Valuable domain name expired earlier this year and now faces UDRP.
The domain name Bespoke.com expired in May. It went through the entire expiration cycle, making it one of the best domain names to fully expire this year.
A bidder at DropCatch.com paid $18,805 to purchase the domain name.
Now that buyer is being forced to defend the generic domain in a UDRP, and it might be against the company that let the domain name expire.
Bespoke Services Group S.A. filed a UDRP against the domain name, and it’s possible that the complainant is the company that let the domain name expire earlier this year. The prior registrant of the domain name was listed as Bespoke Services Corporation SA, and they had a contact email @bspk.com.
BSPK.com was previously registered to Bespoke Travel Atelier in Russia. A Google search for Bespoke Services Group S.A. shows that it operates from Russia.
BSPK.com also expired about the time Bespoke.com did. It’s possible it didn’t get renewal notices because its email services were turned off.
I have reached out to the owner of Bespoke.com to learn more. The owner says it appears it’s the company that let it expire.
I hope he gets a RDNH because I doubt they have a trademark.
I was bidding hard on this one…
Even if they have a trademark…
There is a ton of trademarks on this term, this could be very messy. $20K is a risky drop catch with some much TM action.
No infringement: no domain for complainant.
I agree with what you are saying, but from some recent sketchy judgements you do not necessarily need to infringe to lose your name in this process.
Pretty much all good dictionary terms are trademarked. People should and will not stop buying dictionary domains because of this. All it takes is to be careful a bit and it seems that this owner is.
Haha! If Bespoke Services does win, they should have to refund the poor sap who paid such a hefty price for it…
“Bespoke” is a word in the dictionary. It is a term that is shared among dozens, if not hundreds of other companies in the world. Bespoke Services Group S.A. can not claim they coined the term or are the only people to use this. If the response is filed correctly this should be a slam dunk of a case for the registrant.
Exactly. The whole UDRP system needs to be streamlined in cases where a domain is a common phrase or dictionary term.
In such generic term cases, in order to prevent abuse by Trademark owners who file cases knowing it may be too expensive to defend, they shouldn’t even accept the case unless the Trademark owner can prove blatant fraud or misuse. Considering the domain owner innocent unless proven otherwise places the financial burden on the Trademark owner to prove abuse before the case is taken.
I’ve been vocal about this because I faced several similar cases, including one just like this in the 90s. A big investment group started developing a site called “CouponsOnline.Com”, which they also filed as a Trademark. To me, that’s a generic term.
They let the domain expire before launching it. Oops.
I bought it for $10. They then hired Greenberg, Traurig, one of the biggest Trademark and Patent law firms to force me to give it up within 10 days, based on the fact that they had the pending Trademark and that they originally owned the domain, but let it expire by mistake. Shucks. I still own it.
Two lessons.
1 If you own a domain, but you don’t renew it, don’t complain when somebody buys it.
2. If you register a Trademark for a generic term, you shouldn’t be able to file a UDRP unless you can specifically demonstrate fraud.
$18k was a STEAL for this domain. The Russians will have to pay through the nose to get this after they waste their money on legal fees.
Filing a UDRP here is useless, because they can’t prove both bad faith in registration and bad faith in use.
If they have a valid TM, IMHO the only way they can try to get the domain is by starting a lawsuit and trying to prove the new registrant bad faith in registration.
But this is very hard, since this is a generic (dictionary) term and, if they own a TM, this is probably only for some Nice classes and products/uses.
The lesson here is: keep your domain contacts updated and working! 😀
With the right corrupt panel they surely could get the domain back. With stuff like “Respondent couldn’t have ignored Complainant’s trademark at the time of bidding on Complainant’s expired domain. On the balance of probabilities this panel finds that Respondent registered the domain in bad faith primarily for the purpose of selling it to Complainant” and so on. This wouldn’t be a first
As I said before, you forget that they have to prove also bad faith in use … so IMHO a UDRP is not useful here.
It wouldn’t be a first either for panels to find bad faith use once bad faith registration is found. Also paragraph 4(b) of the UDRP lists several circumstances of which any is sufficient to demonstrate bad faith registration AND use. Never say never with those UDRPs, there have been some incredible decisions over the years, although thankfully they are quite rare and a three-member panel is usually enough to get a fair decision.
