Domain transfer (that didn’t actually happen) resets the clock for registration date.
My Art, a French company that operates the website My-Art.com, has convinced a Czech Arbitration Court UDRP panelist to order the transfer of the domain name MyArt.com.
This is the second time My Art has filed a UDRP against the domain name.
My Art lost a case it filed in 2011 because the registrant of the domain name had registered it in 1996, well before the company had a trademark on the name.
It refiled its case by falsely claiming that the domain name was transferred to a new owner after the first case was decided. The transfer counts as a “new registration”, changing the registrant’s registration date to after My Art got its trademark.
It filed the first case when the domain name was under whois privacy. The domain owner name is now disclosed, but a look at historical whois records shows that it’s the same person who owned the domain when the first UDRP was filed.
Technically, the trademark is for “My-Art”, which jives with the company’s current web address.
Although the domain owner did himself a disservice by not responding to the complaint, I still think this is a questionable decision even if the domain had changed hands. The panelist didn’t even deliberate on the simple fact that this is a generic domain. It’s quite clear that My Art chose the hyphenated domain because the non-hyphenated one was taken. Someone registering a trademark similar to a generic or descriptive domain you registered a long time ago shouldn’t be able place a restriction on selling the domain to someone else.
[Update: this story has been updated to show that the domain didn’t actually change hands. Thanks to Nat Cohen for pointing this out.]
This is domain theft pure and simple.
MyArt.com is a valuable undeveloped generic domain. The panelist found “bad faith” because the domain was not actively used. The “non use” theory of bad faith was developed so that owners of blatant cybersquatted domains could not hide behind non-use as a defense, but it is inappropriate to apply to generic domains such as MyArt.com.
“Non use” may not excuse bad faith when the domain is a blatant cybersquatted domain. But “non use” is not the same as bad faith use when a domain owner could have legitimate reasons for owning a domain, which is certainly the case for a generic domain like MyArt.com.
The panelist also argues that the new owner of MyArt.com registered the domain in bad faith because he must have been aware of My-Art’s trademark and of the previous UDRP decision. Yet there is no evidence that the new owner of MyArt.com was aware of either of these circumstances. Even if he was aware of the prior UDRP decision, that decision found that the prior owner had a right to the domain.
Unfortunately this decision is a perfect example of how the UDRP has been repurposed as a tool to steal valuable generic domains.
Actually – the domain owner is the same as it was under the prior UDRP. It’s just that it was under privacy before, and it isn’t now.
Mark Mikullitz owned the domain as of August 2008, and he is showing as the current owner.
Here’s the Whois record from August 2008.
Mark Mikullitz
Registrant:
Mark Mikullitz
260 W 72nd St Apt 7C
New York, NY 10023
Email: [email protected]
Registrar Name….: REGISTER.COM, INC.
Registrar Whois…: whois.register.com
Registrar Homepage: http://www.register.com
Domain Name: myart.com
Created on…………..: Wed, Dec 18, 1996
Expires on…………..: Fri, Dec 17, 2010
Record last updated on..: Wed, Dec 05, 2007
Administrative Contact:
Mark Mikullitz
260 W 72nd St Apt 7C
New York, NY 10023
Phone: +1.2128730089
Email: [email protected]
Technical Contact:
Registercom
Domain Registrar
575 8th Avenue
New York, NY 10018
Phone: +1.9027492701
Email: [email protected]
DNS Servers:
ns2.hostmonster.com
ns1.hostmonster.com
So the UDRP panelist just ordered the transfer of an undeveloped generic domain that was registered prior to the existence of the Complainant on the basis of no evidence at all of bad faith.
One thing I’m confused about is that when a UDRP is filed on a domain that is under a privacy service, the registrar usually reveals the true owner of the domain. Did that happen in the prior UDRP? If so, did the Complainant refile knowing that the actual domain owner had not changed since the prior filing?
Good research, Nat. The previous UDRP doesn’t mention anything about the owner’s identity being unmasked.
I wonder if this is a case of the registrant having bad contact info. I’ll reach out to the owner.
According to the blog dated January 28, 2014 by Owen Frager, Microsoft owns over 200,000 domain names. I imagine many of them are not used, yet I’ve not found any news of MS being UDRPed for cyber squatting.
One page site is enough to show you trade in domain assets, domains parked or not, that constitutes a business venture. Which is what domain parking is although the life blood of these groups is being cut off without murmur.
if it never changed hands then the udrp result should be invalid..
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