Lawsuit falsely presumes domain owner is offering to sell the domains. And that’s just part of the problem.
In December I wrote about a UDRP for BidPal.com filed by BidPal, Inc.
I noted that the UDRP decision against the complainant was probably correct, but that BidPal’s lawyer screwed up the research as well.
BidPal, Inc. has now filed a federal lawsuit(pdf) to get the domain name as well as “BidPal” in several other extensions. It also found itself a new lawyer who seems equally confused about domain names. That or he’s trying to mislead the court.
The lawyer, Overhauser Law Offices, holds his hat out as an IP lawyer with experience in domain name disputes. The only UDRP I could find that he did was a
loss on behalf of DISH Network win on behalf of the respondent in a case filed by DISH Network.
OK, let’s back up. BidPal Inc. uses the domain name BidPalNetwork.com. It admits that the reason it does this is because BidPal.com was already registered when it went to register the domain:
Because of Registrant Defendants’ cybersquatting behavior with respect to the Infringing Domain Names, BidPal has been forced to use another domain name. The name BidPal chose as the best alternative available was the far-inferior domain name “www.bidpalnetwork.com”.
Got it. So Bidpal.com was registered already, the company had to use a “fair-inferior” domain name, but it really wants the better domain name that was already taken. That’s part of the reason BidPal lost its UDRP. The three person panel found it wasn’t registered in bad faith as it was registered well before the company even came into existence.
So Overhauser and BidPal turn to the argument that the domain names were renewed in bad faith. I don’t like that argument, but ultimately the company has to make a stretch somewhere to make its case work.
The lawsuit also appears to be both in rem against the domains and against the domain registrant. The company says it hasn’t been able to get in touch with the domain owner, despite the owner responding to original UDRP. (Oh, and this case doesn’t mention anything about the loss in the UDRP, which I always find disingenuous.)
I question if filing in rem in Indiana against domains powered by multiple registries is going to work. Usually you have to file in the registry’s jurisdiction. If you want to get sneaky, go for an in rem in Verisign’s backyard for the .com, then work on the others.
Yet all of this is trivial to the big gotcha in the case, where either BidPal and its lawyer are trying to fool someone or it just didn’t do its research. I’m willing to assume the latter.
Here’s what the lawsuit tries to show bad faith by the registrant trying to sell the domain name:
The BidPal.com website redirects to a “parked” page (a free services offered by GoDaddy to websites which are not actively offering bona fide products, services and/or information). On that page, a visitor is invited to “Learn how you can get this domain [name].” Upon clicking on that link, the visitor is directed to an offer to engage a domain-buying service to acquire the name. An example of such an offer to sell an Infringing Domain Name, presumably made by either Peterre and/or InterMediaOne and/or InterMediaOne-AGB, is shown on the website at BidPal.com’s parked-for-sale page…
This “presumption” is wrong and the lawyer could have figured that out by doing a few minutes of research. GoDaddy places this link on a lot of the parked pages to promote its Domain Buy service. It has nothing to do with the domain owner. The product description itself states that they’ll just try to contact the domain owner to see if they’re willing to sell the domain.
Misleading or just poorly researched, I think this lawsuit stinks.
[Update: the parties settled and the plaintiff now has the domains.]
Will be interesting to see whether there are any differences between the evidence in this lawsuit and the evidence filed in the UDRP .They will of course be less likely to lie to the Court but not out of question.
The analysis in this posting is could be better. The grounds for relief and standards for a complaint under the Anti-Cybersquatting Piracy Act (ACPA) (Lanham Act S. 43(d) 15 U.S.C. S.1125(d)) are different than for a UDRP complaint. You can not compare the two. The rights under ACPA arise out of Federal Law, while a UDRP proceeding is governed by a contract.
In addition, the posting states, “Usually you have to file in the registry’s (sic) jurisdiction.” This is not correct. In fact, I checked the case on PACER, and GoDaddy filed a Registrar’s Certificate, which froze the domain name. In fact, it was filed just a few hours after the suit was filed. The lawyer obviously knows what he is doing and had all his ducks lined up; I’ve never seen a Registrar’s Certificate filed that fast. That is really important, because with an in rem suit, if the defendant learns of the complaint before the registrar is notified, the owner can simply transfer the domain(s) to an offshore registrar, rendering the lawsuit impotent.
Also, note that GoDaddy is not a named defendant in this suit. This is another reason why it was unnecessary to file in the “registry’s (sic) jurisdiction.” Moreover, even in cases where a plaintiff sues GoDaddy, it is essentially subject to personal jurisdiction in every state. (uBid, Inc. v. Godaddy Grp. Inc., 623 F.3d 421 (7th Cir., 2010))
The posting also fails to note that, according to the complaint, many of the domain names were registered long after BidPal began using the trademark.
As for the domain name selling issue, the posting says, “It has nothing to do with the domain owner. The product description itself states that they’ll just try to contact the domain owner to see if they’re willing to sell the domain.” Courts have reached the opposite conclusion. For example, in the above uBid case, the court said, “When customers go to GoDaddy.com and register for GoDaddy’s parked page or cash parking services, they pay a fee with the expectation that they will get what they’ve paid for. At that point, GoDaddy is contractually obligated to commit the wrong alleged by uBID.”
I also note that the Complaint alleges that the domain name owner has supplied false information (The “admin phone” for the bidpal.com registration available on November 14, 2013 shows the number for Washington, D.C. directory assistance. This is obviously incorrect . . .). The ACPA specifically identifies this as evidence of a “bad faith intent.” (“(VII) . . . the person’s intentional failure to maintain accurate contact information, or the person’s prior conduct indicating a pattern of such conduct;”).