I got it, never say never, as you say, but I think it will be highly unlikely for them to get this domain through a UDRP.
IMHO, if they want to have some (small) chances they have to start a lawsuit, and that is very expensive and time consuming … it depends on how much money they can spend to get the domain.
But at that point maybe it would make more sense trying to purchase it from current owner, if he is willing to sell it.
In any case, I’d suggest the new registrant, who, as far as I see, is based in NZ, to get a professional IP attorney.
On the other hand, there is always the possibility that those “stuff” (arguments) you mentioned could be raised by a judge during a trial, in a lawsuit, as I said before.
So, what happens to the owner if he/she wins UDRP and then the company files a trademark lawsuit? What if other owners of the TM file suit as well? There needs to be a better system in place for domain owners.
They loose.
You can pretty much file a lawsuit against anyone and waste your money…
What is cost to defend a UDRP?
It depends. I guess $3,000 to $10,000+ plus the cost of the 3 member panel.
And the cost for a company to file one is what $1500 to $3000 depending where plus legal fees? If one wins they get to keep name with added cost to name plus if company files a TM suit costs dramatically. There is no protection to a valid domain owner. The system needs to be refined.
Nobody cares about the valid domain owner.
They care about the TM holders with the big money and the big lawyers.
These are the companies that pay the lawyers, the UDRP providers, TMs etc.
Companies have even tried to steal domains using UDRP from dead people. They will stop at nothing.
I think the whole system should be revamped so that the domain owner never needs to spend a cent, or even defend itself, unless the Trademark owner presents a solid case (at their own expense) that the domain owner has fraudulent intent.
By pre-screening cases, the Trademark owners would be the only one who pays to file a complaint, which will discourage them from using the expense of defense as a weapon against the domain owner.
In fact, in my opinion, the whole system shouldn’t even need to exist because Trademark owners can already use the existing court system to file Trademark infringement cases for all forms of media, not just domains.
This means that if a Trademark owner files a complaint against somebody, in addition to paying cash penalties, the court could order the surrender of the domain.
I have been vocal about this before, but in my opinion, just because a company owns a Trademark does not mean they can prevent people from owning a domain that contains that Trademark. Trademarks have a very specific purpose, which is to protect a Trademark from fraudulent use or misrepresentation. The main reason a Trademark exists is so that a consumer knows when they are dealing with the actual Trademark owner, and not somebody who claims to be them
A website that does not misrepresent or abuse a Trademark, especially a generic term should NOT have to defend itself, UNTIL the Trademark owner can demonstrate clear misuse.
Only after misuse is clearly demonstrated, the domain owner would then be required to defend itself, thus avoiding any financial burden until a clear case has been made.
If someone owns a name before a trademark even existed for the term one shouldn’t have to defend anything. If the company or companies don’t like the price quoted then they can move on and buy another name or the .net extension or hyphenated .com (which is a joke that it even exists). I’ve owned marks before and understand the whole concept, but you don’t see stock exchanges breaking trades because one successfully speculated on price change due to news hitting the tape that everyone has the same access to or a home owner getting sued for successfully picking the right location to buy a home before everyone wants in that neighborhood. Seriously, the industry and the courts need firm rules on legitimate name ownership.
Amen to that.
In cases where somebody owns a domain before a Trademark even existed there should never be ANY reason for them to defend it.
I’m involved in a case right now for “CasinoCoupons.Com”, a domain I’ve owned since the late 90s. Somebody was just awarded a Trademark they filed in 2013 for the phrase “CasinoCoupons”.
They own the .net and .co.uk version. You have no idea how angry I was at them for even implying that they should get my .Com version of it.
By not having a system in place that Spells it Out Clearly that if someone owns a name before a mark existed no cases can be brought against the owner then every name owner has more risk to the equation than reward unless it is a high quality name with multiple parties interested. Even then it makes it makes domains a less appealing asset to own vs other assets in the world that exist where there are established rules and a ton more liquidity and a known defined risk to the owner of that asset.