Domain Name Wire | Domain Name News & Website Stuff

Domain Name Industry News and Website Stuff

Featured Domains

Gene therapy company tries reverse domain name hijacking

by — Policy & Law 0 Comments

Company went after domain name used by Houston medical practice.

Image of website for RegenX Health in Houston

This Houston medical practice is clearly not cybersquatting on a gene therapy company.

Gene therapy company Regenxbio Inc. tried to reverse domain name hijack the domain name RegenXHealth.com, a National Arbitration Forum panel has found.

RegenXHealth.com is used by a Houston men’s health medical practice.

The two companies have been battling over trademarks at the U.S. Patent and Trademark Office, a fact that Regenxbio failed to disclose in its complaint. It’s also quite clear that the respondent has a legitimate interest in the domain–it’s not like it set up a practice in Houston with signage and branding as an elaborate cybersquatting ruse.

In finding reverse domain name hijacking, the three-member panel wrote:

The Panel concludes that the evidence supports a determination that Complainant engaged in reverse domain-name hijacking. In reaching this determination, the Panel notes that: (1) Complainant asserted that Respondent, through the use of a privacy shield is “unknown” despite ample evidence, including the pending proceedings at the PTO and access to the Respondent’s website, that Complainant knew the Respondent’s identity; (2) Complainant’s argument that the parties are competitors, insofar as they both provide medical-related services, is disingenuous at best, given the highly differentiated nature of the services; and (3) Complainant’s assertion that Respondent’s website uses and displays Complainant’s REGENXBIO mark is not supported by the evidence

In view of the above, the Panel concludes that this proceeding was brought in bad faith and warrants a finding of reverse domain-name hijacking under Rule 15(e).

Share6
Tweet
Share
Email

DomainTools appeals injunction decision in .NZ case

by — Policy & Law 4 Comments

Cyber security service wants injunction thrown out.

Whois data and security service DomainTools has appealed a preliminary injunction brought against it by .NZ registry Domain Name Commission Limited (DNCL).

DNCL sued DomainTools in June 2018 over DomainTools’ collection and publication of .NZ Whois data. It argued that DomainTools’ actions violated DNCL’s terms of service, which are provided with each Port 43 Whois query result.

A Federal District judge granted an injunction that ordered DomainTools to not collect any more .NZ Whois records and to remove any previously published records while the lawsuit proceeded.

DomainTools appealed the decision to the Ninth Circuit Court of Appeals.

In its opening brief (pdf), DomainTools argues that DNCL’s terms of service were not binding on DomainTools because of how the terms of service were published. Including the terms with each Whois result is considered a “browsewrap” agreement; the other party does not check a box or make any other affirmative action to agree to the terms.

DomainTools notes that “The lower court acknowledged that so-called “browsewrap” agreements like DNCL’s terms of use are not enforceable unless “the user has actual or constructive knowledge of the [terms of use].” In the court’s view, however, DomainTools’ repeat queries established sufficient knowledge.”

The company says that the lower court’s view should not apply because all of DomainTools’ Whois queries were “conducted by an automated program on a dedicated computer-to-computer channel acting without human intervention.”

It also says that the terms were written in a way that didn’t suggest that DomainTools’ use of the data violated the terms.

DomainTools wants the court to weigh the negative impact to DomainTools’ customers against the impact on .NZ registrants whose information is published.

Share5
Tweet
Share
Email

AddictingGames.com sues Addicting.com, claiming cybersquatting

by — Policy & Law 13 Comments

Addicting.com parked page filled with links for games.

Addicting Games screenshot

The popular online game site Addicting Games filed an in rem lawsuit (pdf) yesterday against the domain name Addicting.com, claiming that the owner of the domain is cybersquatting. Addicting Games is owned by Bill Karamouzis, who was on DNW Podcast #178.

The lawsuit points out that almost all the pay-per-click links on Addicting.com, which is parked at Uniregistry, are related to games. The first link is “Addicting Games”.

One big question is when the current owner of the domain acquired it.

The lawsuit alleges:

On February 21, 2018, the registrant of the domain Addicting.com was changed from Domain Hostmaster, Customer ID : 85528474484681 to Savvy Investments, LLC Privacy ID #735277, and the registrar was changed from Fabulous.com Pty Ltd to Sea Wash, LLC.

Sea Wasp, LLC is just the business name for Fabulous, so the registrar didn’t actually change.

The Whois record is private going back to the end of 2011.

From at least as early as 2004 until the record was private, the domain was owned by a registrant in Vietnam. The domain has been parked with Uniregistry since at least 2013. So I suspect that there was not an ownership change this year, although it’s possible.

