Inexperienced counsel can flub your case.
The Uniform Domain Name Dispute Resolution Policy (UDRP) can be a good thing. Every week, brand owners use the service to recover domain names that are clear cases of cybersquatting.
I review UDRP decisions almost daily, and one pattern emerges when an outcome is a bit surprising in favor of the domain owner: the complainant didn’t use an attorney who is deeply familiar with UDRP.
UDRP might seem easy, but attorneys that aren’t familiar with previous cases and precedent are at a disadvantage. Hiring your corporate attorney to file a UDRP probably isn’t a good idea unless they have previous experience with UDRP.
Two cases this week are prime examples. The cases fell flat because the complainants failed to provide evidence of their asserted common law trademark rights in the name. To be clear, they might have had other fatal flaws. But these were never examined because the complainants and/or their lawyers failed to provide evidence to back up their claims of common law trademarks.
Consider the case filed by Netsertive, Inc against netsertivesucks.com. It’s possible that this case would have been denied on free speech grounds, but it never got there.
The domain was registered before Netsertive got registered rights in the name. It’s obvious that the domain owner knew of Netsertive and that’s why the domain was registered. It’s highly likely Netsertive had common law rights in its brand prior to the domain registration date. But the company didn’t provide any evidence:
Complainant attempts to rescue its position on the point of Respondent’s registration of the domain name in bad faith by asserting that Complainant acquired common law rights to the NETSERTIVE mark dating from April of 2010, a time prior to Respondent’s registration of the
domain name. However, the Complaint offers no evidentiary support for this proposition. And an assertion of common law rights in a mark that lacks evidentiary support fails to show a subsequent registration of a domain name in bad faith under Policy ¶ 4(a)(iii)
The other case is Jireh Industries Ltd for Jireh.com. In this case, the complainant has pending trademark applications for Jireh. It probably has common law rights but it failed to provide evidence:
Complainant has failed to provide any evidence of the kind that would satisfy its burden of proving common law rights. Complainant’s evidence is limited merely to the statements that it has been using its JIREH mark initially on food processing equipment and later on oilfield equipment since 1983 and on nondestructive testing equipment for industrial applications since 2002. Such assertions alone, without facts to support a claim of common law rights, are insufficient to satify [sic] the requirements of the Policy.
I’ve learned over the years that you need to hire a specialist when it comes to law. You end up getting better results and it’s also usually less expensive since you don’t pay the lawyer to learn the system.
Nick says
Weird post Andrew, both cases are plain old attempted theft. Why bother to ask thieves to hire a better attorney? It’s like saying hey all thieves out there, you are doing a poor job at stealing, here’s a better way.
Andrew Allemann says
Really? Netsertivesucks.com is a commercial site, not a gripe site.
John Berryhill says
“Don’t waste your marketing dollars – Get recommendations on a better marketing agency.”
Seriously.
In the netsertive case, the claim that the alleged mark functioned to identify the source or origin of services originating with the complainant should have been taken as having been admitted by the respondent. Obviously, the respondent believed, by its conduct, that netsertive is the complainant’s mark. The panelist seems to have disagreed with both of the parties on his own initiative.
John Berryhill says
In many of the cases I see, it would have been a better idea for the complainant to hire an attorney who would likely have advised the complainant not to pursue a UDRP in the first place.
Bill Sweetman says
Berryhill hits the nail on the head yet again. There are times when it might make sense for a brand to file a UDRP on a desired domain, and there are times when it might make sense (and be cheaper and less risky) to hire a domain buyer broker to help you purchase said domain. Unless you get reliable legal advice from a lawyer who actually understands domain name law because they specialize in it (lawyers like John Berryhill, Karen Bernstein, Ari Goldberger, David Weslow, Stevan Lieberman, Zak Muscovitch, etc.) then you risk making a wrong and potentially fatal move. File a UDRP when you shouldn’t and not only don’t you get the target domain but you might even find yourself on the receiving end of a lawsuit.
Russ Smith says
That is what happened with DirectorsChoice.com. They sent email threatening UDRP action in 2002. Not until 2014 did they actually file a UDRP. Before the UDRP was filed they filed a trademark application claiming first use back to 1997 but they filed a UDRP before the application was published for opposition. The domain was ordered to be transferred and a lawsuit was filed and the trademark application was opposed. The lawsuit is pending and the dispute is now in its 16th year. It is probably the longest running domain dispute in history.
The funny part is that to prove use of the domain was “not unlawful” a trademark application was filed by the domain owner. The complainant didn’t oppose it so now the domain owner has a registered trademark and the complainant does not.
The lawyer who filed the complaint is Matthew Swyers of The Trademark Company. He offers a “discount” UDRP service for $1499. He already has one reverse domain name hijacking finding against him, another was found out of scope, and this one ended up in a lawsuit. I think he filed 5 or 6 cases total. The lawsuit also claims Swyers manipulated the Google AdSense system to cause certain ads to appear and they he destroyed the Google cookie after the specimens were collected.
Swyers sued the US patent and trademark office because he says they are harassing him. He files many more trademark applications than similar attorneys and the claims are that he does not exercise due diligence. On The Trademark Blog some of his specimens were posted. He writes a trademark on sticky note and attaches it to a product and claims that is a specimens of use in commerce.
Swyers is no longer the attorney on the lawsuit and Matthew Kaplan is in charge of the case. His only other notable domain case is representing Glenn Beck in the dispute over the domain glennbeckrapedandmurderedayounggirlin1990.com.
Nick says
Do you believe a large percent of domain attorneys would have advised complainant not to pursue the case? Or would they just take the money and file the case, since every single case has a chance, according to some ridiculous decisions that have been made.
Samantha Frida says
John is right (as usual).
This is where due diligence should have taken place by the Complainant to figure out if the Respondent is in the business of registering TM infringing domain names The onus is on the Complainant to provide evidential support the domain name is confusingly similar to the TM AND used in bad faith. There is also that risk of relying relying on a panelists’ view.
You do not get automatic rights to a domain name that contains your TM because you only thought of acquiring the domain name after you filed for your TM application – proper strategy would have been to first check on the domain name availability and if not available, acquire it if you want it badly – then apply for TM.
Looking at our ownership tool at Dataprovider.com which lists all the domains rolling up to the owner using reverse whois AND identifying websites that share unique attributes although the whois is not identical – the Complainant could have had a possible case against the respondent, if research and proper direction was given on how to approach the Complaint.
Lessons learnt…
JohnUK says
Interesting and useful thanks.