UDRP makes it hard for entrepreneur to start his consulting business.
UDRP mostly gets it right.
It sometimes gets it wrong.
Other times it gets it absolutely, disgracefully wrong.
Consider the case of a Minnesota man who wants to set up a consulting firm. He comes up with the reasonable name Fresh Look Consulting, LLC. So he files for his company name with the state on October 3 of this year. Then he registers the domain name FreshLookConsultingLLC.net on October 7.
On October 31 he files a trademark application for for “FRESH LOOKâ€ in international class 35, under the description “Providing advisory and consulting services in the fields of strategic assessment, executive mentoring, business opportunity, acquisition, divestiture and turnarounds, and brand remarketing and repositioning, on behalf of individuals and businesses, including for-profit and non-profit entities.â€
Next thing you know Novartis AG, maker of the Fresh Look contact lenses, files a UDRP for the domain name.
Any reasonable panelist would look at these facts and understand the domain name registrant wasn’t trying to cybersquat.
First, Fresh Look is a perfectly reasonable name for a consulting company. By adding “consulting” to the domain name it’s clear it has absolutely nothing to do with contact lenses.
Then consider that the person went through the hassle and expense of filing his LLC papers and for a trademark, clearly stating the purpose of his business.
Yet panelist HÃ©ctor A. Manoff somehow found that the owner had no rights or legitimate interests in the domain and it was registered in bad faith.
The only “proof” was that GoDaddy’s site holder page had ads for contact lenses.
C’mon. The guy registered the domain a couple months ago and is clearly setting up his business. His registrar puts a “coming soon” page up with some contact lens ads and it’s evidence of bad faith?
I’m literally dumbfounded by Manoff’s explanation of inconsistency in the respondent’s case:
While Respondent claims to be known by the disputed domain name since it is their company name, this Panel finds it difficult to be true since the company was incorporated only three days before the registration of the domain name. And Respondent’s trademark application was filed almost after one month from the domain name registration. Apart from that evidence, Respondent does not provide further elements that prove it is known by the disputed domain name.
Isn’t it clear he was in the process of setting up his business?
UDRP was designed to be an easy way to settle clear cut cases of cybersquatting. This wasn’t clear cut. It wasn’t even a case of cybersquatting.
This is a case of a UDRP panelist taking a domain name away from someone trying to start a legitimate business.
I hope that Novartis lets the owner keep the domain. I suspect the domain was picked up somewhat automatically for the UDRP. Novartis is protecting its Fresh Look brand — it just won a case for FreshLook.com. I get that. But now that it knows the whole story, and it’s clear this domain won’t be used in any way that can harm the company, I truly hope they let it go.
The bottom line: when setting up a business, do it right. If he left the GoDaddy parking page on, it’s a serious example of misjudgment.
That’s what I don’t like about those domain registrar landing pages. They cause trouble to registrants while the domain is monetized by the registrar. Doesn’t make sense.
John McCormac says
What is really scary is the numbers of unused domain names that are automatically parked on Godaddy’s PPC/holding page. It seems to be a general trend with some hosters and registrars to park unused domains on PPC landing pages but with characters like this individual deciding UDRPs, it is very dangerous for domain owners. There really should be some kind of cluefulness test for UDRP panelists.
David J Castello says
This is not the first or last time a UDRP will be lost because a parked page displayed ads that put the bullets right in the hand of the Complainant.
Agree that this was a hideous decision.
Why is it allowable that Godaddy be able to place their parking pages on customers’s domains by default?
What the heck are you talking about…a “serious example of misjudgment”? The guy apparently followed a very typical pattern of reserving his associated IP; and the fact that he hadn’t yet gotten around to building the site – and in the interim GoDaddy runs relevant ads – isn’t at all indicia of bad faith.
This panelist’s reasoning was seriously flawed – period -, as is yours to lend support to this pathetic decision. But based on the arrogance of your posts, that doesn’t surprise me at all.
First and forrmost Héctor A. Manoff is a moron. How can someone this stupid be a panelist? Leaving the place holder page up is not a serious example of misjudgment. Most non-domainers are not going to know that GoDaddy is going to put up a place holder page full of ads, and that those ads could get them in trouble. You register a domain with GoDaddy and instantly ads are showing. I don’t know how GoDaddy could not be held somewhat responsible. The page is still loaded with contact lens ads. This is not a parked page, so the defendant was not making money on these ads. GoDaddy was. I would be willing to bet that Héctor Manoff does not and did not know this. Yet somehow he is a panelist? ICANN sucks the UDRP process sucks.
So according to this decision nobody ever ever ever in the future can register any domain or start a business with freshlook in it? What an Idiot.
What will be interesting is to see if the trademark application for for “FRESH LOOK” is allowed & I see no reason why it would not. The date October 3 is now in the tram 🙂 roles could be reversed !!!
John McCormac says
All TLDs have a percentage of holding page domains and PPC landing page domains. Many of the larger registrars now automatically point their unused domains to these landing pages. There were a few rulings about domains that had Sedo Parking landing pages where the terms “domain for sale” decided the outcome of the UDRP.
The Parked Page with ads reasoning needs to go away.
The second a name is registered many registrants populate a page with ads that the owner has no control over.
The company’s themselves submit to their ads being displayed across multiple platforms on the internet.
At Parking companies the owner often has very little control even after customizing on what is placed on pages.
In many cases, one doesn’t know how to setup a simple plain html page that allows for one to say “Coming Soon” or plainly “For Sale” with no ads. Last I checked GoDaddy doesn’t allow a customer to have an automated plain page with just the name on it. They should have the choice of customized ads page or no ads on page. That would be great if they did that for the owners of the name.
