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WIPO panel screws Domaining.com owner Francois Carrillo out of Ado.com

Panel orders three-letter domain to be transferred to Mexican bus company.

A three-member World Intellectual Property Organization panel has ordered the domain name Ado.com transferred in a bad UDRP decision.

The domain name is owned by Francois Carrillo, the owner of domain blog aggregator Domaining.com. Carrillo also owns Catchy.com, where he sells many three and four letter domain names.

The decision was flawed.

Among the judgments the panel made is that $500,000 was too much to ask for the domain name because Carillo purchased it for $27,500. Not only is the purchase price incorrect (Carrillo also transferred the domain Koz.com to the seller as part of the deal), but panels shouldn’t generally get involved with determining what a fair price is for a domain.

One of the more forehead-slapping claims by the complainant, a Mexican bus company called Ado that uses Ado.com.mx, relates to this price. It claims that the $500,000 asking price is “outrageous when compared to the other domain names offered for sale or rent on the “Catchy.com” website”, according to the decision. It gives five examples:

Domain Name

ado.com 500,000 USD
kuve.com 45,000 USD
paxe.com 50,000 USD
amim.com 20,000 USD
zill.com 80,000 USD

Notice anything different about Ado.com and the other domains? Perhaps the length?

Indeed, it makes perfect sense that someone asking $80,000 for Zill.com would ask $500,000 for Ado.com. But the panelists swallowed this statement about the price as true.

Another bad claim that was accepted by the panel was that the Ado.com logo was similar to that of the bus company. While both logos are red and include the same letters (for obvious reasons), there is little similarity.

The complainant pointed to other supposed instances of logos on Catchy.com that were similar to logos of trademarks. It seems that the complainant cherry-picked these. Even at that, it did a poor job. Consider this “evidence” of similar logos:

coru

Clearly, the logo designer for Coru.com borrowed significant elements from the BOINC logo (or maybe the other way around). But these names aren’t at all similar, so what point does it prove about trying to target trademarks?

What you have here is a panel appraising a domain name and having little understanding (or giving little attention to) the legitimate business model of the domain owner and the context under which he acquired the domain.

The WIPO panelists were Christopher S. Gibson, William R. Towns and David H. Bernstein.

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  1. George Kirikos says

    It looks like we have 3 new candidates for a Domain Dunce award, and a contender for the worst UDRP decision of 2018.

    This panel seems to find it hard to believe that a 3-letter one-word dot-com is valued at *more* than 4-letter non-word dot-coms! What a joke.

    Who are they to dictate how a domain name should be valued on a relative basis??!!??

    I hope Francois files a court case, and wins a massive Reverse Domain Name Hijacking award like Digimedia and others have done.

  2. morganlintoncom says

    Wow – that is absolutely ridiculous and incredibly scary to see WIPO panelists basing the pricing of a 3L .COM on the price of 4L .COMs…Francois lost a huge asset here that IMO is worth $500,000.

    Is there anything we can do to get the ICA involved in cases like this? The bigger problem for all of us here is that bad decisions like this can be used as examples for future decisions…

  3. JZ says

    Do they try and find the dumbest people to be panelists? I hope he takes this to court and tears them a new one!

  4. John says

    You know what I think, I think that logically as Trademarks are used to TAKE domains the UDRP should follow Trademark laws. IF the UDRP shadowed Trademark laws then there would be less contention. The fact is that the UDRP is unfair in that it allows a Trademark to be used to MAKE a UDRP complaint, but does not allow Trademark laws to be used to answer such UDRP complaint. THAT is where the inequality of arms is. I think deliberately.

  5. John says

    I see that in the decision it says ,quote;

    “Complainant has submitted evidence to show that it owns trademark registrations for its ADO mark in Mexico, the United States (“US”), and the European Union (“EU”), dating from as early as October 1989, and with the date of first use dating from as early as June 1935. ADO has been declared as a well-known trademark by the Mexican Institute of Industrial Property (the “MIIP”).”
    END QUOTE

    I believe that this is UNtrue. They HAD 2 TM’s in USA but both expired long time ago and only recently filed more.

    In the EU they have applications from 2015 .THAT is the true picture. I BET that they could not show any good will or reputation in USA or Europe.

  6. Arjun says

    The one thing the complainant had was the pre-dated trademark and everything else were unsubstantiated claims to overshadow the generic identity of ‘Ado’ and a half-baked attempt to discredit respondent’s intentions, which the panel seems to have swallowed right up.

    I don’t blame the complainant…they are allowed to be ridiculous..one has to try right??The panel on the other hand…

    These kind of decisions are like holding a welcome banner for baseless and unfounded UDRP’s and it would probably read:
    “A premium domain is never really out of reach, with UDRP”
    (or)
    “When the facts aren’t on your side, UDRP is..!!!”

  7. Scott Ross says

    An outrageous and dangerous precedent which effectively empowers complainants and price pirates to tactically enlist WIPO panelists as binding mediators in punitive domain name resale valuations. It also invites suspicion of unsavory panelists.