There’s a chance that the domain is currently owned by the same entity that owned it since at least 2004, which is before Addicting Games existed.

That said, the links on the parked page (which have been there since at least 2013) are definitely problematic and could present a trademark problem for the domain owner.

It will be interesting to see if the owner of Addicting.com defends the domain name in court.

David Weslow of Wiley Rein LLP is representing Addicting Games.

Share8
Tweet
Share
Email

Ado.com domain dispute settled

by — Policy & Law 6 Comments

Settlement overturns bad WIPO decision.

A World Intellectual Property Organization (WIPO) wrong has been righted.

In February 2018, a three-member WIPO panel made an atrocious ruling that ADO.com should be transferred to a Mexican bus company.

Ado.com is owned by Francois Carrillo, the owner of Domaining.com.

Carrillo subsequently sued to halt the transfer of the valuable domain name.

Last month the parties settled. The settlement order (pdf) reads:

…In light of the Parties’ agreement that (i) Plaintiff’s interests in respect of the ado.com domain name are legitimate; (ii) Plaintiff did not register or use the ado.com domain name in bad faith; (iii) Plaintiff’s registration and current use of the ado.com domain name do not violate Defendant’s rights under the Anticybersquatting Consumer Protection Act, 15 U.S.C. §§ 1114, 1125(a) and 1125(d)…

So the settlement overturns a mistake by the WIPO panel. That said, the court order states that each party will bear its own costs and attorneys’ fees. If indeed Carrillo came out of pocket on legal costs to settle the claim, then the wrong has been only partially righted.

Update: I connected with Carrillo today via email:

Now that the case is settled, what are your plans for the domain?

No special plans. Sell the domain if I receive an appealing offer, or use it myself further if I have a service idea that can benefit of this brand.

The settlement says that both parties are paying their own attorneys’ fees. How much did it cost you to defend your domain?

All court cases are expensive ( in comparison defend an UDRP case is insignificant), and this case was no exception. But, I thought it was important to not only make sure that I kept ado.com but to also obtain a court order clearing me of any suggestion that I violated the UDRP. This has been done!

What advice do you have for domain owners who lose a wrongly-decided UDRP?

Talk to an attorney who has handled court cases following wrongly-decided UDRP decisions so that you know your options. But, more importantly, get involved with the ICANN Working Group that is currently reviewing the UDRP so that it can be improved to lessen the chances of finding yourself in a similar situation.

(Hat tip: GOTW.com)

Share8
Tweet
Share
Email

Company tries to hijack PlugandPlay.com domain name

by — Policy & Law 4 Comments

Venture capital and accelerator company tries to get PlugAndPlay.com through cybersquatting dispute.

VC tried to get PlugandPlay.com domain.

A California company has been found to have attempted reverse domain name hijacking of the domain name PlugAndPlay.com.

Plug & Play, LLC, a California venture capital firm that runs 50 accelerators around the world, tried to get the domain name PlugAndPlay.com from its rightful owner by claiming he was cybersquatting. The Complainant uses the domain name PlugandPlayTechCenter.com.

The case was going to be difficult to win even without looking at the details: “plug and play” is a common technology term that has been used extensively in marketing.

But it’s the details that led to World Intellectual Property Organization panelist W. Scott Blackmer determining that Plug & Play, LLC filed the case in abuse of the policy. The key issue is that the Complainant didn’t even exist when the domain owner registered the domain name. This means it was impossible for the domain owner to register the domain in bad faith to target the Complainant.

Blackmer wrote:

A finding of RDNH is warranted, for example, when a panel finds that the complainant (especially one represented by counsel) should have recognized that it could not succeed on one of the three elements of the complaint under any fair interpretation of the available facts or brings a complaint based “on only the barest of allegations without any supporting evidence” (id.). That is the case here, where the Domain Name, based on a common English phrase, was created before the Complainant business was even formed, and the Respondent already had its own established business with a corresponding name. The Complainant failed to investigate these obvious difficulties, and its Supplemental Filing then overlooked facts (prominently, the relationships between the successive Domain Name registrants) that were available even in the Response and its attachments. Hence, the Panel grants the request for a finding of Reverse Domain Name Hijacking.

The domain owner also alleged that Plug & Play tried to mislead the panel by omitting emails showing that the Complainant initiated discussions about buying the domain name, rather than the other way around. It appears that the domain owner offered to sell the domain for $100,000-$150,000, which seems like a very fair price for this domain.

Share16
Tweet
Share
Email