Company pays big bucks after filing losing UDRP.
A Belgium maker of ultrasound equipment has paid $50,000 to settle a lawsuit stemming from a frivolous UDRP it filed.
SDT International filed a UDRP for the domain named SDT.com last year. The domain name is owned by Nat Cohen’s Telepathy, and SDT had tried to purchase the domain name before filing the complaint. (Cohen was on the Domain Name Wire Podcast recently, discussing similar frivolous cases).
Upon receipt of the UDRP, Cohen reached out to SDT’s managing director suggesting that he withdraw the UDRP. Cohen pointed out that SDT’s attorney, Novagraaf Belgium NV/SA, had already been censured for filing abusive UDRPs.
I’ve written about two cases involving Novagraaf.
In a 2010 case, a panelist blasted the complainant for apparently trying to mislead the panel. The next year, a panel said Novagraaf was either trying to mislead panel or being “inexcusably careless”.
In the email to SDT’s managing director, Cohen pointed out that the facts weren’t in his company’s favor and that Telepathy would seek a finding of RDNH. The company did not withdraw the complaint.
Cohen stuck to his promise and took it a step further. Before the WIPO panel decided the case, he filed a lawsuit against SDT in U.S. Federal Court requesting statutory damages for Reverse Domain Name Hijacking and a statement that its ownership of sdt.com was lawful. He was represented by David Weslow of Wiley Rein.
SDT filed a response in federal court challenging jurisdiction. Telepathy then filed an amended complaint addressing the jurisdiction issue and adding additional claims for Breach of Contract, Fraud, and Negligent Misrepresentation.
SDT agreed to settle the dispute (pdf). In addition to signing off on Telepathy’s rightful ownership of the domain name, the company paid Telepathy $50,000. Cohen reports the payment has been received.
I sometimes receive messages from companies that have been founded to have engaged in reverse domain name hijacking. In fact, a company posted a comment on Domain Name Wire recently saying it wasn’t aware of reverse domain name hijacking, and that it had received bad legal advice.
As Cohen informed SDT’s managing director, “While Novagraaf is paid for providing bad advice, it is their clients who suffer the consequences.” That was indeed the case here.
Many companies don’t realize they might have to pay up for filing losing cases. Even in a case in which a company won a UDRP, the company paid $25,000 to settle a lawsuit brought by the domain name owner.
Ray J says
It’s good to see this type of justice, but it’s the big guys who have the money to throw around that can easily go through the legal system, and this issue was settled outside of the courts, so there was no legal action that was handed down.
Bona Vee says
“It’s good to see this type of justice, but it’s the big guys who have the money to throw around that can easily go through the legal system…”
George Kirikos says
Well done, Nat.
Joseph Peterson says
Bravo! Here’s an article to link to when confronted by bullying, frivolous UDRPs.
Domainer Extraordinaire says
Now the wannabe thief smartens up, finally.
John Berryhill says
They are really slow to get the message.
C.S. Watch says
One would like to see attorneys contacting UDRP losers who are less sophisticated than Telepathy, for instance…
In MILLY.COM, Respt died on 2/18/13. Complt deftly filed on 3/11/2013 and falsely alleged the content violated TM law. However, it was blouse cleavage, nothing racier than a GoDaddy ad. (Registrant Lichtman was no fool, having sold a software company to AOL a decade back.) The site linked out to harder content for years before Complt began any mark use. 5) Lichtman had posted a blank page, but the site auto-reverted to the parking page upon his death.
Andrea Paladini says
Great move! congrats to Nate Cohen.
Time to deter those groundless UDRPs …
Steve K. says
Love to hear stuff like this, way to go Nat!!!! Kicked em where it hurts….
C.S. Watch says
It’s superb that Telepathy has the sophistication to protect themselves. Here’s an open letter to any NY attorney:
Consider looking into the egregious ‘MILLY.COM’ UDRP holding below, and apprising them of their right to the $100K RDNH award and valuable domain name:
MILLY.COM’s UDRP transfer was obtained via the incorrect and widely disavowed ‘renewal-as-registration (aka retroactive bad faith)’ interpretation of the Policy. Some salient points: 1) Registrant Egal Lichtman DIED 2/18/13. 2) Complainant deftly filed the UDRP complaint on 3/11/2013. 3) Complainant falsely alleged ‘porn’ appeared on the site in the Complaint. 4) Archive shows ‘Sexy Dating,’ and some cleavage, but nothing racier than a GoDaddy ad. (As Lichtman was no fool, having sold a software company to AOL a decade back.) 4) Lichtman’s identical ‘sexy dating’ page was present before Complainant started the ‘Milly’ mark. This served Complainant’s interest then, presumably, when they were trying to be ‘hip.’ 5) Registrant Lichtman had posted a blank page for many years (which he was not bound to do under TM law). However, upon his death, no longer present to manage hosting, the site reverted to the prior parking page. 6) The Panel, in flatly subverting the Policy, enabled Complainant to steal an asset with a fair market value in the six-figures. Complainant literally ‘stole it off of a dead guy,’ via the abnegation of duty by WIPO panelists Richard Page, Andrew Christie, and Robert Badgley.
One would hope to see the domain and the $100K RDNH award secured for Lichtman’s heirs—his wife and three children, whose names formed the acronym for Lichtman’s d/b/a, ‘Mrs. JELL-O.’
One would also hope his family would receive an apology from the WIPO, and from these three panelists.
Sridhar Raj says
NC has gone global to win RDNHs, he has seen success even in courts of Mumbai, India over LLL.INs. Two thumbs up.