Bad decision in a three-letter .com UDRP.
I just wrote about PCO.com being saved in a UDRP despite the domain name owner not responding. This was before I saw a similar case in which a three-letter domain name was lost in a UDRP.
National Arbitration Forum panelist Neil Anthony Brown QC has ordered the domain name IMI.com transferred to Irving Materials, Inc.
Brown generally provides a nuanced and well-reasoned opinion in UDRPs, and I’m surprised by the result here.
To be fair, the domain owner didn’t respond. Still, a quick look at the facts of the case strongly suggest this was not cybersquatting and the domain was not registered in bad faith.
It appears the current owner is the original registrant from 1994. Its business was originally called Internet Marketing, Inc., hence the domain name choice IMI.com. It subsequently moved its business to PartnerVision.org.
IMI.com resolves to a page headlined “Internet Marketing Inc a PartnerVision venture”. It says the company has changed domain names and then says “Searching for other IMI Companies, try these:” followed by a list of other companies that use the IMI acronym. These links are clearly not paid links, despite the complainant arguing that they are pay-per-click links leading to companies that compete with the complainant.
The complainant latches on to a page on the site that says the domain names are for sale. It states:
PartnerVision Ventures is winding down IMI’s liquidation sale. All of the company’s patents and other intellectual property are now gone. The only assets left within the company are it’s popular domain names (www.IMI.com) and (www.IMI.info).
With brand identity coming at a premium these days, you can image what the value of such a name will bring. If you are interested in purchasing this domain, please contact us.
Note: Offers less than two million dollars will not be considered.
Selling domain names you used for your company is a perfectly legitimate activity.
Again, it didn’t help that the domain owner didn’t show up to defend its property. My guess is the owner isnt’ even aware of the complaint. Still, the panelist in this case is well aware of the differences between pay-per-click and other links and also understands the value of domain names. I’m shocked by the decision. It’s this type of decision that gives companies the hope of getting valuable domains through UDRPs, creating a sort of vicious cycle.
Hopefully the owner will fight this decision.
Horrible horrible decision… Hope the owner wakes up now and takes it to the courts.
Fun with Facts:
Back in ’94, Jeff Black’s company, IMI, was the DC incubator which birthed what would become Altavista, the Google of that era.
Some here will remember the ‘domain sale heard around the world’: The 3.3M that Compaq paid for Altavista.com in ’98. (Well…some here ‘are here’ because of that sale.)
This is an outstandingly deficient decision. First, right in the WHOIS data, is this:
Admin Name: Black, Jeffery Dean
Admin Organization: Internet Marketing, Inc.
Hence, it is immediately obvious that the domain name is an acronym of the registrant’s admin contact.
The mindblower is in these two lines:
“Complainant registered the IMI mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,794,396, registered Dec. 16, 2003)”
…
(b) Respondent registered the domain name on March 15, 1994″
With all due respect to Mr. Brown, he clearly had to ignore facts which were right in front of him.
I think Mr Brown make many such mistakes.He might add the title “Honourable” in front of his name but that is meaningless when he makes such DIShonourable decisions time and again.
Someone should contact the owner and give him some advice to fight this. This is unbelievable. Does the email in whois even work? Does that even matter, if the email bounces and the respondent doesn’t get anything, it proceeds anyways?
Yes, because you are demanded by ICANN regulatory rules to keep your whois information valid and up-to-date.
“Note: Offers less than two million dollars will not be considered.”
If the owner wanted 7 figures for the domain, he should have spent approx. $ 3-5K to hire an experienced IP lawyer.
Now, he has nothing.
Insane decision.
Neil Anthony Brown should be ashamed of himself.
The company that brought the UDRP should also be ashamed.
.
Always keep whois email up to date and always read it regularly and always have 5k ready to defend yourself and have one UDRP lawyer’s contact info who has won several cases handy.
Another reason not to rely on free email forwarding providers such as @black.org – there’s a strong chance the registrant never got any notifications about the process.
When you openly seek $2MM for a domain, you take additional measures to protect your assets.
Unless the owner didn’t know about it he/she obviously didn’t think it was valuable or was plain arrogant. THIS IS WHY YOU HIRE JOHN BERRYHILL!!!
Black, Jeffery Dean, is one of several people that were registering vast amounts of generic domain names back when I started in 1994. I always wondered who he was but never saw any indication he was developing or had a plan on what to fo with his names. I believed most of his contact information was bogus since I never got a reply from him when I reached out.
He is obviously paying for his names but I wonder if his portfolio is vulnerable since he is required to use legitimate registration information. Maybe this played a factor.
“back when I started in 1994”
…which was quite a career change from the then-lucrative woolly mammoth hunting trade.
Is there no accountability or impeachment mechanism for a decision like this? Or are the courts the only other path?
Courts. I’m just shocked that Brown made this decision. He frequently adds an opinion saying a case was RDNH even when the two other panelists disagree. It’s weird.
Indeed.