Just because someone isn’t skilled in html shouldn’t be held against he/she. That reasoning stifles entrepreneurship and the ability for one to strike out on their own.
Did anyone notice that FreshLookConsultingLLC.com was registered the same day as FreshLookConsultingLLC.net?
Is it the same owner? The .com is under privacy?
Also, unless the Consultant plans on being in the contact lens/eyecare space why would this even be allowed to be heard?
It’s a waste of money and time.
At the end of the day the individual should have just picked another name that was available as a .COM. It’s too long for it to be memorable.
I hate to say this but Name.com also parks domains you register with them. It’s always a good practice to point the nameservers to whatever server than have to deal with the mess other entities spill over you.
It’s the evil Registrar’s fault for putting domains on parked pages. It’s a sample of impersonation and fraud. It should have been nipped in the bud at the start, back 15 years ago.
Part of the blame here also goes to the attorney for the defendant Katheryn A. Andresen of Hellmuth & Johnson, PLLC
Same thing happend to me with this same group, I registered a cheap name at godaddy and within a week of registration I got hit, just handed the name over, wasn’t worth the trouble.
Mistake I made was leaving it on the registration nameservers, that screwed me over, otherwise I had a case. Even though I didn’t profit, who is to prove it, UDRP panelists need to educate themselves on this.
Ms Domainer says
I agree with Acro; by allowing the Godaddy landing page to stand with infringing ads, the domainer (albeit unintentionally) set himself up for UDRP trouble.
Shame on Godaddy for allowing this. This enduser probably had no idea that GD was monetizing his domain–GD did its customer a grave disservice.
This is especially sickening when it comes to winning a Godaddy auction; the winner must wait for about a week before gaining control of the domain, during which time Godaddy monetizes the domain with ads, some of which may be cybersquatting.
It would be so easy for a domain owner to redirect his/her domain to a Blogger “Coming Soon” site without ads. It’s free and so easy to do.
But I agree–this decision stinks big time. Technically, the decision might have been right, but the spirit of it is slimeball sleaze.
Andrew Allemann says
@ Ms Domainer – remember this was not a domainer.
Take a look at this guys FreshLookConsulting.com is not in violation, but the .net is, this lawyer is having a field day with this, money in the bank all day long.
Registrar’s need to give the owners right of choice. If not, then someone needs to bring them before a judge perhaps as a class action.
“The bottom line: when setting up a business, do it right. If he left the GoDaddy parking page on, it’s a serious example of misjudgment.”
I was about to post the same comment. When you wish to launch a business on a certain domain name, make sure you setup a proper landing page, especially if your TM could be misunderstood.
Andrew Allemann says
@ Joe and Acro – it’s ridiculous to think that the everyday domain registrant will know to ask for a coming soon page to be taken down. I also doubt the registrant had any idea that “Fresh Look” was a trademark when he registered the domain.
domain guy says
fresh look contact lens is a prior registration on the principal register in good standing.
fresh look is the exact same words that infringe on an existing mark.consulting is not part of the REQUESTED MARK.
however applied to a different class.
THIS IS A LANHAM VIOLATION. TRADEMEARK ATTORNEYS ARE TRAINED THIS WAY.
Now if the applicant included the word consulting in the mark,domain name and requested a different class. the applicant would have a case. otherwise this case was decided correctly using the lanham act..ugly buy true.This is a good education for domainers.
I don’t agree with the panelist’s decision, but if one wants to setup a business properly, the very first thing he needs to do is a bit of research. After all your company name will be the identity by which you and your business will be recognized in the long (hopefully!) term, so checking if your desired name/TM may somehow interfere with someone else’s should be a pretty natural step.
Andrew Allemann says
@ Joe – I’d argue the name doesn’t interfere. He’ll be able to use the ‘fresh look’ name since it’s for something completely different than contact lenses.
Yes, but, as we know, UDRP decisions are not perfect and sometimes are meaningless, especially when cases involve bigger companies and their known brands vs smaller entities (guess which ones will win…).
How is a small business average Joe to know when they register a totally off beat random domain that attorneys are scanning for the parking page godaddy imposes when they register? I mean 10,000 people do this on a daily basis, this lawyer is a eagle who just churns these out day and night. This is really silly, UDRP panel judges have very little education on the parking side. I mean most pages have search boxes, you can input a trademark term search into the box, and show it on the page.
What happens when everything is trademarked.
This guy was in a different business so he was not in the contact lens market. Any reasonable person could figure out fresh look contanct lens is one company and fresh look consultancy is a different company.
A judge would definately look hard at the domain name freshlook.com but freshlookconsultancy.com , come on that is vastly different. Judges are people to and they can see the difference for themselves. Plus the best interest of the people holds weight and seeing if this limits the consumbers choices. So does keeping this guy out of business hurt the consumer? His company wasn’t started yet but on the other hand limiting people from starting businesses by swinging your trademark around does hurt the consumer.
Ridiculous. Sometimes the ‘letter’ of the law is so far from common sense. Reminds me of the Target.org UDRP hearing.
Hector A. Manoff is a partner at the law firm Vitale, Manoff & Feilbogen.
Dave Zan says
They actually do. I just don’t know how Go Daddy’s is configured, like if it allows a user to change DNS while in the checkout page or after purchase.
Perhaps, someone can get an amendment that allows all new websites a 7 day grace period that allows them to put up a Page without ads on them that registrars put up.
GoDaddy has an InstantPage option where one can create a Domain for Sale page which is nice. Even then though there is up to 48 hours where a parked page with ads appear on site as the site propogates and/or takes to the InstantPage.