Company loses Halifax.com after trying to get Bank of Scotland to buy the domain name.
A company in the United Kingdom just lost a domain name it paid $175,000 for in a UDRP. It should be viewed as a lesson on what not to do with a domain name that has both a generic/geo value as well as that of a brand.
Diversity Network acquired Halifax.com in September 2015 for $175,000 and then proceeded to make a series of stupid attempts to get Bank of Scotland, which operates a financial services company called Halifax, to buy the domain name.
Just days after completing the acquisition of the domain name, Diversity Network registered the domain names halifaxcarfinance.com and halifaxliving.org. The first of these names is squarely aimed at the complainant in this case, Bank of Scotland.
Diversity Network then reached out to Bank of Scotland offering Halifax.com for sale. It said it was preparing to use the domain names, and that it was receiving lots of emails about problems with logins to the Complainant’s service and added that this must be a security concern for the bank.
It then proceeded to create a site at Halifax.com titled “Halifax Financial Services Business Listings” with a message “We are Halifax.com the official financial services directory for the UK.”
Diversity Networks came up with a bunch of planned uses for the site that it conveyed to Bank of Scotland and/or the panel. Here, the panel summarizes these claimed uses when finding the domains were registered in bad faith:
The Panel cannot accept the Respondent’s case of an alleged good faith motivation as credible. In the first place, the Respondent’s assertions in the correspondence and Response as to its intended use for the disputed domain name halifax.com are various and contradictory. These are first that it plans to run the original directory site – the Panel pauses to note that this is the only explanation given in the Response – secondly, that it plans to use the traffic for starter sites or “drop ship” sites, thirdly that it plans to put the domain name halifax.com to public auction, and fourthly and finally that it was always the Respondent’s plan to use that domain name for a “gay fetish” website. A fifth use, not discussed by the Respondent in the correspondence, is the actual use of the website to feature various financial services in reference to the United Kingdom as outlined above.
The panel also found that the respondent, represented by UDRPPolice, seemed to try to confuse the panel with some of its evidence:
In seeking to understand the factual circumstances in this case and to weigh the evidence which the Parties have placed before it, the Panel has also found certain of the Respondent’s submissions in the Response unhelpful to say the least. The Panel is left with the distinct impression that the Respondent took the view that obfuscation, rather than clarification, would be the best way to address the Complainant’s case. For example, the Respondent states that following acquisition its website was “improved visually but continued its primary operation as a dual city directory”. However, the screenshot produced to evidence this is dated August 23, 2015, in other words pre-dating the acquisition of the disputed domain name by the Respondent. There is no evidence before the Panel that the dual city use continued for any particular length of time after the Respondent’s acquisition of halifax.com. Likewise, the screenshot produced to evidence an alleged bona fide offering of services of a premium package for businesses is dated January 11, 2016 and thus postdates the commencement of proceedings. The Respondent thus seeks to gloss over the period between acquisition/registration and commencement of proceedings despite the fact that clear evidence has been provided by the Complainant of the UK financial services directory incarnation of the website. These matters in themselves have a negative impact upon the Respondent’s protestations of good faith.
The three-person WIPO panel found that Diversity Networks did not have rights or legitimate interests in the domain names and that they were registered in bad faith.
As a result, Diversity Networks will lose the $175,000 domain name unless it files a lawsuit. That lawsuit against a major financial institution would cost even more money.
insane…
i was shocked when i first heard about this but it appears they deserved to lose the domain. what fools.
Such crazy people at Diversity Network! They paid 175K and not had the patience to hold onto the name and started bombarding with emails to the UK bank. That’s real foolishness.
What sort of law firm does not list the name of any lawyer on their website?
At least they no longer use whois privacy for their domain.
At least they upgraded from a wordpress site to a wix site!
https://udrppolice.wordpress.com
Unless the handle 100s of cases, it looks like the 99% record is in danger…
“We are proud of our 99% success rate in response cases and proactively monitor all UDRP filings.”
http://www.udrppolice.com/#!practiceareas/c1iwz
“Let me plug Matthew Brown and UDRP POLICE ([email protected]) ([email protected])
They did a fine job Pro Bono”
https://domainnamewire.com/2014/02/20/steelbuildings-com-an-example-of-whats-wrong-with-udrp/
If they were asking for $175 isn’t that still classed as “out of pocket expenses” that the rules allow? Just a thought.
As I said last December on DomainGang, that was a totally masochistic, silly way of managing a premium geo domain like this, they deserve to lose it.