Does anyone (read: John Berryhill) know the email addresses that are used by WIPO, NAF, etc. to send out UDRP notifications? It would be good if all domain name investors knew those email addresses so that they can white label them in their email systems so that they never go into their SPAM folders along with all the SPAM about fake renewal notices and emails from various Indians offering web development services…
It is stunning how terrible a decision this is.
There is so much wrong with this decision that it is hard to know where to start. A simply glance at the website shows that the findings in the Decision are completely wrong.
The IMI.com web site home page lists 17 different companies that use the IMI acronym and helpfully provides links to them-
“Searching for other IMI Companies, try these:”
One of these companies was the Complainant.
The Complainant’s allegations are contradicted by the web page itself-
“Complainant also argues that Respondent uses the disputed domain name to resolve to a website that contains a series of hyperlinks redirecting users to services that directly compete with Complainant, presumably to benefit commercially from pay-per-click fees. ”
Where does the presumption of pay-per-click fees come from? The links to the other companies are direct links, there is no tracking mechanism, the user is not routed through a PPC service.
The web page does not contain a list of links to “services that directly compete with Complainant”, it contains a list of other companies that use the IMI acronym, demonstrating both that IMI is not exclusively associated with the Complainant, and that the companies on the list are not competitors but merely companies making use of the acronym.
The Complainant benefits from these links as anyone typing in IMI.com hoping to reach the Complainant will find a link to the Complainant on the web page. The decision is exactly backwards – the domain owner is receiving no benefit from providing those links, while the Complainant is benefiting from the domain owner placing a free link on the IMI.com web page.
The For Sale page indicates that the domain owner values the domains imi.com and imi.info at $2 million-
==
Domain Names
imi.com & imi.info
are for sale!
PartnerVision Ventures is winding down IMI’s liquidation sale. All of the company’s patents and other intellectual property are now gone. The only assets left within the company are it’s popular domain names (www.IMI.com) and (www.IMI.info).
With brand identity coming at a premium these days, you can image what the value of such a name will bring. If you are interested in purchasing this domain, please contact us.
Note: Offers less than two million dollars will not be considered.
==
While that is an ambitious asking price, the domain owner should be free to quote whatever price he/she wants. The Honourable Neil Anthony Brown QC has with full knowledge enabled the theft of a domain in violation of the requirements of the UDRP that the owner values in excess of $1 million.
It appears that nearly every finding made in the decision is demonstrably false.
According to the LinkedIn profile for the owner, Jeff Black, (https://www.linkedin.com/in/blackjeff/), he appears to be quite a successful person who has led numerous companies and has been involved in a leadership role in several volunteer organizations including serving as the Chairman of the Board for California Search and Rescue for over seven years.
One can only speculate as to why he failed to respond to the UDRP. It is quite unfortunate that he should be deprived of his rightfully registered IMI.com domain name due to such an egregious decision.
[similar comment left at DomainInvesting.com]
Is it possible he is just being punished for who he is? Just sayin
Nah a human would never do something like that to another human.
I don’t know how the UDRP process works, so I’m sure the IP counselors could enlighten me and maybe others who visit DNW.
Can the complainant win a UDRP by default if the respondent doesn’t respond, similar to a judgment if the defendant doesn’t show up to court per a lawsuit.?
Panelists still must consider the merits of the case, but if there’s no response, they’ll usually take the complainant’s allegations as true.
Is regular postal mail sent to the domain name owner during the UDRP process?
The panelist string cites his right to take whatever a complainant says to be gospel. So, why wouldn’t these goons try their luck at playing him?
Panelists are in an almost comic evidentiary position. To meet the demands of that position, they are only tasked to address CLEAR cases of targeting.
If the domain is not VARIZONWRLESS.COM or BOBSWIDGETSOFSMALLTOWN.COM, then there should be an audible screech of brakes.
The jury ruled that:
Irving did not come close to proving that it owned a distinctive mark in 1994, as it was clearly required to do by the plain language of the cybersquatting statute. As the Court held: “Irving failed to produce any evidence showing consumer perception of the mark as of 1994, such as consumer surveys…. Irving further failed to produce evidence concerning the effectiveness or reach of its advertising.” (Findings, p.27 (citations omitted).) Thus, Irving wholly failed to prove the first substantial element of its claim.
… Irving did not come close to proving either of the substantive elements of its ACPA counterclaim. Instead, Irving admitted that its sole purpose was not to alleviate consumer confusion as the Lanham Act is intended to do, but instead to take Mr. Black’s property through legal process in order to use it in Irving’s business “to make sure our brand is consistent”. (Findings, p.11; 6/11/19 Tr. at 503:24-504:6.)
Such motivation is not legitimate, by any stretch of the imagination. Irving has caused grievous harm to Mr. Black.
Mr. Black deserves to be compensated for his reasonable attorneys’ fees in beating back Irving’s illegitimate crusade to steal Mr. Black’s property.
Such an award will certainly deter Irving from any such future conduct, and also would serve as a stark deterrent to other overreaching, abusive trademark owners. That was precisely the intent of the ‘reverse domain name hijacking’ provisions of the ACPA.
https://trademarkpro.org/imi-com-domain-hijacking-case/