Small business owner forced to defend his great product-defining domain name.
Last month I was shocked to see a UDRP filed for SteelBuildings.com. I was even more surprised when I saw that the domain name seemed to be in use by a company that sells steel buildings.
I reached out to the whois contact for the domain name, as well as the email address on the website, to ask for details on the complaint. Yesterday, a few weeks later, I received a phone call from John Morgan, owner of Atlantic Building Systems and the SteelBuildings.com domain name. Hearing John’s story made me cringe.
This is a case of a small business owner who was smart enough to get a great descriptive name for his industry being bullied by a $1.35 billion (market cap) competitor.
As a result, the small business owner has a choice of either spending thousands of dollars hiring a lawyer to defend his domain name or spending lots of time learning how to defend it himself.
All for a case that I believe is without merit.
NCI Group, Inc. owns the product-defining name SteelBuilding.com (singular), and now it wants the plural. It filed a UDRP to get it.
John provided me with a copy of the complaint, available here (pdf).
Much of the case hinges on the fact that the whois information for the domain is that of a web development firm that manages the site for Atlantic Building Systems. So technically the web development firm is the respondent.
But it’s very clear what’s going on here. The site is managed by an outside firm, but it’s done for the actual company that sells steel buildings.
If you need proof, look at the whois history for the domain name. John Morgan is shown in previous records. Having the web design company listed as the actual registrant is not a good practice, but it’s clear when you visit the domain name (or view the records in the Wayback machine) that it is owned by a steel buildings company.
Here’s how NCI argues its case:
Confusingly Similar
NCI acquired a company that used the domain name SteelBuilding.com. After years of trying, it was able to get some trademarks for SteelBuilding.com, claiming first use in 2000.
This case would be akin to the owner of Car.com filing a UDRP against Cars.com, the owner of Computer.com going after Computers.com, or the owner of Tree.com going after Trees.com.
Owning the singular of a product name doesn’t give you rights to the plural.
“Steel Building” describes a product. The words on their own are not a brand. In fact, on SteelBuilding.com (annexed to the complaint), the headline reads “Steel Buildings”. It’s used in its descriptive sense. When I googled “Steel Building” (with quotes) today, I got over a half million results — including a Wikipedia page explaining what a steel building is.
If NCI had a trademark for “Steel Building”, then it might have a case here.
That said, some panels are very lenient on the first prong of UDRP, so this prong of the UDRP is a crapshoot.
Rights or Legitimate Interests
NCI writes:
…if the Complainant produces sufficient evidence to suggest an absence of bona fides on the part of the Respondent the burden shifts to the Respondent to explain its use of the domain. Id. In this case, Complainant does not have any information to indicate that Respondent has engaged in use of “steelbuildings.com” in connection with a bona fide offering of services before notice of a potential dispute.
I’m sorry, it doesn’t have any information to suggest this? Here’s what you see when you go to SteelBuildings.com:
It’s true that the respondent, as in the web design firm, doesn’t sell steel buildings. But it’s pretty damn clear that its client does and is using the website to promote its business. It’s worth noting that the complainant included a copy of the SteelBuildings.com website in its annex.
NCI points to a previous UDRP in which a company filed a UDRP against its web design firm after the web design firm held the domain hostage, suggesting this is a “similar case” for this purpose. That seems misguided.
Registered in Bad Faith
NCI doesn’t really offer any evidence that the domain was registered in bad faith, only that it was somehow used in bad faith.
Respondent does not offer any goods or services in connection with the domain name “steelbuildings.com” and all circumstances point to the fact that the business it purports to promote, Atlantic Building Systems, does not exist.
Anyone who visits the site would think it offers goods and services for steel buildings. NCI’s claims of the business not existing are based on abandoned trademark filings undertaken by the respondent.
