Panelist calls case “particularly abusive”.
A shoe and accessories company that uses the domain name MyChooze.com has been found to have engaged in reverse domain name hijacking over the domain name Chooze.com.
Vegan shoe company Degani Designs, LLC DBA Chooze filed a UDRP against UK company Dot Zinc Limited with the National Arbitration Forum.
There was a big problem with Chooze’s complaint, however. Dot Zinc registered the domain name many years before the shoe company started using the name “chooze”.
Degani Designs applied for a trademark for Chooze in 2010 on an intent-to-use basis. Historical whois records show that Dot Zinc has owned Chooze.com since at least 2007.
In other words, a dead-on-arrival UDRP.
Panelist Dennis A. Foster declared that the case was “particularly abusive” of the policy:
The Panel views this case as a particularly abusive use of the Policy. Before filing a complaint under the Policy, a complainant should undertake at least a cursory review of the circumstances under which it might prevail. Clearly, precedence established under countless previous UDRP rulings suggests that there is no chance to obtain a positive outcome when there is no evidence presented to establish that a complainant has rights in a mark prior to registration of the disputed domain name.. Such is the case with Complainant’s filing in this proceeding.
It’s not clear if a lawyer represented the complainant. The UDRP decision notes that the complainant was represented by Marc Blumberg, the company’s CEO.
C. S. Watch says
This Marc Blumberg thumb-puppet spent 17 years in a digital marketing company. https://www.linkedin.com/in/marcblumberg. He knew he was stealing.
This is a 50K USD six-character brandable dot-com. That is grand larceny. You can’t get caught hotwiring a 50K Range Rover and giggle and scamper away.
When a teenager in China registers VerzonWirlesss.com, that is not a 50K theft attempt. That is just a registration that is disallowed. The property right at stake is about two cents worth of misdirected type-in traffic. We don’t need a UDRP penalty for cybersquatters beyond transferring the domain–that IS the penalty.
But Reverse Domain Name Hijacking is completely different. RDNH can be a million dollar heist. It happens all the time. There needs to be a real penalty at the UDRP level, if only to raise awareness. A $3K fee due at the filing of the complaint, which is remitted in the event of a successful complaint, and forfeit in the event of an RDNH finding. Otherwise, the UDRP is a dark alley where attempted robbery has no consequences whatsoever. A $3K smack on the hand creates a recognizable stigma for RDNH that will self-police it. The public recognizes penalty fines, they don’t recognize esoteric tech acronyms.
At inception of the UDRP, domain property values were difficult to assess. Now we know that LasVegas.com has a market value of 90 million dollars, 360.com is worth $17M, Pooxi.com is worth $5M, and so forth. As valuations have increased, hijacking has increased. A response to this evolution is long overdue. The UDRP creates the theft vehicle, and so is responsible for deflecting theft.
$3000 at time of filing, remitted in a win, and forfeit for RDNH. That is conservative, it’s a no brainer, and it is coming. The only question is when and why so late.
They invest annual profits in anti-poverty programs. They use environmental-friendly packaging.
Degani Designs are a very ethical company.
Andrew Allemann says
I don’t doubt they have good intentions, but what they did with this cybersquatting filing was either highly uninformed or unethical. Take your pick.
C. S. Watch says
Well, the complainant does sell $50 kids’ slippers made in China. And the respondent employs dozens of people in the UK and has three children. But these are not dispositive facts.
This overseas respondent had to spend thousands on a Utah patent attorney to respond to this complaint. So RDNH would be mandated even if the complainant were a hapless illiterate. But he’s not:
The complainant is a Wharton grad and “a recognized expert in the digital marketing arena…” He personally registered their present domains in 2010 and 2011. Their Dallas IP attorney (on their 2010 and their 2011 USPTO filings) is a partner who addresses ‘typosquatting, cybersquatting, and theft.’ You can be absolutely certain that that attorney discussed Chooze.com with them and informed them that they didn’t have the right to take it.
1) That’s why they contacted the respondent trying to buy it, and
2) that’s why their attorney did not file this UDRP.