his property, and he should have fought tooth and nail to save it. Instead, he came across as lazy after reading the decision.
This is troubling.
Andy Booth says
Absolutely shocking. It gives hope to any company who want to acquire a valuable generic domain by filing a frivolous complaint. It needs to end soon!
Fernando Triana and Monsterops, LLC just kicked the domain owner in the nuts.
Payback is now a very justified action by the domain owner.
Also, Fernando Triana should lose his job doing UDRP cases. This is the worst UDRP decision I have ever heard of….or at least can remember. It’s scary how moronic decisions like this can be handed out on anyone’s domain property.
Time for the domain owner to file a suit for sure. This needs to be taken to the courts and these seemingly wannabe domain thieves booted in the ass. Monsterops, LLC should be ashamed of themselves trying to make a roughneck land grab on the Net. How scummy !
The short answer is domain insurance with countersuit in the jurisdiction of operation. Maybe a seal attached to the domain will deter grabbers.
M. Menius says
How many more of these bad UDRP’s have to occur before ICANN take the time to review the current UDRP process and the bodies that are rendering these decisions. Maybe there needs to be a separate appeals process.
I honestly don’t think WIPO and NAF give a damn. Is this whole thing a low level money racket or what?
I wonder too if there is a structured, formal training program for WIPO/NAF panelists. I doubt it … because the reasoning and premise behind some of the decisions is terrible. There does not seem to be any kind of internal integrity check whereby obviously bad decisons are called into question by an administrative body.
Investigate NAF says
Senor Triana is apparently from Colombia, only NAF could attracts such scum to bring a few bucks to the company. Maybe things are done differently over there and doesn’t know that testosterone is as generic as a name can be.
IMO, National Arbitration Forum is a criminal enterprise, trying to screw people in order to make complainants chose them as ‘arbiter.’ These bastards were doing the same with credit card disputes until they were forced out. God knows how many people these animals ruined to make a few bucks:
““I am very pleased with the settlement. To consumers, the company said it was impartial, but behind the scenes, it worked alongside credit card companies to get them to put unfair arbitration clauses in the fine print of their contracts and to appoint the Forum as the arbitrator. Now the company is out of this business,
Swanson sued the National Arbitration Forum on Tuesday, alleging that the company–which is named as the arbitrator of consumer disputes in tens of millions of credit card agreements–hid from the public its extensive ties to the collection industry. The lawsuit alleged that the Forum told consumers and the public that it is independent and neutral, operates like an impartial court system, and is not affiliated with and does not take sides between the parties. The lawsuit alleged that the Forum worked behind the scenes, however, to convince credit card companies and other creditors to insert arbitration provisions in their customer agreements and then appoint the Forum to decide the disputes. The suit also alleged that the Forum has financial ties to the collection industry. The suit alleged that the company arbitrated 214,000 consumer arbitration claims in 2006, nearly 60 percent of which were filed by laws firms with which the Forum is linked through ties to a New York hedge fund.””
This is where ICANN needs to clarify the URDP policy to define the “and/or” components needing to be satisfied for a transfer ruling. There are different opinons within the panelists and more and more precedents are being set making it harder to keep control of.
Andrew Allemann says
@ chip – but in this case I don’t think the panelist even considered the and/or argument. It looks like he completely ignored dates in the “registered in bad faith” section.
Investigate NAF says
More on NAF fraudsters (google a sentence for link):
“What if a judge solicited cases from big corporations by offering them a business-friendly venue in which to pursue consumers who are behind on their bills? What if the judge tried to make this pitch more appealing by teaming up with the corporations’ outside lawyers? And what if the same corporations helped pay the judge’s salary?
It would, of course, amount to a conflict of interest and cast doubt on the fairness of proceedings before the judge.
Yet that’s essentially how one of the country’s largest private arbitration firms operates. ”
“Credit card issuers and other large corporations regularly chose NAF as arbitrator for their consumer disputes, which NAF overwhelmingly would decide in the businesses’ favor. Indeed, a Public Citizen study found that NAF arbitrators ruled against consumers and in favor of the corporations 94.7 percent of the time! (You can read more about NAF’s shenanigans here). Corporations had so believed in NAF’s decisionmaking, that they designated the arbitration firm as the go-to arbitrator in the fine-print arbitration clauses hidden in their take-it-or-leave-it adhesion contracts with consumers.”
“NAF presents its service in print and online advertising as quicker and less expensive than litigation but every bit as unbiased. Its Web site promotes “a fair, efficient, and effective system for the resolution of commercial and civil disputes in America and worldwide.”
