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HugeDomains gets reverse domain name hijacking win

by — Policy & Law 5 Comments

Company opted to file a UDRP instead of paying just $2,695 to buy the domain.

Picture of hundred dollar bills being flushed down the toilet

An online crystals seller could have bought a domain for $2,695. Instead, it spent nearly that much to lose a UDRP against the domain.

Domain investment company HugeDomains.com has successfully defended one of its domain names in a cybersquatting dispute, and the company that brought it has been found guilty of reverse domain name hijacking.

A company that sells rocks and crystals at rockncrystals.com.au filed the dispute.

The company wanted to get RockNCrystals.com when it expired but HugeDomains beat it on the drop. It then tried to buy the domain from HugeDomains for $1,000. The list price was apparently $2,695.

At this point, the Complainant filed a trademark application in the United States and filed the UDRP.

It told the World Intellectual Property Organization that not getting the domain would force it “to effectively kill our company and start a new one.”

The panel was not amused by this silly claim. It pointed out that the Complainant already has a domain it has been using for its site.

I also wonder why the company chose to file a poorly-argued UDRP for $1,500 (it actually paid more because HugeDomains chose a three-personal panel) when it could have bought the domain for only a bit more.

The panel found that the filing was insufficient on all three elements of UDRP and that it filed the case in abuse of the policy.

Capital One loses data breach domain fight

by — Policy & Law 3 Comments

Case shows the limits of cybersquatting dispute policy.

Logo for Capital One

Capital One (NYSE: COF) has lost a cybersquatting dispute it filed against someone who registered a domain name after a massive data breach was disclosed this summer.

The company filed the dispute under the Uniform Domain Name Dispute Resolution Policy (UDRP) against CapitalOneDataBreach(.)com, a domain that was registered on July 30. That’s about two weeks after the breach hit the news. Capital One filed the dispute one week later, on August 6.

At the time, the registrant of the domain hadn’t started using the domain name yet.

The domain registrant, a Georgia man, said that he registered the domain with no specific intention to monetize the Disputed Domain Name.  He saw the media reports of the data breach, and he thought he could provide to the public information about the breach “…and maybe run ads or sometime later or redirect traffic to [his] business website.”

The admission that he might run ads or profit from the site was a silly one to make, yet the panel noted that he is not yet running ads on the site. After receiving the complaint, the man created a simple website about the data breach that does not include ads.

Panelist Kendall C. Reed of National Arbitration Forum determined that this case is one of potential nominative fair use.  While Capital One jumped on the registrant’s admission that he might run ads on the site, Reed noted:

The Panel disagrees. Respondent did not say that he would do these things, only that he thought he might, and as noted above, he has not followed through with these thoughts. What Complainant states is a certainty is actually a mere possibility.

This case shows how it can be difficult to file a UDRP against a newly-registered domain name; a registrant can make the defense that has plans for the site that haven’t been put into action yet because it takes time to create a website.

Reed suggested that Capital One can refile the case should the domain owner add ads to the website.

Capital One has a pending case against the owner(s) of other data breach domains. When I visited those, I saw ads or got a malware notification, so Capital One might win that dispute.

AgSpace Agriculture tries to reverse hijack domain name

by — Policy & Law 1 Comment

Company filed a UDRP to try to get the unhyphenated version of its domain name.

Screenshot of the Ag-Space.com website

Farming tech company AgSpace filed a case in abuse of UDRP in an effort to get AgSpace.com. It uses the domain Ag-Space.com.

Farming technology company AgSpace Agriculture Limited has been found to have engaged in reverse domain name hijacking in its effort to get the domain name AgSpace.com. It uses the domain Ag-Space.com.

The company threatened the owner of the domain prior to filing a UDRP with World Intellectual Property Organization (WIPO). It urged the owner to accept a trivial cash offer or it would face a UDRP.

The domain owner, who registered the domain in 1998 (well before the Complainant existed) told the Complainant that it didn’t have a case.

But AgSpace filed the dispute anyway, and the panelist had an easy time finding that the case was filed in abuse of the policy.

Panelist Flip Jan Claude Petillion noted that:

In the present case, the Complainant expressly acknowledges in its Complaint that “the Disputed Domain Name was registered prior to the registration of AgSpace Agriculture limited”. The Complainant further provides “our case is based principally on the fact that the Respondent has no bona fide or legitimate use of the domain name of our trademark and has refused to release the domain or respond to our offer to meet the respondent’s reasonable out-of-pocket costs related to the domain”.