It’s pretty easy to assume a business no longer exists if you don’t really want to find it. But just using a simple piece of information from the abandoned trademark applications – the name “Atlantic Building Systems” and the applicant’s name, I was able to quickly see that the business appears to exist and the relationship between the company and the actual registrant of the domain name in whois. Just do a Google search and one of the first results is John’s LinkedIn profile, along with an endorsement for Derrick Bradshaw. It’s Bradshaw’s company that’s in whois and is listed as the respondent in this case.
If the 2003 trademark filing, the LinkedIn profile, and the many years of archives in Wayback are some sort of cover for a non-existent business, then this is one of the most elaborate and long running schemes I’ve every seen.
It’s kind of ironic that NCI points to a trademark notice of abandonment as evidence that a company no longer exists. After all, the company it acquired abandoned multiple trademark applications for SteelBuilding.com last decade. Surely that wasn’t because it no longer existed.
Assume for a second that Atlantic Building Systems no longer exists. This trademark filing would seem to indicate that it existed at one time. So the domain clearly wasn’t registered in bad faith.
NCI concludes its argument that the domain was registered and used in bad faith by noting:
Similarly here, there is no evidence that Respondent is using or preparing to use the disputed domain in good faith. Indeed, there is no evidence that Bradshaw [the web developer] has ever sold steel buildings in any capacity. If, in fact, Bradshaw registered this domain on behalf of another entity, that entity either never existed or ceased to exist. While the disputed domain does resolve to a website, upon information and belief, that website is not monitored and promotes a business that either never existed or no longer exists.
I wonder how the panel will react to “if, in fact” it was registered for the client. I think that’s pretty obvious.
Even a win is a loss
NCI, a huge publicly traded company, has hired big guns for its case: the law firm of Bracewell & Giuliani. (Yes, that Giuliani.) But that doesn’t mean the firm has a particular expertise in UDRP. I found 7 UDRP cases the firm has filed since 2006. It has a 4 and 3 record. One of those losses was an egregious case against a widow. In another, the complainant was found guilty of reverse domain name hijacking in a case against Telepathy.
Assuming the UDRP panel doesn’t go rogue in this case, John will win. But he will still lose.
John has decided to defend the case himself. After talking with him for about 15 minutes minutes today, it was clear to me that he’s a sharp guy. He’s researched UDRP and understands the nuance, such as the benefits of selecting a three person panel.
Still, it’s a lot of work. John has been in the metal building business for about 15 years, and he’s an expert in it. Now he’s having to spend time learning about domain names and responding to this complaint when he should be working on growing his six-employee business.
If he wins, and even if he gets a charge of reverse domain name hijacking, the complainant won’t have to pay him any penalty.
One of the big lawyers should help this guy out, the goodwill on the pro bono work would be well worth it. Plus if he lost this case, it would have very dramatic effects on many generic domains.
I do two or three a year at no charge in egregious circumstances, and quite often consult with DIYers, as do other attorneys in this field. Other than a personal feeling of satisfaction, which for me is sufficient, there is no tangible upside to it. An incidental benefit to the community is preventing bad decisions.
In the case of businesses, such as this one, many overlook that their business insurance may include coverage for “advertising injury” or similar claims. That has been interpreted in some instances as covering UDRP expenses. But in a commercial context, the proposition is “some guy is making money and he’s in a dispute with some other guy who is making money” and one is granted the opportunity to forego paid work in order to help other people make money. It’s not an attractive proposition. All businesses face legal claims of various sorts as a cost of doing business. But, yes, if I didn’t have to make a living, I’d do this stuff all day for free, as would the other attorneys who enjoy this type of work.
“That said, some panels are very lenient on the first prong of UDRP, so this prong of the UDRP is a crapshoot.”
Look at Richard Page’s shocking dissent in businessforsale.com, as one example. He would easily find a trademark in SteelBuilding.com for steel buildings. He has absolutely no conception of distinctiveness as an element of a trademark claim, and he is certainly not alone among UDRP panelists who buy whatever a complainant is selling – even where it is demonstrated that a complainant is being intentionally less than honest.
