Generic domain name to be transferred as result of arbitration decision.
Is the term “payback” generic?
Of course it is. It has many potential uses.
Still, a World Intellectual Property Forum panelist has awarded the Spanish ccTLD Payback.es to Germany’s Payback GmbH.
The complainant offered to buy the domain name from the domain owner for a nominal sum, after which the owner said the complainant needed to make a “serious” offer.
The respondent didn’t respond to the UDRP case, but did respond to the complainant’s earlier requests to sell the domain name. And why should a domain owner need to figure out what a .es UDRP case is and how to respond when the term at issue is generic?
Paul Keating says
So, where to start….. How about facts and lessons learned…..rather tongue in cheek.
1. I represented the tm holder (I do this rarely – actually I have only done it twice. I have also been rejected as a panelist by WIPO and CAC. WIPO evidently has me on the bad list because they keep saying they have enough panelists but then keep adding new ones. As to CAC, the rejections is really strange since I had never applied).
Lesson: It really has to be a bad guy I don’t know for me to represent a complainant.
2. What is generic? A term can be both descriptive and a trademark – we have discussed this many times. Here, the TM was not descriptive (or as you say generic – which in TM speak has a different meaning form descriptiveness).
Lesson: Stop misusing terms and remember that just because its in the dictionary does not make it any less of a trademark – remember that small company that sells hand-held phones that everyone has (even John Berryhill has one and it can swim)?
3. I reached out to the domainer months before the complaint and suggested that he strike a deal. I told him who I was and even gave him references in case he thought I was a mole from Verizon. I made 2 offers the last was quite rich. Ends up he should have taken the offer.
I really tried to find out who this person was. I know lots of domainers but the WHOIS did not ring any bells in our systems. I even asked around but no one knew. I introduced myself by email and told him who I was and that honestly I thought he would lose IF he did not have a good reason. I got zero reply.
Lesson: some traps are traps but others are really not.
4. The domainer had not been using the domain at all. He then made the fatal error of changing the page (after my offers) in a somewhat (admittedly) clever way. But he was lazy and copied a picture of Mel Gibson from the trailer of the movie Pay Back.
lesson: Silly thing to have done IMO. If you are screwing around take the money and run. If you are serious then be serious.
5. The domainer refused all offers claiming the domain was far more valuable.
Lesson: all domainers think their domains are worth millions (even me). However, when a domain is making butkiss and you have a UDRP, the LAST thing you do is (a) change the page from what it was (nothing) AND (b) demand a gazillon dollars (reminds me of that George Bush joke about a Brazillion soldier killed in Iraq – how much is a Brazillion asks GM).
6. Domainer claims that the domain is used as an intranet amongst friends. Fine but the problem is that the modified lander seemed to restrict the “friends” to hedge fund managers only.
Lesson: if you are going to be clever then be clever. If you want to do otherwise then focus your time on something that can get you somewhere.
7. Domainer then defaults and files no response.
Lesson: I kept waiting for the shoe to drop. Here he refuses 2 offers – the last of which was more than the filing fee and then the domainer fails to take the time to even repeat his prior emails. What is up with that? Sounds like a silly position to me. Either the domain was worth a gazillion or it was not. If it was worth a gazillion wouldn’t it be worth defending?
8. Domainer pays to renew the domain. The most confusing point of this was that AFTER the default but before the panel decision, the domain was expiring. The complainant tried to renew the domain BUT found that the registrant had already renewed it@!
So, that is where it stands folks. Please take head of the above. If you have a domain and a UDRP hits your inbox do a serious bit of thinking about what the domain is worth and whether you want to defend it. If you think it is worth a Gazillion the treat it that way. If you think it is not worth more than the UDRP filing fee then accept the offer. Either way be smart and don’t pay an extra amount to renew the domain when you have not even taken the time to respond to the UDRP!
BAD facts make bad decisions and bad decisions make bad precedent. Message to all: the TM lobby is winning this entire battle – largely because none of the domainers show up to fight.
Now I know that there is at least one person out there who will hate me. Ahh well, if 3 other people get it it will have been worth the effort.
PRK
Frantisek Mrazek says
Theft is still a theft, does not matter how well you are trying to “explain” it.
Rob says
Paul’s point #1 was rather interesting: only represented tm holders twice, then went on to say that WIPO and CAC rejected him – what’s that go to do with this case? Do I detect a hint of bitterness there, and did that prompt his involvement to try to stir up some trouble?????
Point #2: “just because it’s in the dictionary it doesn’t make it any less of a trademark” Well then, just because it’s a trademark it doesn’t make it any less of a generic, everday, commonly used term.
Point #3: “quite rich offer” I guess we’ll never know what “rich” was. from what i had read it sounds like paul’s definition of rich was a tad over the cost of the filing fee – around $1500? Is that right or wrong? if so, that’s a piss poor offer.
But having said all that it does sound like the holder was hoping to hit mega paydirt and didn’t have much of a genuine claim to and use for the domain. I’m happy when domains go to people who have a genuine claim to them, but at the same time they are not taken away from others who also have a genuine claim but who have less knowledge and financial power.
I’m sure there’s a lot more to this than we’re being told.
Shuwix oo says
Domain has many attributes of property. You literaly own it (unless you don’t pay renewal which is often much lower then property value), you can sell it, you can borrow it, you can rent it.
