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UDRP works. Here’s how to fix it.

by — Policy & Law 2 Comments

The cybersquatting policy works almost all of the time. Here’s how to stop most bad cases in their tracks.

Blue image with the letters UDRP

A couple of weeks ago, I wrote a post entitled simply “UDRP works.” I explained that UDRP does exactly what it was designed to do in the vast majority of cases: quickly and affordably resolve clear-cut cases of cybersquatting.

Of course, vast majority doesn’t mean all. UDRP panels sometimes get cases wrong. And even when they correctly find for the Respondent, domain name owners have to hire a lawyer to defend their domain.

So it works, but it could be even better. Hence my contradictory headline for this story.

I review hundreds of UDRP decisions every year. From what I’ve seen, adding a simple step to the UDRP process would eliminate the vast majority of bad cases. So eliminating the vast majority of bad cases, adding to the vast majority of easily-decided cases, and UDRP would be darn-near (but not quite!) perfect.

Where many Complainants go wrong is thinking they have rights to a domain name because they have a trademark even though the domain registrant acquired the domain before they got trademark rights. This could be cleared up with an explanatory note in UDRP instructions with this added question:

Do you claim trademark rights to this domain name that pre-date the domain owner’s registration of the domain name?

There are some outlier cases in which trademark rights don’t need to pre-date the registration, such as when a company’s new product or product name is highly anticipated or mentioned in the press. But most of the time, this question would do the trick. It would eliminate most ill-conceived cases that result in reverse domain name hijacking findings.

If this still doesn’t stop the bad filings, an added step could be to make filers pay a deposit if their answer to the question is ‘no’. They will forfeit this deposit to the domain name owner if they lose the case.

These common-sense changes would make UDRP better. It would still allow valid cybersquatting complaints to be quickly and cheaply resolved while also protecting valuable domain assets from spurious claims.

 

UDRP works

by — Policy & Law 2 Comments

Let’s not lose sight of the fact that UDRP works correctly almost all of the time.

Blue image with the letters UDRP

My short headline for this article is to make a point: most of the time, the Uniform Domain Name Dispute Resolution Policy (UDRP) works as intended. It helps brand owners take down obvious cases of cybersquatting faster and cheaper than filing a lawsuit.

Consider some of these recent UDRP decisions in favor of the trademark holder:

AllstateGroup /.online and .xyz
StareFarmCU /.com
Lockheed-MartinUSA /.com
PfizerGenotropin /.com
IBMHP /.com

You probably don’t need to read these decisions to know that the Complainant won the case. And this is what the vast majority of UDRP decisions look like.

Last year at World Intellectual Property Organization, the largest forum for UDRP cases, fewer than 150 of about 3,000 decided cases ended in the Respondent’s favor. Many other cases were dropped after the domain owner handed over the domain. (Note that the WIPO data also ccTLD cases that are heard under unique rules, but the numbers should be fairly close.)

So 95%-100% of the time the case is found in the Complainant’s favor and, based on my review of many cases, I suspect that almost all of these cases are correctly decided.

I report about the edge cases. The cases where a dispute is denied or the panel finds reverse domain name hijacking.

These cases are a big issue and need to continue to be reported on. But I think it’s worth taking a step back from time to time and recognizing the role of UDRP in settling cybersquatting disputes. In the vast majority of cases that the panelists adhere to the purpose and rule of UDRP, the process saves both the trademark holder and the domain name owner from unwanted expenses.

I think the UDRP forums can improve the outcomes of incorrectly decided cases and make simple changes to reduce misguided filings. But, for the most part, UDRP works.

Facebook wins GameRoom.com dispute

by — Policy & Law 2 Comments

Company that used the domain MyGameroom.com tried to get Gameroom.com through a cybersquatting dispute.

Screenshot of Facebook Gameroom

A company went after Facebook’s Gameroom.com domain name, which it forwards to a page for Facebook Gameroom.

Facebook has successfully defended a cybersquatting dispute against its domain name Gameroom.com.

The social media company acquired the domain name in 2016 when it launched Facebook Gameroom.

My Gameroom LLC filed the dispute. It uses the domain name MyGameroom.com for its online games business. The company argued that Facebook was cybersquatting with its use of the superior Gameroom.com domain name.

The Complainant relied on a registered trademark for My Gameroom that it filed for in 2018, and claimed common law rights dating to 2016. However, it provided scant evidence of its use in 2016.

Facebook’s lawyers said they did extensive research around the brand prior to adopting it to ensure it had no trademark issues. It also pointed out that the term “game room” is clearly descriptive.

National Arbitration Forum panelist Darryl Wilson agreed with Facebook and denied My Gameroom’s claim. He declined to find that the case was brought in abuse of the administrative proceeding, i.e. reverse domain name hijacking.

Tamara S. Pester, LLC represented My Gameroom LLC. David Taylor/Jane Seager of Hogan Lovells LLP represented Facebook.

Clean Slate Credit Solutions tries reverse domain name hijacking

by — Policy & Law 0 Comments

Company filed cybersquatting complaint against domain name registered well before it had rights in corresponding trademark.