175k USD wasted …
And it looks Diversity Network has been involved in “shady business” before: http://www.bbc.co.uk/programmes/b03hchc1
What goes around, comes around … 🙂
I think it’s the bank that are dodgy in this case unless you work for the bank ?
No offense, but you have no idea of what are you talking about here, I’d suggest to read the full complaint and decision before talking nonsense.
FYI, I don’t work for the bank and I’ve never worked for them, and I’ve no whatsoever connection to them.
Truth hurts … as usual …
Common sense…ain’t that common.
Halifax is a generic geo name as well. They shouldn’t be penalized with loss of domain for the approach they took. UDRP can impose other penalties; but taking away possession of the name from the respondent is insane. It makes no sense to me at all.
UDRP can’t impose other penalties. The only option is to transfer or not transfer.
Agreed.
I remember seeing this name on Flippa for sale not so long ago. My first thought at the time was to avoid the name considering Halifax is a major UK bank.
I don’t think anyone needed to avoid it outright. They just needed to use it for its geo meaning and everything would have been fine. The bank might have made a good, legitimate offer at some point.
Agreed.
They ended up losing the domain due to how they used it (ie the content on it). Just having a name can be ok, depending on the name of course, in this case, it should have been ok as pointed out above.
We sold the domain name Halifax to diversity, we had it as a city geo for Halifax Nova Scotia when we had it, they diversity put a financial directory on it a few months after they acquired it but in no way did it resemble anything of a bank that was and is very clear. Halifax.co.uk is a bank period, and Halifax.co.uk does not at all show other financial companies. Halifax is a city in the UK with many financial companies it is perfectly legit what is on Halifax.com. Lloyds who owns Halifax.co.uk is simply trying to do a reverse hijacking here, in our opinion, none of you have your facts straight and all is hear say with your gossip. The owner of it Diversity is far from stupid and ignorant.
The one FACT we do know is that they LOST.
Greedy bankers using 500k of tax payers money to take a domain they could of brought for 200k. Says it all.
Er, they used about $5k to get a domain they could have spent a lot more on.
That’s the real trick, isn’t it? I didn’t see the bank trying to buy Halifax.com for $175K, because they already knew once it eventually sold, that $5K and their lawyers would do the job just the same.
This is basic entrapment, they tried to sell the domain straight away to the bank, not hiding anything. They just didn’t understand the process. Anyway the deciding panel from what you hear in the press is corrupt anyway. They should be stopped. How can a panel decide that something has to be handed over. Diversity you should fight this in the US courts.
Entrapment? US Courts?
Both companies are in the UK.
Looks like we’ve found one of those greedy bankers ‘Andrew’ The domain is registered in Arizona so the case can be tried out there, if you knew what you were talking about that is.
Arizona, lets hope so. If the bank picked the respondents address as the mutual jurisdiction the case will be a UK case as Diversity Network registered contact for the domain name is in the UK. Right now the UK courts are confused in what is legal and what is not. There is an appeal in the UK courts going through now.
* arguing that UDRP Panel decisions can in law be appealed in a UK Court. Right now the UK Courts think that the mere registration of domain name (regardless of any good or bad intent or use) breaks UK Passing-Off law and “nor can it be disputed” the appeal Lord Judge Kitchen exact words. This allows the Court to hand over the domain name property to anyone complaining that they have some goodwill in a domain name, which incidentally is also illegal as giving away someone’s property to another is not part of the civil remedies allowable under the UK law of passing-off. .
The UK High Court (and its judge) is blatantly disregarding people rights and are ignoring their own rules.
By coincidence one of the parties involved in the UK Court case is also a bank, RBS bank. Interesting,
I would be shocked if a UK company fighting another UK company picked Arizona as its mutual jurisdiction. The only reason I could see for doing that is if it wanted to increase the respondent’s legal bills, but the respondent also has the choice of filing a suit in the UK.
Diversity Network is in real trouble if Halifax did pick the UK, because UK Courts do not allow the appeal of any UDRP decisions, the Panel’s decision is final, no matter how wrong. True that the respondent has the choice but the choice is a red herring because there is no choice. This is law in the UK.
I find it quite amusing that large corporations can simply play the waiting game for old generic domains on sale for $175K (I didn’t see them banging down the doors to buy it earlier), then after it is sold, immediately swoop in with a cheap UDRP and get it for nothing.
And never play the blame game based on a legal doc, because unless you were there in person, you have no idea what actually went on during the hearing, what info was redacted, not viewed as pertinent to the final document, paraphrased, etc.