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Someone wants to trademark “makeOffer” for domain forwarding

by — Policy & Law 3 Comments

It’s a ubiquitous term in the domain industry.

Screenshot of domain listings on Sedo

Someone is trying to trademark “makeOffer” for domain forwarding. This screenshot shows the common use of the term at Sedo, a leading domain marketplace.

An Austin man has filed a trademark application (serial 88833592) for “makeOffer” for “Computer services, namely, domain forwarding services.”

Make Offer is, of course, a common term in the domain name industry for unpriced domain names seeking an offer.

Mark Estabrook operates a site at MakeOffer.site. He submitted a screenshot from the site as his specimen. The page reads:

makeOffer

you landed here because the domain name you typed in your browser’s URL was forwarded here. a person or organization owns the name and wants us to broker it for them privately. it can be yours. to begin the process, tell us which name you are interested in and SUBMIT a reasonable offer. as seller’s agent, we will forward your offer and if seller wants to respond we will contact you.

The trademark application cites a first use date of March 8, 2020.

I emailed Estrabrook yesterday to understand his objective in trademarking the term. I have not yet heard back.

Seattle business guilty of reverse domain name hijacking

by — Policy & Law 1 Comment

Panelist calls the complaint “patently deficient.”

Picture of masked man with the words reverse domain name hijacking

UDRP panelists usually don’t find reverse domain name hijacking if a Complainant represents themselves. But World Intellectual Property Organization panelist Scott Blackmer decided it was warranted in a recent case.

Structure Cellars, which operates a wine tasting room in Seattle, filed a complaint against HouseofPagne.com (short for Champagne).

The registrant of the domain says she registered it and pitched the Complainant on an idea for a business. The two didn’t end up partnering on the venture. There’s a bit of he said, she said and there might be a legitimate dispute outside of the scope of UDRP.

But that dispute doesn’t warrant a cybersquatting dispute.

Blackmer noted that, even without counsel, the Complainant should have realized it was filing a bad case:

Here, the Complaint is patently deficient. The Complainant has trademark applications, not registrations, and it would need proof to establish common law rights. The Complaint does not address the obvious problem that the Complainant’s business was launched months after the Respondent registered the Domain Name. It should have been clear that if (sic) would be necessary to establish the relationship between the parties, but no evidence was submitted on this point. The Complainant is not represented by legal counsel, but these are common-sense rather than highly technical issues, and the Center’s forms, Rules, and Overview provide accessible guidance on these points. The Respondent, who is also not represented by counsel, certainly grasped their implication when completing the Center’s form Response…

…The Complainant may have a business dispute with the Respondent, but the Complainant should not have pursued a remedy designed only to protect trademark rights when it was not prepared to prove that it has such rights and that the Respondent registered and used the Domain Name in contemplation of the Complainant’s trademark rights. This is so fundamental to the Policy that it must be considered irresponsible to ignore.

Workforce.com: The danger of not owning the “best” domain for your company

by — Policy & Law 10 Comments

Confusion when someone buys the better domain.

Logos for Workforce.com and Workforce Software

Workforce Software provides workforce management software using the domain name WorkforceSoftware.com.

For decades, the shorter Workforce.com domain was used by Workforce Magazine to deliver human resources news.

But last year, a competitor to Workforce Software acquired the publisher of Workforce Magazine. It then changed the use of Workforce.com from human resources news to promoting its own workforce management software, rebranded as Workforce.com.

Suddenly, Workforce Software had a big problem: confusion.

It didn’t have the best domain for its business, and now a competitor was using the best domain.

Workforce Software filed a cybersquatting complaint under UDRP against Workforce.com and lost.

The confusion is real. For about a minute while researching this case, I wondered if Workforce Software had acquired Workforce.com at the last minute. Take a look at their logos in the image. They both have lowercase logos with a blue icon in them. The icons are fairly similar but flipped.

This is not a case of cybersquatting, though. It’s another example of not owning the best domain for your company and having it come back to haunt you.

I usually tell people that if the better domain is currently in use in a non-confusing way, you’ll be OK registering the second-best domain. I urge caution when the best domain is just a parked page that might be sold to someone else.

