Jewelry giant goes after guy’s last name.
Tim Gordon registered Gordons.com back in 1995. It was an obvious domain name for him given his family’s last name.
But in 2011, more than 15 years after he registered the domain name, a Zale Corporation subsidiary that runs Gordon’s Jewelers filed a complaint with National Arbitration Forum to get the domain name.
Tim Gordon just won the case. The single person panel ruled that Gordon has rights or legitimate interests in the domain name (duh) and that it wasn’t originally registered in bad faith (no kidding?).
To be fair, Mr. Gordon started playing around with the domain lately to take advantage of visitors who were looking for the famous jeweler. He set up parked pages with DomainSponsor.
He claims he didn’t think about doing this until a representative of DomainSponsor contacted him and suggested that he use the jeweler template “because that is one of their top revenue producers”.
There are some other aspects of his response that probably draw his defense into question. Had he hired a lawyer he would have answered the complaint better. But the end result is he won.
Owen frager says
I’m hoping that someone like root orange will “condoize” surname domains. HUGE yet to be tapped potential like 64k prospects for frager and that’s the most uncommon name you’ll find.
M. Menius says
“a representative of DomainSponsor contacted him and suggested that he use the jeweler template …”
How incredibly stupid and irresponsible of the DomainSponsor rep to suggest such a thing. After everything that has transpired in the Domain industry, how could an industry insider be so ill-informed. Amazing.
This is the kind of blatant TM abuse that draws the vitriol of the business world.
DomainersChoice.com says
how is it a TM abuse, it is his last name. He registered the domain 16 years ago, so he should be allowed to monetize it and if ads show up which are in competition with the jeweler, so be it.
Estufas says
It sounds like Zales.com should change their name to Steals.com .
What a big blatant attempt at a domain theft by Zales . Zales.com and Gordons Jewelers customers should be concerned b/c if they try to steal or rob a domain name, who knows how hard they try to steal and rob their own customers.
Zales and Gordons Jewelers are theives IMO. It’s just dirty, bad business.
I won’t be buying from them ever again. I don’t do business with robbers.
Andrew Allemann says
@ M. Menius – I wouldn’t say Mr. Gordon has full credibility…so I wouldn’t assume his is how it went down with DomainSponsor.
Chip says
They did get it right when they refused the transfer via a UDRP but Tom Gordon may very well still lose the name and be liable in court for TM infringment. What this case does demonstrate is that UDRP are to be used to simple and easy disputes. The courts have always been the proper option for most TM issues and redress.
shell scheme says
sounds like a ‘smash and grab’ attempt
pun intended!
fines should be in order for the complainant in situations like this.
reverse hijacking label and a 6 figure fine to boot imho
Steve says
@M. Menius
Exactly- totally agree. If I owned Davidson.com and started running harley ads on it I would expect BIG PROBLEMS.
No brainer.
The provider who suggested the ads for the site should be held partially liable if it goes to a real court and damages are awarded, I would hope.
How about when you buy a domain and don’t set anything up on it for a while but the company you registered it with starts dropping trademarked parking ads on it?? Should they be liable?? They better be.
It’s unfortunate that this is still going on so much.
Mansour says
What is the average cost to hire a lawyer to defend you in a UDRP case? any one can say or know.
M. Menius says
@DomainersChoice – “how is it a TM abuse, it is his last name”
If I’m reading Andrew’s post directly, he specifically chose jeweler keywords so that Gordon’s ads would be displayed using his domain name. You cannot create a false association to an established trademark for the purpose of exploiting (profiting from) that company’s trademark.
If your last name is McDonald, you can do lots of things with McDonalds.com, but you cannot deliberately mispresent to the public that you are McDonald’s Restaurant.
@Andrew – I see. Maybe his version of the story didn’t happen exactly as claimed. I would hope that an indutry pro would know better than to suggest this.