But internal NAF documents and interviews with people familiar with the firm reveal a different reality. Behind closed doors, NAF sells itself to lenders as an effective tool for collecting debts. The point of these pitches is to persuade the companies to use the firm to resolve clashes over delinquent accounts. JPMorgan Chase (JPM) and Bank of America (BAC) are among the large institutions that do so. A September, 2007, NAF PowerPoint presentation aimed at creditors and labeled “confidential” promises “marked increase in recovery rates over existing collection methods.” At times, NAF does this kind of marketing with the aid of law firms representing the very creditors it’s trying to sign up as clients. ”
Remember, more names these bastards take away from legit domain owners, more business they will get.
Investigate NAF says
Andrew, ICANN needs to have an appeals “court” AND assign arbiter /arbitration co randomly.
This cuts down the NAF scum that to drum up business used to even issue press releases each time they ruled for the complainant (big biz,) which quite close to 100% of the time.
This is a disgrace.
Andrew Allemann says
I just looked up the history of this panelist. He has actually denied many claims — probably more than the typical panelist. I’m just utterly dumbfounded about this one.
owen frager says
Defendant should have hired John Berryhill. Period.When you own a domain of that caliber and come under attack from a trademark holder. The bigger question is how you can sell this “juice” online.
Barry Lebovitz says
Appalling case. Panelist should be ashamed and put behind bars for committing obvious fraud. The only excuse is that Mr. Triana does not understand the English language.
Graham MacRobie says
I agree that this is a very troubling decision. That being said, the Respondent represented themselves in a profoundly incompetent manner. You don’t need to be an attorney to read and follow the relatively simple rules for filing a response (although it probably helps), but the domain owner apparently couldn’t be bothered with even the basic procedural requirements. It’s not a stretch to see how the Panelist didn’t take the response seriously, trademark issues notwithstanding. Lots of blame to go around on this one…
ICANN can’t do anything – they never put the UDRP providers under contract.
Registrants are powerless (no contract with ICANN).
ICANN is powerless (no contract with NAF.
Just another cock-up in a long list. Jones Day will get their multi million dollar legal fees, no matter.
I wonder how much Monsterops paid to Mr. Triana?
What a lame decision…
Landon White says
THE FOLLOWING RULES AND REQUIREMENTS
SHOULD BE MANDATORY:
1. That Panelist/Judges and decision makers are fluent in the oral and written language of English and basic “Generic” terminology and knowledge in language differentials.
2. Posted credentials of all appointed panelists/judges
AND a certification that they have passed required qualifications
have legal training, domain industry knowledge, dictionary skills (ha) to decide DOMAIN ownership.
3. A need for a major financial penalty for filing a frivolous claim and a possible criminal penalty for reverse domain name hijacking in bad faith.
4. The appointment of a impartial U.S.
citizens arbitrary review board for possible…
misjudged Administrative oversight decisions.
5. Total detailed written transparency on any decision and judgment reasons
set forth in detail and posted available online..
6. Basic rules criteria to be established for all case’s and to be satisfied BEFORE the merits of a both sides of a claim are set forth and reviewed.
We, the domainers are like the proverbial frog that got cooked, initially sitting on a temperate waters, however the heat kept being turned up gently and incrementally, the frog did not know that it was cooking because of the gentle rise in temperature. The corporations are out to kick out the ‘punks’ in the internet name business. That’s the only reason why you have these boards. It wasn’t there in the beginning. Companies had to buy even their own names from registrants. They will eventually win 100% of these things.
Frantisek Mrazek says
Their attorney should have known 3-member panel is A MUST in such cases. You can get one scum bribed panelist but unlikely you get two out of three
Landon White says
SIGN THE PETITION
Fernando Triana Esq.
We are watching you, and your numerous spins and unjust decisions contrary to simple evidence presented at UDRP arbitration.!
In order for you to be making such numerous incompetent decisions you have demonstrated your inability to weigh in on even the most rudimentary evaluations at a basic UDRP hearing.
And it appears that other considerations
are involved in your position as a arbitrator.
A petition for your removal is being circulated and will presented with a demand for your resignation as a panelist.
If anyone here in this forum would like to add there name to this petition kindly send a email to E-MAIL: [email protected]
and just your name will be added.
(emails will be kept strictly confidential)
you can do a few things:
1.leave a comment at: http://www.udrpsearch.com/
look for the domain and you will find it.
2. register udrp.name and develop !
NAF needs to be sued, I got screwed by these fraudsters and I will in due course organize a class action.
I am most interested in seeing :
1) how they select panelists.
2) correspondence with complainants & lack of notifications to respondents.
3) Not accepting responses for frivolous reasons.
I hope the owner files a court case like barcelona.com owners and stops the transfer. Fight guy, do not let your domain be stolen !!. Ask for help if you do not have the resources.