But in this case, even though Workforce.com was being used in a non-infringing way, it was sold.

It reminds me of a similar issue a friend ran into. He registered a domain in the form exampleSoftware .com, just like this domain. Then someone bought example .com to market a sex toy. His friends called him up, saying they didn’t realize he had gotten into that business.

It will be interesting to see if Workforce Software takes this issue to the courts. While it’s not cybersquatting under UDRP, there might be a trademark issue. Then again, Workforce is a very generic word to use as a brand for workforce management software.

This domain dispute might be better in the courts

by — Policy & Law 0 Comments

The Complainant has a right to be upset but will have difficulty showing trademark rights.

Screenshot of the website at UrgentCareLeominster dot com

This website tries to pass itself off as associated with an urgent care facility in Leominster, LA. It inserts a campaign to collect health insurance leads.

UMass Memorial HealthAlliance has lost a UDRP for UrgentCareLeominster .com at World Intellectual Property Organization.

The hospital chain has a right to be upset about how the current owner of the domain is using it. The domain owner has created a copy of a former website used by the Complainant (seemingly on the same domain), only inserting a lead gen campaign for health insurance. It includes a picture of the Complainant’s facility and even its UMass Memorial HealthAlliance Hospital logo (with a typo).

The healthcare company lost the dispute because it didn’t show that it has common law trademarks in Urgent Care Leominster. Leominster is a city in Louisiana. I suspect the panelist, who invited the Complainant to refile with more information about the common law mark, would have accepted even nominal evidence.

Still, it seems like it would be a challenge to show common law rights in a very descriptive term. Should companies be able to have trademark rights in “Urgent Care (city name)”? That’s kind of like having trademark rights in “(city name) Hospital”.

I suspect the Complainant chose UDRP for this dispute because it is fast and affordable. It might want to file a lawsuit instead. It clearly has a case against a domain owner who is up to no good, even if it doesn’t exactly fit under UDRP.

Wine spat: Brewery and vineyard tries reverse hijacking SpringGate.com

by — Policy & Law 3 Comments

Pennslyvania brewery files bad case with WIPO.

Picture of masked man with the words reverse domain name hijacking

A Pennslyvania brewery and winery has been found guilty of reverse domain name hijacking in a dispute over SpringGate.com.

Schoffstall Farm, LLC, which does business as Spring Gate Vineyard, Winery and Brewery, attempted to get the domain name in a cybersquatting dispute at the World Intellectual Property Organization.

The company has traded as Spring Gate since 2014. But the domain’s owner, Ashantiplc Limited, registered the domain name in 2006. Therefore, it could not have registered the domain name in bad faith to target the non-existent brand.

Before filing the UDRP, the Complainant sent a demand letter to Ashanti. Domain attorney John Berryhill responded to the demand letter and noted that his client registered the domain before Schoffstall Farm had any trademark rights in the term. He also requested that the Schoffstall Farm include his response in any UDRP filing.

But the Complainant didn’t include this response. Instead, it argued in the UDRP that the domain was acquired in 2018. While it’s not clear why it chose this date, this is when the registrar Fabulous (where the domain is registered) changed its accredited name to Sea Wasp.

The Complainant also argued “retroactive bad faith”.

In finding reverse domain name hijacking, the panel wrote:

The Complainant is professionally represented in this matter and, in the opinion of the Panel, knew or ought to have known that it had no reasonable chance of prevailing in this proceeding for the reasons set out above. The Complainant produced no material evidence that the Respondent acquired the disputed domain name in 2018 and gave no reasonable explanation for its assertion to that effect. The Panel is particularly perturbed by the Complainant’s failure to exhibit the Respondent’s email dated November 28, 2019, stating that it had acquired the disputed domain name in 2006, having exhibited its own letter of the previous date and having been expressly requested by the Respondent to include its reply. The Panel is also of the view that the Complainant’s purported reliance on the Octogen line of cases implies its clear awareness that its case was fundamentally flawed.

Tucker Arensberg, P.C. represented the Complainant in the reverse domain name hijacking. John Berryhill represented the Respondent.

 



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