Only court can take your property unless law defines other authority.
If I ever lose one single domain, I will sue panelist for decision, as he haven’t got law given authority. It’s plain theft.
Only law can set authority of individual or organization to take someones property. Usually, this authority is given to court. And court only acts as representant of government/state in such matters.
Paul Keating says
There are several points in the follow-up comments that need some clarification.
1. WIPO/CAC. I said what I said about WIPO and CAC because I really came at this issue trying to work something out with the registrant. Anyone searching for me knows the types of UDRPs I handle for people. I am even funding a post-UDRP litigation matter in Texas (Parvi.org) because I feel so strongly about it. No bitterness – only trying to explain who I am and where I was coming from in this case.
The point of my comments was to provide some guidance for domainers about what NOT to do when it comes to domain disputes.
2. Theft is still theft. That is not the point. The respondent had clear and close contacts with Germany (home of the complainant). He “used” the domain to list it for sale to businesses who had a trademark but who could not get their domain because it had already been registered. This is a big no-no under the UDRP. I can think of 10 other uses that could have earned him money without causing problems.
3. His claim of use as an email message board for friends could have worked IF he had actually used the domain for that purpose. It was not consistent with the way he listed the domain for sale so he had some explaining to do. However, it was still possible at this point for him to prevail. He could have come up with some email addresses using the site’s mail records or he could have provided a redacted copy of some emails exchanged. All of this could have been used to negotiate a better offer or to even successfully defend the domain.
4. Change of use. The fact that he changed the use of the domain resulted in several fatal errors. (a) he ripped-off a picture of Gibson and the advert for the movie, (b) he included a comment that his email use was limited to hedge fund managers only (he must have wealthy friends ), (c) the change came about only after contact from the trademark holder, (d) he never communicated with me using his “payback” email address. All of this turned his claimed email use from a possible defense to something looking more like a sham.
This is not to say that a change in use is always fatal. However, you need to make sure that the change is explainable and that it does not ruin your defense.
5. Dictionary terms. Yes, terms in the dictionary can be trademarked. Trademarks are granted when the dictionary term is used for a purpose different from the definition (my example of Apple selling computers instead of apples). Just because you have a domain that is a dictionary term is not sufficient. You must be USING the domain in a manner that is CONSISTENT with the defense.
What is descriptive and what is generic. A descriptive term describes an aspect of the nature, function or aspect of the thing. It does not have to describe the entire thing. A generic term is one that IS the thing. An example would be “Fast Cars” (descriptive for selling fast autos) and “CARS” which is the generic term for an automobile. A generic term can never serve as a trademark. A descriptive term can serve as a trademark if (a) it is used in a non-descriptive sense, or (b) there has been enough use (even descriptively) that people identify the term with your goods/services (in the US this is known as a section 2(f) registration).
I agree that there are many problems with trademark registrations and there are many trademarks that just should not have been registered. I just read the NAF case in BESTprintingforless.com (http://domains.adrforum.com/domains/decisions/1366693.htm). This is a good example of a stupid decision. The trademark is used for printing services (descriptive to the point of being generic). It was registered on the principal registry by the PTO under Section 2(f) as being “distinctive” based on 5 years of use. The “evidence” was 2 newspaper articles in Montana – one of which was not even about the tm holder. Sometimes even PTO trademark attorneys are asleep at the switch.
6. Cheap offer. The offer was not so cheap given the domain and the cctld. However, the domainer never came back to negotiate so he will never know if my client would have paid more. When you get an offer, it is best to respond. Most UDRP panelists now agree that responding to an offer is not evidence of bad faith.
7. No response. I really was surprised that there was no effort to respond. While having an attorney working for you is best, preparing a response is not rocket science and a basic reply can be hammered out in a few hours (or less). Defaulting is simply silly. It means you don’t believe in defending what you claim is yours. Worse, it leads to really bad UDRP decisions which are then relied upon by complainants and other panelists to further tilt the balance in favor of the IP constituency and against domainers.
8. As to the rule of law. Sorry to disappoint you all but there is a rule of law. When you register a domain you agree, as a matter of contract, to participate in the UDRP. Contract law is contract law. You can complain all you want that the UDRP process is unfair. If you do complain, then you should work to change it. However, most domainers don’t lift a finger to help the industry. Most default in UDRPs. Defaulting is a guaranteed loss. Statistics show that if you do file a defense you have a fairly good chance of winning. This type of behavior is a shame and the result is rules that are becoming more and more tilted in favor of the IP constituency.
Hopefully, some domainers will take my comments as they were intended – sort of a road map on what not to do.
PRK
WIPOsUCKS says
There is no need to try to convince anyone of why it is a correct decision. Your job as the attorney for the claimant is to help him win no matter what, I’m sure you would be singing a different story if you had represented the respondent, so nobody should be blaming you. It is one of the most ridiculous decisions, it just goes to show that they treat claimants as clients, if there were no claimants there would be no business for them.
Andrew Allemann says
Paul, was the domain ever parked showing infringing ads?
Paul Keating says
Andrew,
We did not see any competing adverts. However, there was a very clear page targeting trademark owners and suggesting that they buy the domain. It was for this reason that we reached out to the respondent to try a negotiated resolution. I will email the pdfs to you.
PRK