@ Investigate NAF …… you forgot to point out how the NAF is owned and operated by a group of shell companies with ties to the BILL COLLECTION INDUSTRY !!!
These guys were brought into the sunlight from under their damp rocks when the credit card arbitration fiasco went down. They were shuffling companies so fast that nobody saw that they were owned by interests in the bill collection industry.
Does anyone really believe that the bill collection industry cares one iota about individuals/businesses if they can wring a measly dollar out of them ???
Crooked, scummy, dirty, greedy sewer rats is all I smell when the NAF is mentioned.
So, the big question is when are we all going to pull together and sue the NAF under the RICO ACT ???
Em john says
An unbelievable decision. Only a few weeks ago MyHealth.com complainant was denied because it was found to be “generic” and that the complainant didn’t meet burden of proof. So what the heck with an even more generic name testosterone.com? That’s ridiculous. It only incites companies to register a company or TM in a domain like THE, LLC and then go after the owner of the.com to claim rights, even though THE.com was a genuine investment. Horrendous decision with no respect for generic words.
How can one register a truly generic dictionary word in bad faith? So i buy airline.com and every flight company that has “airline” in the name can come after me for the name? What ridiculousness is this!? That stinks to high heaven and just opens itself to the uglines of a judge and his/her own subjectivity. A shame, really.
Stupid people in a stupid world, this is a generic domain how can someone get it so easy?
Billion and million dollar domainers and ICAAN dont care about this, what a tribute to the market that made them rich.
Its only a matter of chances until someone else gets caught by the reverse hijackers and the notorious panelist gang.
John Berryhill says
@Deke – You raise an interesting point about ownership of the NAF. ICANN requires information about ownership of registrars prior to accreditation, but couldn’t care less about the ownership of private dispute resolution providers.
I will grant that it appears the Respondent had no idea what he was doing, but should a basic understanding of the UDRP really be a requirement for registering a domain name? There are enough facts on the face of this thing for the panelist to have gotten this right. As many have pointed out, the chronology alone is determinative here as is the obvious fact that the domain name is registered to “Testosterone LLC”.
Andrew Allemann says
The respondent goofed up on his response, but it’s still no excuse.
I may be represented by a bad lawyer for an armed robbery case. But if I was born 3 years after the incident allegedly took place, I would hope the judge/jury would overlook my inept counsel.
elliot noss says
lots of heat in these comments and very little light.
why is there no UDRP reform? simple. it is not the job of ICANN staff. it is the job of the GNSO and no one in the GNSO, as of yet, has put this on the agenda. sadly, the “other side” is very good at putting those, present company included, who might raise the issue of UDRP reform, on the defensive wasting time and effort on other nonsense issues.
this issue is MOST important to all of you.
there are two things that domainers can and should do. first, join and support the ICA. the ICA has a legitimate seat at the table in the ICANN constituency structure and is the perfect party to get this issue on the agenda. second, help the ICA raise this issue through constructive input.
I can promise you that I will greatly support this with my time and influence in the Registrar Constituency.
just do it!
Brett Lewis says
Truly disgraceful decision. Rest of my comments are here:
http://www.trademarkattorneys.com/naf-pumped-up-on-testosterone-com. If there is a movement to reform the UDRP, I’ll contribute.
Registrants can rant and rave at ICANN until they’re blue in the face but it will do little. We have no representation there, and ICANN has zero contract liability with us. We just pay the tax.
A more effective route would be for US citizens to start complaining to their US Rep, and/or Dept of Commerce NTIA.
Or get to ICANN via the only person that can bang heads – the California Attorney General.
Or you could maybe try the ICANN Ombudsman. Ha ha ha ha ha ha ha ha ha ha ha ha ha ha ha ha ha ha ha ha ha ha ha ha ha ha ha ha ha ha ha.
Steroids UK says
what nobody else has mentioned is that the company who won already own “testosterone.net” they gave up using it and went with T-Nation a few years back. This makes the decision all the more silly.
who would you say are the best say half dozen panelists at wipo right now to choose?
who give the fairest and most balanced opinions. mainly to domainers, lol
also, Andrew, you always link to the arbitration forum rather than wipo.
they are the same thing/results yes?
as i searched a guy who made a good decision a few cases back you mentioned and he is not on the list here: http://www.wipo.int/amc/en/domains/panel/panelists.html
this had me scratching my head as he made a good decision in the citizen hawk case you mentioned
grateful if you could answer my query as need a list of the good guys at wipo!
Andrew Allemann says
@ domainer – arbitration forum is National Arbitration Forum — a different group from WIPO.
I think you should start by looking at the list of panelists who find against complainant the most, and then review some of their decisions.