Domain bought for $18,805 earlier this year saved in UDRP, but it was closer than it should have been.
In September, I wrote about the domain name Bespoke.com being hit with a UDRP after the buyer paid $18,805 to buy it in an expired domain name auction.
A three person WIPO panel has denied the UDRP, but one panelist dissented and the panel did not find reverse domain name hijacking. I find the dissent appalling.
Originally, it appeared that the complainant may have been the company that previously let the domain name expire. That does not come up in the written decision, nor does it mention that the respondent acquired the domain name in an expired domain auction.
It appears, from my reading of the decision, that complainant Bespoke Services Group S.A. of Switzerland is a newer company. The complainant has an internationally registered design mark from 2013 that includes Bespoke plus a graphic include BSPK, and it submitted a business plan for its company that refers to the domain name bspk.com (which is parked). That domain name doesn’t appear to be even owned by the complainant. I can’t find a company website in Google.
All indications are that this is a business that hasn’t gotten off the ground yet.
The majority of the panel considered this, and the fact that bespoke is a generic term, to find that the complainant didn’t show a lack of legitimate interests, nor was it registered in bad faith.
It did not, however, find Bespoke Services Group guilty of reverse domain name hijacking, stating “Although the Complaint is weak, it appears that the Complainant may have misunderstood the requirements of the Policy, rather than being motivated by bad faith.”
This is unfortunate. The complainant appears to have been represented by counsel. And, regardless of whether the complainant misunderstood UDRP, it still caused the respondent to have to spend money to defend its domain name.
Perhaps the majority of the panel didn’t find RDNH because a third panelist, Nathalie Dreyfus, amazingly found in favor of the complainant. [Update: many people have pointed out that Dreyfus often represents complainants in UDRP cases.]
Think about this for a moment. Would you spend close to $19,000 in a heated domain name auction to buy this domain name with the purpose of selling it to a little known company? That’s a lot to pay for a domain for this purpose.
I should point out that the case doesn’t mention the acquisition at this price in an expired domain auction.
It’s not clear if Dreyfus knew this. I’ve heard form the domain owner that the panel was aware how much he paid for the domain. Still, her commentary on the matter is baffling given the domain name at issue.
She seems to focus on the fact that the parked page at Bespoke.com had one or more links relating to financial services, which is apparently part of the complainant’s business plan.
…The majority of the Panel focused on the descriptive nature of the word “bespoke” and therefore its registration as a domain name would be legitimate. However, as it was pointed out, the legitimacy is lost if the Respondent is seeking to exploit the Complainant’s trademark.
…concerning the Respondent’s awareness of the trademark at the moment of the disputed domain name registration, the Dissenting Panelist disagrees with the majority of the Panel. Given the international registration of the Complainant’s trademark, a simple search on the WIPO Global Brand Database would have sufficed to reveal it.
….The Dissenting Panelist finds that the Respondent’s only interest in buying the disputed domain name was to sell it for valuable consideration in excess of its out-of-pocket expenses, either to the trademark’s competitors, or to the trademark owner.
It’s ridiculous to suggest that the respondent acquired the domain name to sell it to the specific complainant or any a competitor. I personally was bidding in the expired domain auction for this domain name, and that was based solely on this word’s common usage. In addition to its usage in clothing, it is used to mean anything made-to-order.
In fact, a UK software company paid $8,800 for the domain name BespokeSoftware.com for its software development services.
The respondent in this case certainly hopes to sell the domain name for a profit. But suggesting its value is based on anything other than its generic meaning is ridiculous.
George Kirikos says
Dreyfus routinely represents complainants in UDRPs, as a simple search at UDRPSearch.com reveals.
Poacher and gamekeeper.
“many people have pointed out that Dreyfus often represents complainants in UDRP cases.”
Isn’t that a *huge* conflict of interests and, therefor, a reason he should never be allowed on a panel??
Nat Cohen says
Many, if not a majority, of UDRP panelists also concurrently represent complainants. WIPO, NAF, the other UDRP providers, and the panelists themselves, don’t see any conflict of interest in having the same people both advocate for a certain interpretation of the UDRP as Complainant’s representatives while at the same time deciding how to interpret the UDRP while acting as panelists.
Nat Cohen says
To provide more detail, the reason I know that WIPO and the panelists have no concerns about a conflict of interest is that I raised the concern about conflicts of interest with one of the most experienced UDRP panelists who was co-leading a WIPO workshop on how to interpret the UDRP. His answer was that this was just the way it is done and that it is common practice in other areas as well to select people to decide arbitrations from among active practitioners-
“4. Nevertheless, WIPO continues to have serious blind spots that undermine the integrity of its implementation of the UDRP: 1) it does not see the conflict of interest that is created when it permits Panelists to also act as Complainant’s representatives, ”
As Andrew references in his post, John Berryhill commented on this issue before-
“[P]ermitting panelists to also represent parties in proceedings is structurally unethical, because it is a needless opportunity for mischief. There are plenty of qualified attorneys, and accredited panelists, who do not represent claimants in UDRP proceedings. There is no need to have panelists which also represent UDRP claimants. None.”