The words "Reverse domain name hijacking" and a computing image of a skull

Clean Slate Credit Solutions has been found to have tried to reverse domain name hijack the domain name GotCredit.com.

The company owns the domain name GotCredit.biz and has a registered trademark for “Got Credit?”

But the owner of GotCredit.com registered the domain and started using it years before Clean Slate Credit Solutions had rights in the mark. Thus, he could not have registered it in bad faith, according to the UDRP.

Clean Slate Credit Solutions sent cease & desist letters to the domain owner. As a result, the owner took down a blog on the domain about credit, despite having used the term before the Complainant. He changed the use to a site for filling out surveys.

Clean Slate Credit Solutions pushed forward anyway.  In finding reverse domain name hijacking, the three-member National Arbitration Forum panel wrote:

…Respondent argues that Complainant knew Respondent’s registration and use of the disputed domain name predated Complainant’s registration of the GOT CREDIT? mark. Complainant provides screenshots of a series of email exchanges with Complainant’s counsel, where Respondent lays out the timeline it details for the Panel. Respondent registered the disputed domain name in October 2011. See Resp. Ex. A2. Eight years later, Complainant registered the domain name gotcredit.biz domain name on Sep. 9, 2019, and submitted a trademark application for the GOT CREDIT? mark on Oct. 31, 2019, which was registered on May 5, 2020. Later that year, Complainant began sending Respondent cease-and-desist letters. In a good faith effort, Respondent removed all content from the disputed domain name’s resolving website that could be construed as infringing on Respondent’s mark. Complainant has refused to accept this action, and has continued to demand the disputed domain name from Respondent. Complainant offered Respondent $3500 for the disputed domain name, a price Respondent finds insultingly low. See Resp. Exs. E1 – E3. Thus, the Panel finds that Complainant knew or should have known that it was unable to prove that Respondent lacks rights or legitimate interests in the gotcredit.com domain name, nor could it prove that Respondent registered and is using the disputed domain name in bad faith.

The Panel finds that there is clear evidence that before any notice of a dispute about the disputed domain name, and indeed well before Complainant even began using its mark in commerce, Respondent was using the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use.  Counsel should have known that she could not prove either the 4(a)(ii) or (iii) elements of Complainant’s case, yet proceeded to institute this dispute nonetheless…

Delisa N. Purchase represented the Complainant. The Respondent appears to have been self-represented.

Owner of Gainvest.co tries to hijack Gainvest.com

by — Policy & Law 0 Comments

Company files cybersquatting complaint against domain registered nearly two decades before it existed.

Picture of masked man with the words reverse domain name hijacking

A World Intellectual Property Organization panelist has found that Gainvest Legal Corporation tried to reverse domain name hijack Gainvest.com.

Gainvest Legal Corporation uses the domain name Gainvest.co for its business services company.

John Sozanski of Gainvest, LLC registered the domain name in 1999, about 20 years before the Complainant existed. Hence, it was impossible that the Respondent registered the domain name to target the Complainant and it’s clear that it was not registered in bad faith.

Gainvest Legal Corporation first tried to buy the domain name. It rejected the Respondent’s $10,000 asking price, noting that “we are a poor startup that just started in March 2019.”

It subsequently filed the UDRP.

Panelist Robert Badgley noted that Gainvest Legal Corporation was represented by counsel and should have known better. (The decision states that the company was
internally represented, but it appears that the company’s CEO is an attorney.)

Badgley wrote:

This Complaint was doomed to fail, given Respondent’s apparently continuous ownership of the Domain Name long before Complainant had any trademark rights. There is absolutely no reason to doubt Respondent Sozanski’s denial of ever having heard of Complainant or its trademark prior to August 2020, when Complainant’s representative Ali approached Respondent about a purchase of the Domain Name.

The fact that a complaint under the UDRP is doomed to failure, however, does not necessarily compel a finding of Reverse Domain Name Hijacking (“RDNH”). A claim of RDNH should be evaluated under the particular circumstances of each case in which it is raised. One factor sometimes tending to support a finding of RDNH is if a complainant is represented by counsel. In this case, Complainant was indeed represented by counsel.

Another aspect of this case that supports a finding of RDNH is that Complainant, through counsel, not only brought a doomed case, but made a series of utterly frivolous allegations along the way. For instance, Complainant asserts, with no argument or evidence, that Respondent’s “primary purpose” vis-à-vis the Domain Name was to disrupt Complainant’s business. Complainant also chides Respondent for registering the Domain Name in 1999 but failing to adopt a corresponding business name until 2008. This argument misses the vital point that Complainant itself did not exist and was not using GAINVEST as a trademark for another 11 years after 2008. Complainant then asserts that “it can be implied that the domain name was registered by Respondent primarily for cybersquatting, to disrupt the business of Complainants while obtaining payment for that disruption.” These (and other) arguments raised by Complainant are specious, and support a finding of RDNH.

The best that can be said in defense of Complainant’s motives here is that Respondent never made much, if any, actual use of the Domain Name for more than 20 years. Even so, the accumulation of frivolous arguments, including those noted above, by Complainant are sufficient to tip the balance in favor of a finding that this Complaint was brought in bad faith.

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