DomainKing.biz UDRP loss can help domainers on the receiving end of a UDRP.
Earlier this month domain investor Rick Schwartz lost a UDRP–as the complainant.
Schwartz filed a UDRP against a domain name registrar over the domain DomainKing.biz. Schwartz has a trademark for Domain King in the U.S. and Europe.
The domain registrar mostly operates in South Africa and the Philippines, offering domain names such as .co.za and .ph.
I wasn’t sure which way this case would go when it was filed.
The panelist determined that the domain wasn’t registered in bad faith. He said that the respondent likely was generally aware of Rick Schwartz because he would have visited DomainKing.com before registering the .biz version, but probably wasn’t aware that it was being used in a trademark sense.
Nat Cohen, who has been on the receiving end of a number of frivolous UDRPs, saw a gift in Schwartz’s loss. He commented:
Rick may have inadvertently done a favor for domainers as there is helpful language in the decision:
“Further, even if the Complainant was able to demonstrate that the Respondent most likely knew that the term “Domain King” was being used in a trade mark sense, that would not be the end of the matter. The question would still remain whether the Domain Name was registered to take some unfair advantage of the Complainant’s use of this term.”
Panelist Matthew Harris is saying that even if you are aware that a term is being used as a trademark it may still be okay to register it as long as you are not taking unfair advantage of the trademark holder. This is exactly what domain owners have been arguing since the beginning of the UDRP…
You can view Nat’s full comment here.
I seriously doubt the respondent chose the domain DomainKing.biz to take advantage of Rick Schwartz’s trademark. It’s doubtful that DomainKing.biz’s customers in South Africa and the Philippines are aware of who Rick Schwartz is.
This is also a case in which the respondent was using the domain name for a business. Transferring the domain would cause a disruption to what is, by all accounts, a bona fide business. Frankly, that should never happen in a UDRP.
If you set aside the requirements of proving cybersquatting in a UDRP, keep in mind that the overarching goal of UDRP is to handle cases of clear-cut cybersquatting.
Is DomainKing.biz a case of trademark infringement? Perhaps, and that can be litigated in the courts. UDRP probably isn’t the right forum.
While this sucks for Rick, domain name owners can now point to this case when they are on the receiving end of a UDRP complaint. It might just help the owner of a generic domain successfully defend the domain in the future…
Eric Lyon says
I’m still not sure why he went after it in that extension. Might have been bored that day and wanted something to do, I suppose. If there was some underlying psychological strategy in play, then it may have been to give one more push to main stream industry news that the “Domain King” should not be forgotten.
I do agree though, the loss of this case helps domain developers fortify their future.
Mike Taylor says
Isn’t a trademark holder required to defend it? Is the UDRP process an acceptable way to do so?
Adam says
Schwartz doesn’t build websites, it is a totally fair ruling. 🙂
John says
“…doesn’t build websites,…” smh
Acro says
Can I open a “Burger King” in Mumbai, being “generally aware” of the trademark? I promise to only sell halal burgers.
Andrew Allemann says
Rick Schwartz is not Burger King.
Acro says
How so? Both marks are incontestable and famous. To claim otherwise is one fat lie.
Sorry, but this was one travesty of a decision that does not benefit domain investors.
Gabriel says
Famous? lol… ask people on the street if they know who the “domain king” is. Moron
Acro says
For a mark to be famous you don’t need the entire world to know. Troll.
Jane Doe says
Now that is just funny…
If Burger King does not have a trademark covering Mumbai, then the answer to your question is YES, yes you can open a Burger King in Mumbai knowing full well the trademark exists elsewhere.
Anil Kumar says
You can’t because there are Burger Kings all over Mumbai and other Indian cities, but no beef though!
Pat w says
#1 This $10.00 DomainKing.Biz — “Guy” — is Clearly using this Domain Name in Bad Faith from the Start of His “Domain Name Related Business”…
#2 Because no matter what This $10 .Biz Guy — Did Not Know — Rick Schwartz already is The Domain King — And RS is using and has been Registered and Running his business as The “Domain King” for Many Many Years !!!
#2 Ignorance — Does Not Count in — Legal Stuff — Business — or Crime — Even if You do work out of Nigeria…
#3 This $10 .Biz Guy would be Totally Free to open a Pizza Parlor as the “Domain King” and that would be Completely Fine…
#4 This $10 .Biz guy would be Totally Stupid to try Open his own “Burger King” in Tim Buck Two (Nigeria) — Because “Burger King” would Shut Him Down Extremely Quick…
#5 This $10 .Biz Guy Can Not use “Godaddy.Biz to start Any Kind of a Domain Business — in Nigeria — or Tim Buck Two — Because some guy named “Bob Parsons” would Shut him down instantly…
#6 When you Google Search “Domain King” any where in The World — You get over “60” Million Results — Heavily Loaded with Specifically One Person’s Name: — Rick Schwartz — The One & Only — Domain King !!!
#7 The UDRP hearings overall are Really Great for the Domain Business and “from their point of view” it can be a very close call on making a Final Domain Decision…
Jeff Schneider says
The only people that do not recognize Rick Schwartz as the Domain King are Google based Advertising Advocates. Even they cannot obliterate Ricks penchant for Creative Manifestation. After all the years of Denial in public forums about the .COM Assets Obviously Apparent use as the #1 Online Marketing Strategy, What do Admen Know ? Only what Google wants them to know. This may be the biggest case of Mass Denial in history.
Google Admen got it wrong 30 years ago and still support this Google inspired Fantasy.
Gratefully, Jeff Schneider (Contact Group) (Metal Tiger) (Former Rockefeller IBEC Marketing Analyst/Strategist) (Licensed CBOE Commodity Hedge Strategist) (Domain Master https://www.UseBiz.com