The panelist determined that AgSpace failed to show that the domain registrant lacked rights or legitimate interests in the domain and that it failed to show that it was registered in bad faith. In finding reverse domain name hijacking, the WIPO panelist wrote:

The mere lack of success of a complaint is not in itself sufficient for a finding of RDNH. In the present case, however, the Complainant knew it could not succeed as to the second and third element of the Policy as the Complainant had clear knowledge of the Respondent’s commercial identity corresponding to the Disputed Domain Name and the lack of bad faith by the Respondent. The Complainant expressly acknowledged that it knew that the Respondent had registered the Disputed Domain Name well before the Complainant had established its business or acquired its trademark rights. As a result, the Complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the Complaint. The website connected to the Disputed Domain Name has also never made reference to, let alone target, the Complainant or its mark and there are no indicia that would demonstrate that the Respondent intended to disrupt the Complainant’s business or create confusion with the Complainant’s trademark for commercial gain (see section 4.16, WIPO Overview 3.0).

AbdulBasit Makrani gets reverse domain name hijacking win

by — Policy & Law 15 Comments

Panel finds in domain investor’s favor over AguaDulce.com domain.

Reverse domain name hijacking graphic

Pakistani Domain name investor AbdulBasit Makrani has successfully defended his domain AguaDulce.com in a UDRP and the panel found reverse domain name hijacking.

Sociedad Puerto Industrial Aguadulce S.A. operates a marine terminal in Colombia. It uses the domain name PuertoaAguaDulce.com.

Agua Dolce translates to “Sweet Water” in Spanish.

The Complainant made a number of arguments in its case. One of these was a search engine printout showing its website in response to a search for aguadulce. But the result was way down the SERPs and there are lots of other sites that show up for the term. The panel wrote:

What both Parties’ searches do demonstrate, taken together, is that a range of alternative meanings and possible uses of the term “aguadulce” (or “agua dulce”) exist, the majority of which do not denote the Complainant or its mark. There is considerable emphasis to be found on these alternative meanings or uses in the Respondent’s search and this provides adequate support for his case that he was not aware of the Complainant when he came to register the disputed domain name and that he did so to take advantage of its dictionary meaning.

This reminds me of something John Berryhill said on DNW Podcast #244: Google is sometimes the best trademark database.

The Complainant also pointed out that the Respondent has been on the receiving end of three UDRP filings at WIPO, where the instant case was filed. It neglected to point out that the Respondent won two of the cases (and didn’t respond to the first).

The port owner also said the Respondent has been subject to proceedings at another UDRP administrator, but the panelists could not find any such cases.

Makrani said this was a case of a company trying to buy a domain and then resorting to UDRP after it didn’t like the price.

The majority found that the case constitutes reverse domain name hijacking.

Howard Neu represented AbdulBasit Makrani. Brigard & Castro represented the Complainant.

Writing about the case on his blog, Makrani stated that the Complainant’s law firm “are bunch of morons and Reverse Domain Name Hijackers who not only mislead the panelists by falsely mentioning that I was involved in other cases whereas they failed to provide any such reference but they also concealed the entire proceedings and the final outcome of my last two UDRP decisions which went completely in my favor.”

Second edition of ‘Domain Name Arbitration’ published

by — Policy & Law 8 Comments

An updated guide on UDRP.

Book cover from Domain Name Arbitration by Gerald Levine

Domain Name Arbitration, Second Edition by Gerald Levine

Domain name attorney Gerald Levine has published Domain Name Arbitration, Second Edition.

Levine published the first edition in 2015. That means thousands of additional UDRP cases have been decided in the interim that he was able to draw upon to update the book.

In the forward to the book, Levine notes that, in the second edition, “I have rewritten many of the sections; and where I have not added I have tweaked and refined my thoughts about the jurisprudence to make the principles, factors and concepts of the law more accessible.”

He has also included an expansive index.

The book is not light reading. It is designed for lawyers and intellectual property professionals to understand the nitty-gritty of UDRP. Many panelists would benefit from reading it, too.

Levine is perhaps the best writer on the topic of UDRP and anyone needing an in-depth understanding of UDRP should read it.

The book is available on Amazon.com.