    #InstitutionalPropertyTheft
    #FightThePower

  8. @domains says

    Did Francois get a chance to give a response to the complaint, and did he hire a domain lawyer for this? or does WIPO not work like that? It seems like if a good response was made the domain could have been saved, unless the panelists just ignore common sense.

  9. webber says

    the same as selling your house for 500k , but the buyer says no only 50k and tell you that will kick you out and give you zero if you disagree …

  10. John says

    One of the most appalling and appallingly perverse things I have ever seen in this entire arena since I first set foot in 2001.

    I don’t know much about the ICA, but I hope they not only fight, but fight to really win.

    This “transcends” defective mentality and is nothing less than downright evil. That is the present world in which we live.

  11. Ramiro Canales says

    He has 10 days to file a cause of action to prevent the transfer of Ado.com. After a lawsuit is filed, the wannabe owners may think twice about paying more than $100,000 in litigation fees. Francois, protect your dot!

  12. Reality says

    I’ve been saying for years, but when filing a lawsuit against UDRP decisions, domain owners need to include the panelists and the arbitration forum itself. Panelists personally losing hundreds of thousands of dollars will stop this nonsense. The NAF and WIPO have very dubious jurisdiction and any of their decisions should be challenged in a real court.

  13. R P says

    Seems like one should stay clear of advertising domains for sale in graphical form if other mark holders exist with same word or words. Some of the complainants arguments are similiar to Lanham Act. There was a notable court case back in the 1980s in Texas, Two Pesos vs. Taco Cabana that it reminds me of. Don’t agree with WIPO panel here though.

  14. @domains says

    I agree it should be challenged, unfortunately it takes up so much resources to do so. But for a valuable domain and in this case a good chance of winning, it’s worth it.

  15. John Napoletano says

    NameBio last 5 years shows LLL support between $100,000 and $300,000 so $500,000 may be high but $20,000 to $80,000 range quoted in the complaint is just as low.

    The Logo issue is very interesting given the trend with brandable domains is to display with a logo sample. The complaint shows nuta vs nutella and coru vs boinc as visually similar.

    Should we take this as a warning against creating sample logos? (coru vs boinc)

    Would the use of a basic CSS font in all caps, all lower, or proper case have made a difference? (nuta vs nutella)

    Sales with vs without logo samples, do buyers really use or want them?

      • John Napoletano says

        I think the argument was ADO and Nuta colors and, caps, all lower case suggested bad faith AND the owner did not say he wasn’t a busing company on the website.

        Trademarks are not just words and logos but their combination of such with a service and product yes?

        “ADO Busing” vs “Ado about nothing.”

        I think this could have easily been avoided if the website used a similar color and caps scheme, similar image style, throughout his/her portfolio of domain names. Also state a definition or other generic info when you have a keyword domain name.

        If you have 100+ domains and ask a designer to create 100+ logos, are you going to trademark check them all?

        This is what I am thinking about. The take away for a domainer.

        ado
        noun
        1.fuss, especially about something that is unimportant.
        “on the face of it, this is much ado about almost nothing”

    • F M says

      This is if a brandable, this is a liquid 3 letter .com, and you should always be cautious.

      Same color logo, gave them any fuel for their fire, stupid call on part of owner.

      Sometimes they go the other way, and very step you have taken along the way will come back go bite you.

  16. AbdulBasit.com says

    Sad and shocking decision. Couldn’t agree more with you guys.
    Hope Francois takes them to court and retain the domain.

  17. R P says

    Reading through all these comments I’m surprised to see the ignorance. ADO is a big company. The domain owner put the domain in logo form not dissimilar from TM version offering it for sale.

    In 2000 I got a C&D for using a graphical logo on a website. It used similiar colors to a TM holder and shared a word. Nothing came about it because I changed the logo, but I went to a high priced lawyer and understood both sides of the fence.

    A mistake was made by using the name in graphical form without doing proper due diligence. Lawyers jump all over that. Decision sucked. Potentially couldve been avoided. Live and learn.

  18. Tauseef says

    The panel failed here to look at the mathematical implications of a particular domain name. The LLL when compared to LLLL are just 3.8% in total. And, a brandable LLL like Ado if 10 times costlier than brandable LLLL’s in this scenario should’ve been considered as a fair price.

    • Taylor says

      Price argument has no basis, they have no business going down that road, they are not up to date on daily pricing, and the examples given were lame domain comps. Francois should have attacked back in his defense.

  19. steve says

    What just happened? Wow.
    I assume Francois will appeal?
    What will be the next steps, to avoid the transfer ADO.com to the complainant?
    Will Francois get compensated anything for this domain? I understand he purchased it on the aftermarket for 27 K?

