The domain could already be subject to a UDRP.
Domain investors review a lot of data before buying expiring domain names. The more expensive the domain, the more data they check.
Sometimes I’ll Google the domain name to see how it’s used. I might even check a trademark database if the name seems like it might be a trademark. What I’ve never thought to do is see if the domain is subject to a current UDRP case.
After all, if a company decided to file a UDRP against a domain that was about to expire, wouldn’t they at least work with the registrar to make sure the renewal fee was paid?
Apparently not.
Turn Invest Group Ltd. bought SolVerde.com for $665 on NameJet in January after it expired. But the domain was already subject to a UDRP filed in November 2020. Despite being notified by the registrar of the pending expiration, neither World Intellectual Property Organization (WIPO) or the Complainant, casino company Solverde, S.A., apparently did anything about it.
So the domain expired and Turn Invest Group won a competitive auction.
According to the WIPO panel, the domain buyer should have searched to see if there was an active UDRP:
…The Respondent is a sophisticated domain name investor, and has been in this business since 2009.
Despite providing a detailed declaration, the Respondent did not provide any details of searches or due diligence the Respondent undertook prior to acquiring the disputed domain name at auction. A Google search of “SOLVERDE” conducted by the Panel resulted in many search results for the Complainant on the first page of the search results. Moreover, if the Respondent had searched the UDRP SEARCH database at “www.udrpsearch.com”, the Respondent would have seen that the disputed domain name was subject to an “active case”…
OK, I can buy searching Google to see if these two Spanish dictionary words are a well-known trademark used exclusively by one company. But checking for a UDRP?
The panel found in favor of Solverde, S.A.. Now, Turn Invest Group is suing to block the transfer.
The company filed a lawsuit (pdf) in U.S. District Court in Florida yesterday. It’s asking the court for declaratory relief that ownership of the domain is not infringing on Solverde S.A.’s trademarks and a finding of reverse domain name hijacking.
Howard Neu is local counsel for the plaintiff.
It will be interesting to see if the Respondent to the UDRP succeeds ,and I hope they do. The domain is not being “used” in bad faith ,and indeed unless the Complainant has TradeMark covering every Goods & Services in every Country, then why should not a third party be entitled to use the domain for a different service/goods than the Complainant ?. There should be no Monopoly on any name, as was ruled in a Case in the European Court reference ,I think, the Intel ™ Mark.
There are at least 4 different companies around the world (Germany, UK, Uruguay, Portugal) which are the Trademark-owners for the exact term “SOLVERDE”.
Why should this company in Portugal have the exclusive rights to the .COM-Domainname ? What about the other companies who own a Trademark for this term ?
All these UDRP-lawyers need to wise up.
https://www.tmdn.org/tmview/welcome#/tmview/results?page=1&pageSize=30&criteria=I&basicSearch=solverde
I may do something similar, as the bootlicking communists at Godaddy have hijacked a name of mine, despite my having a trademark on it. I am planning on suing Godaddy and will pursue all legal means of reacquiring the name from anyone else that comes into possession of it.