I cited John’s comment in a post on Dreyfus’s double-duty as a Complainant’s representative and as a UDRP panelist-
chad - Contrib says
RDNH, who cares as it doesnt come with a penalty or even a slap on the wrist to an unknown and likely fictitious name filing the complaint. $5k or the cost of filing and $1000 for time spent defending would be a fair choice. Anything really then just a brand of RDNH on your company as it has no value.
Im not sure how a party can be said to have misunderstood the rules if it is represented by counsel.
The dissenting decision is awful.
AbdulBasit Makrani says
Overall the decision was good as it ended up in favor of the domain owner.
Nat Cohen says
What if it was a single member panel and Dreyfus was the sole panelist? Then she would have ordered that the valuable generic domain Bespoke.com be taken from the domain owner and handed over to the complainant.
Dreyfus’ view is that once a common dictionary word is trademarked it is bad faith for anyone to speculatively register the domain for resale. In her view, such a sale could only be to the trademark holder or one of its competitors, which in her view would be an attempt to profit from the trademark holder’s rights in the domain.
Those panelists who hold this view – Dreyfus is not the only one – would grant any trademark owner who registers a dictionary word for any limited purpose in any country in the world a global monopoly on the rights associated with that word such that a domain investor would not be able to lawfully speculatively register or offer for sale a domain based on that trademarked dictionary word.
This view is a gross distortion of the principles of trademark law.
These panelists seem oblivious to the fact that generic domain names have substantial inherent value.
They flip upside down the reason why a generic domain is valuable. A generic domain is not valuable because some small company has an obscure trademark on it. Rather, the company chose a generic word as its trademark because it wanted to associate the inherent meaning in the domain with its product or service.
As noted by myself and others, Dreyfus is an impartial panelist who earns her living representing trademark holders in various legal matters including as a Complainant’s attorney before UDRP panels. Her views in the bespoke.com UDRP decision set very helpful precedence for her clients who wish to seize a domain name through a UDRP decision.
WIPO is complicit in this abuse by selecting active Complainant attorneys to serve on UDRP panels. Where is the impartiality when an attorney makes his or her living arguing that reselling a domain based on trademarked generic word is a violation of the UDRP, and is then selected to decide UDRP cases where the key issue is whether reselling a domain based on a trademarked generic word is a violation of the UDRP?
Excellent post – particularly last paragraph. As I said in response to George K above, in this modern age of accountability, how can you be both poacher and gamekeeper?
And who represented the domain owner?
Plenty of marks registered with BeSpoke and in the financial space there are better known entities using it in their name. Ridiculous it was even heard, but that is a risk all buyers take when buying a name as well as a trademark lawsuit. Add the costs to the purchase price plus any future lawsuit that may occur for an asset that doesn’t have a very liquid marketplace. The UDRP system needs major reform.
Disgusting travesty of the UDRP system by Dreyfuss .
Is she paid for under the table or just incompetent ? The decision makes no sense.
Shame on Dreyfus.
John Berryhill says
Misunderstanding the policy is not an excuse. An attorney has an affirmative duty to be competent.
John Berryhill says
Thinking on this further, it is telling that two of the panelists said the complainant doesn’t understand the udrp, and one of the panelists agreed with the plaintiff.
Joseph Peterson says
John nailed it above. UDRP is in a sad state.
Regarding Reverse Domain Name Hijacking, “The Panel dec!ines to make such a finding. A!though the Comp!aint is weak, it appears that the Comp!ainant may have misunderstood the requirements of the Po!icy rather than being motivated by bad faith.”
The complainant, Bespoke Service Group S.A., was represented by law group SBKG & Associes , France. How is it possible that this three party panel (James A. Barker, The Hon Neil Brown Q.C., Nathalie Drefus) can judge that the Comp!ainant may have misunderstood the requirements of the Po!icy, when the case is brought by a law group – a law group that should surely understand the requirements of the UDRP Policy?
On their website SBKG claim expertise in “Litigations: disputes related to the Internet (keywords, domain names, UDRP procedures).
All the 3 panelists said that these legal experts with stated expertise in the UDRP Policy had “misunderstood the UDRP policy”. Hummmmmmmmm.
My question is: besides the TM, was there a solid business plan out there, perambulating to capture investors, at the time of the cited auction ? I dont know this case nor if this is the case, but when you say “… purpose of selling to a little known company … “, it is not crazy to suggest so [ if they were knocking doors with a TM and a solid plan ], there are a lot of investor’s clubs out there, reviewing new ideas, and combined with the fact that, they had a TM already + company existed ( no matter how small nor unknown ) + Business Plan was ( ? ) public domain …. then it would not be ridiculous at all, such suggestion. But, by what you guys are saying, it sounds really bad, how Dreyfus dissented, …. the ambiquity of it all, prevents Domainers on having a more established lobby, but the very same duality, allow many of us, to make 1000% profit, sometimes, overnight.