  20. C.S. Watch says

    Christopher S. Gibson and David H. Bernstein have repeatedly been called out as rogue panelists. Their self-interest as trademark attorneys manifests in a willful blindness to the intent and clear language of the UDRP on targeting.
    (https://onlinedomain.com/2015/12/14/legal/camilla-com-udrp-panelist-christopher-gibson-has-also-ordered-the-transfer-of-cafeinternet-com/.
    https://domainnamewire.com/2015/06/29/cybersquatting-lawsuit-workbetter/)

    Everyone knows the intent of the framers, it is in the minutes. That topic was closed by judges, law journals, etc. a decade ago. Taking an ethical stand is a long game. Taking an unethical stand, as Gibson and Bernstein are doing, is a short game. Everyone in the room knows you’re a thief, and so you’re on track to be thrown out by your colleagues and partners like three day-old fish when the house lights come up.

    Any panelist knows that ADO.COM is an asset of inherent value which is used by hundreds of parties worldwide (https://www.tmdn.org/tmview/bookmark?s=qkh5vrdrqmdp0dffp7lptftnup). Any panelist knows that ADO.COM prices out at some point between 15K and 500K (https://namebio.com/?s==YTN5cTOwYTM). Presumably the foregoing is known by the WIPO/DRP, the entity responsible for overseeing these panelists. So why harbor these thieves? Why shelter and enable…and cause this foreseeable harm?

    If hundreds of lemonade stands open up in the shade of a big, beautiful banyan tree, and I buy that banyan tree… does a crybaby who owns just one of those lemonade stands (and not even the first stand) get to steal the deed to my banyan tree?

    Of course not. Cue the house lights and roust the parasites.

  21. Dave says

    The 2018 Dumber Than Dirt Award goes to WIPO panelists Christopher Gibson, William Towns and David Bernstein.

  22. Niraj Tulsyan (@NirajTulsyan) says

    It’s very sad news for every domainers out there and not just for Francois. Basic trade rule is I won’t sale my property if I wish. If I wish I will list it for $1 million. Any prospect has no right deciding the price of domain seller should keep. Mathematically speaking $500k is far less price for LLL.com when compared to the price of LLLL.com, also ADO is generic word so I don’t understand how any one can claim TM on it. What a stupid logic here by WIPO,Evidence of similar logos doesn’t prove anything. If suppose two home has same design it doesn’t mean one can claim the other property is mine because it has the same design.

    • C.S. Watch says

      Righto, the decision hyperinflates three thoughtless choices made by the registrant. 1) The black and red NUTA.COM logo, 2) the red color choice for the ADO.COM logo, and 3) the slanted all-caps in the NIVE.COM logo.

      1. The panel posits that Nutella has rights in NUTA.COM? It is an indefensibly different text string. ‘Nuta’ is itself a dictionary word in Polish, Finnish, Latin, and Irish.

      2. The panel posits that displaying ADO.COM in ‘red’ is suspect? Red is not puce or chartreuse. e.g., this German company ADO, which sells globally and formed in 1954, has a logo virtually identical to the complainant’s. https://www.ado-goldkante.de/en-gb/.

      3. The panel posits that Nike would succeed against NIVE.COM? For slanted all-caps? The ‘reasonable consumer’ is not a Japanese backpack from the 1970s. The reasonable consumer must be able to read. How about Nivea? Nivea formed 50 years before Nike, and is just as globally pervasive.

      What a rabbit hole, right? No wonder the WIPO explicitly instructed panelists not to address trademark infringements which can’t be justly resolved without salaried clerks, mountains of evidence, and months of yammering about ‘reasonableness’ and color wheels. Get. rogue. panelists. off. of. the. rosters.

      Even if we are examining trademark infringment, the only ‘risk of consumer confusion’ is the question raised in the websurfers mind, ‘can’t this Mexican bus company afford ADO.COM?’ And that is a damn valid question, and it is an important consumer good that that question be allowed to be asked, and allowed to be answered in the negative. Go ahead and Google ADO bus kidnaps and actual hijacking if you can’t plot those data points.

  23. joesaba2014 says

    To clarify this issue I must communicate that WIPO should first learn the grammar of the languages and abbreviations of them, as I had to know to write and learn better the US grammars that is not equal to the UK for the domain names in English, there are many words etc., of US that do not exist in the Collins Collins Dictionary of the UK

    Leaving this aside, I hope that Francois Carrillo will do better with what I am going to write here:

    The Mexican bus company does not know what it means in Latin and its abbreviation ADO

    ADO: is a suffix of Latin origin that forms names from verbs with the meaning of ‘action’, ‘effect’, “shaved, revealed, combed” and suffix of Latin origin that forms feminine names from names with the meaning of ‘blow’.
    “Goring, thrust.”

  24. joesaba2014 says

    The three letters as ADO as the abbreviation of what I present days ago I find this today and I announce ADO (Association of Disabled Ocenses) This association is in Spain (EU). There are a thousand key words to give a meaning to ADO which is not valid is that of the Mexican transport company that brought it to WIPO Francois Carrillo. .

    I give an example to a trademark consilidated for many years IBM (
    Incredible business mine) this that I write is not IBM is the same thing that happens with ADO that should not be a UDRP.

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