It’s also a tax deductible business expense.
It would be helpful for community to know how much it cost you to hire you generally for single domain UDRP case. As each case is different, cost is not same, but range of such expenses would be good enough to understand what the expectation should be. I hope you don’t charge based on domain value, or do you..?
No, I normally ask anonymous people on blogs what I should charge, and go with that. Cristin especially enjoys the suspense of not knowing what her paycheck is going to be.
What anonymous people? Domain ownership is not anonymous in most cases… I am not sure I understood. Let’s say, a domain owner of DOMAIN.COM contact you with request for representation. Then you go to blogs and ask other people what you should charge for representation in DOMAIN.COM case?
You know, Mike, that’s actually an intriguing idea. Have someone post the UDRP disputes and a poll on “What JB should charge for this one?” Then, everyone who was in the poll can donate their time to earn money to pay that fee. I’ll bet $0 would be a popular choice. Then we’ll have everyone vote on what my heating bill should be, and try to get my oil company to go along with this plan.
There needs to be a mechanism where Lawyers & Law Firms are publicly barred from bringing any further cases if they are found guilty of bringing UDRP into disrepute by putting defendants to unnecessary costs through accepting fees for cases with no prospect of success.
Good luck John but you REALLY should use John Berryhill or Ari Goldberg. It’s worth it.
Insanity! NCI is PATHETIC, imho.
A large law firm or a superstar domain lawyer should help John out.as mentioned pro bono. They should proceed to a REAL COURT and sue them a new a$$hole.
I sell school portables and fell into the industry after we used one for a cottage. People started asking “where did you get that?” I thought gee maybe I should sell them so I checked to see if SchoolPortable dot com was available. It was!! So for $10 I walked into a multi million dollar industry. I then checked to see if SchoolPortables dot com was available. It was also!!! It is unbelievable that these huge companies making these expensive buildings couldn’t figure out the value of these GENERIC domains when they were available to HAND REGISTER. They should fire EVERYONE in their marketing departments.
I’ve sold over 1 million in school portables and used classrooms ( I have those names as well). Crazy.
Maybe domainers should pool some $$ to help John ATTACK NCI in a real court. UDRP IS A JOKE for allowing this to even happen and this case proves it.
Best of Luck John!
Andrew- excellent reporting. Thanks for highlighting this issue, and the harm that abusive UDRP filings cause to small businesses.
Highway robery at its finest
“it was able to get some trademarks for SteelBuilding.com, claiming first use in 2000.”
But those are “2(f) in part” as to “steelbuilding.com” with a 2(f) date junior to the respondent.
“Now he’s having to spend time learning about domain names and responding to this complaint when he should be working on growing his six-employee business.”
It’s a question of how he values his time, and the potential downside to his business of losing. If I needed a steel building, I doubt I’d spend my time learning how to build one in 20 days.
John told me he researched the cost of hiring a lawyer and his numbers were much higher than I think. Am I correct that a typical case is handled for around $3k-$5k?
I have no idea what other lawyers quote on these things. Around $5K is, I guess, “typical”. This case has a few non-obvious wrinkles to it, involving the 2(f) in part status of the textual component of the complainant’s mark, which takes a fair bit of explanation to a panel (see, e.g.. petexpress.com).
If the facts of the case are as obvious as you have it laid out, NCI Group is doing considerable damage to their reputation here. If they really want the domain name they should act like a reputable organization and make an offer to purchase it. I agree with Adam that given the quality of the domain as well as the importance of it to John’s business, he should hire a professional given all of the frivolous UDRP’s that have been decided incorrectly…
Once they’re done fighting off the UDRP, I hope they spend a couple of extra thousand to redo this horrid web site.