This appears to be a legitimate suit supported by a well-drafted, thorough and thoughtful Complaint. It asserts rights under the Anti-Cybersquatting Piracy Act, and should not be confused with a UDRP complaint.
John Berryhill says
“The lawyer obviously knows what he is doing and had all his ducks lined up”
In your unbiased, objective opinion, “SH”?
The lawyer who drafted this complaint hasn’t a clue what he is doing. Given that in rem jurisdiction requires a showing that the registrant is not subject to personal jurisdiction in the district, and in personam jurisdiction requires that the registrant be subject to personal jurisdiction in the district, then pleading both at the same time is pretty amusing.
As noted below, the second half of the in rem jurisdictional requirement – i.e. that in rem jurisdiction can be had wherever the registrar certificate is deposited – has been rendered inoperative in every circuit which has considered that notion of portable in rem jurisdiction. The first half, pertaining to where “the domain name registrar, registry, or other domain name authority that registered or assigned the domain name is located” is based on “location” of the registry or registrar, and not merely whether the registry or registrar is otherwise subject to personal jurisdiction in a suit against it.
“This appears to be a legitimate suit supported by a well-drafted, thorough and thoughtful Complaint.”
Don’t hurt your arm patting yourself on the back. If I can give you one piece of advice, I would suggest that you use your real name when commenting on blogs. At least have the integrity to stand behind your own words.
Andrew Allemann says
While I appreciate you taking the time to comment on your suit, it would be fair for you to use your real name and point out that you’re the attorney who filed the suit, rather than some casual observer. If you wish to “astroturf”, I’d recommend not using your corporate network to submit you comment.
In reading your response, I’m confused about if you know the difference between a registry and a registrar. You put (sic) next to my references to a registry. Did you think I meant to write “registrar” for GoDaddy? I was not referring to GoDaddy. For a .com, the registry (not sic) is Verisign. Typically I see in rem suits filed against a .com domain in Virginia, where the registry is located. The registry will ultimately make the transfer on a court order in that case.
That GoDaddy acted so quickly on the suit is standard protocol.
Regarding the uBid case, that had to do with placing PPC links on a parked page. That’s not what your suit here references with regards to the seller’s intent to sell. You suggest that he is somehow involved with placing that link to GoDaddy’s Domain Buy service on the parked page, and thus he has an intent to sell the domain name. It’s simply not the case. GoDaddy automatically ads those links to promote its service. If you purchase the service, it will simply reach out to the owner to see if they’re willing to sell and at what price.
Now, if the link led to something like a GoDaddy auction listing for the specific domain, then that would show that the seller was accepting offers on the domain name and you might have an argument.
You’re correct that there are some points in your suit that have merit. For example, using false contact information could be a sign of bad faith.
I would think the first course of action for your client would be to submit an invalid whois complaint with GoDaddy. Then you’d hopefully get better contact information and you could try to purchase the domain name.
Andrew Allemann says
Oh, and I know there’s a difference between UDRP and ACPA. I write about them all the time. Same general principles even though standards are different in each one.
Paul B. Overhauser says
THis is Paul Overhauser, who filed the lawsuit discussed above.
I appreciate this blog, as it provides a useful resource for those interested in domain name issues.
However, as with any journalistic endeavor, care should be taken to get the facts right, and opinions should not be characterized as facts.
The above posting states, “The lawyer, Overhauser Law Offices, holds his hat out as an IP lawyer with experience in domain name disputes. The only UDRP I could find that he did was a loss on behalf of DISH Network.”
In this UDRP proceeding, I did not represent DISH Network, but the Respondent, Digital Satellite Connections, LLC. And I did not lose, I won. The National Arbitration Forum dismissed the Complaint against my client. The decision is available here: http://domains.adrforum.com/domains/decisions/1504221.htm
I will leave it for others to judge the merit of the above article. I believe in free speech, even if results in some misinformation on the Internet.
Paul B. Overhauser
Andrew Allemann says
I apologize for that error and have fixed it.
Paul Iverhauser says
John Berryhill says
The comments above on jurisdiction are not what is reflected in the Complaint.
As far as the “registrar certificate” goes, the Complainant references the “in rem” part of the statute – 15 U.S.C. § 1125(d)(2)(C)(ii) – as part of the jurisdictional pleading.
What the attorney probably does not know is that every circuit which has considered the question of importing jurisdiction into a judicial district on the basis of a “registrar certificate” has rejected that idea. In effect, that particular passage of the statute has been rendered inoperative. e.g. Mattel v. Barbie-Club.com, Docket No. 01-7680 (2nd Cir. Nov. 7, 2002).
The jurisdictional claim here mixes apples and oranges. Merely because the registrar might be subject to personal jurisdiction in a district does not render the domain name properly subject to in rem jurisdiction in that district, nor does it render the registrant, without more, subject to jurisdiction in that district.
And, if the registrant is subject to personal jurisdiction in that district, then you cannot combine that with a claim for in rem jurisdiction. One of the requirements of in rem jurisdiction under the ACPA is that the registrant *NOT* be subject to personal jurisdiction in that district.
The attorney responsible for this collision of ACPA sections might do well to Shepardize the Mattel case cited above, because it has been uniformly followed in rejecting claims of “portable jurisdiction” on the basis of the registrar having issued a registrar certificate for the name.
Domainer Extraordinaire says
There is no shortage of clueless lawyers willing to work for thieving clients.
Domainer Extraordinaire says
And Andrew I appreciate you bitch slapping this clueless lawyer.
The lawyers need to get a clue.
Andrew Allemann says
Case settled. Domains transferred.