Unfortunately, just by visiting SteelBuildings.com I don’t get any impression that it’s truly a business: Home and About us pages share the same minimal info. Photos section has small snapshots of unidentifiable structures, most of which don’t even resemble a “steel building.” News has nothing related to any activity and there is no phone number anywhere. For a great generic such as this one, they’ve done a pretty bad job developing it.
It looks as if they do fairly large scale projects and are likely referred by sophisticated designers, architects, and project managers. People often mention that my web site – page, actually – is a piece of crap. They’re right! People who hire me know who I am and what I do, or are referred by others who do. If you need some kind of “sales job” from me where I tell you how awesome I am, that I never lost a case, and what an impressive resume I have (I mean, hey, how many lawyers earned the “perfect attendance” certificate from Mrs. Mills’ third grade class!), then you are likely not the type of client with whom I’m interested in working.
I am a big fan of law firm web sites, and I am simply enthralled by how awesome everyone else in this profession thinks they are. My favorites are the ones who tell you “In addition to his practice, Bob is an avid swimmer.” Oh, really? Hey, Bob, I’m not paying you to float around the pool! Every law firm web site should have a picture of the firm’s marble lobby and artwork and say, “Just look at what our clients paid for already! Imagine what you can buy us!”
Most of our business comes from Clients who don’t want their “steel buildings” to look like steel buildings, we satisfy.
John
It’s quite unusual to visit a commercial website where there’s no contact phone and address.
Even if the domain name was owned by the web firm the complainant would be able to prove that the respondent has no legitimate interests.
Complainant is trying to deceive the panel so this is a clear RDNH case.
Really interesting read, great reporting.
NCI withdrew the complaint and asked the Panel to please do not find me guilty of RDN Hijacking, we had the wrong number.
I am so ashamed that I made it hard to find me, even though I have an open account with one of their division (MBCI) which have graciously given me referrals in the past.
My apologies to NCI for me being so hard to find although the two links “quote” and “contact” go directly to my email boxes.
Yeah, my web page looks like crap and I promise to rebuild it myself, give me a few days, I know that it was a disappointment to NCI as well , I will make it better and and be more aggressive, I hope that I don’t have to hire more people, God forbid, and do more business.
Let me plug Matthew Brown and UDRP POLICE ([email protected]) ([email protected])
They did a fine job Pro Bono for me and did allow me to help with the work that I had started.
I am just the Little Guy who enjoys what he does and tries to tend to his own business but still likes a good fight occasionally. This one was interesting.
Johnl
Congrat’s John,
Hopefully the panel still rules a finding of RDNH as this was a waste of your time and abuse of the system. And big KUDOS to Matthew Brown at UDRPolice.com for helping you out in a major way.
Congratulations John,
I wish I have found this posting prior to me receiving an UDRP complaint. Whomever governs this policy should have a checklist or prerequisites that a complainant must have met prior to being able to file a complaint. Yes, the complainant pays a $1,500 fee. But it’s the respondent that is screwed in either two ways, first if he doesn’t respond he is in default and second if he does opt to respond it almost feels like the burden of proof in on the respond to retort all of the complainant’s claims.
Who pays for the respondent’s time to prepare for a response to the complaint? Or if the respondent opts for legal assistance who reimburses his legal fees if he wins the case (via a denial to the complainant’s claim)? I had lawyers quote me up to $4,000 to file a response in my defense.
As God is my witness, the complainant in the complaint filed a trademark application two weeks prior to filing the UDRP complaint. Claiming that the disputed domain name that was registered in good faith over 5 years ago is infringing on his mark.
One thing that is now always in the back of my head is when my wife asked me, “The guy paid $1,500 to the arbitration company to get this started. While you paid nothing. Isn’t there a conflict of interest? Won’t they lean to the guy who gave them the money?” I’ve cut down more trees by printing out and reviewing previous cases. Sometimes, some of them make me wonder. There needs to be a change in the system.
Sorry to hear about your troubles.
The policy is 15 years old and even then it wasn’t good.
Let me know if you need any help.