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Hire a domain attorney, exhibit #3205

by — Policy & Law 2 Comments

A properly-argued UDRP would have likely negated reverse domain name hijacking and possibly ended in a transfer.

The initialism UDRP for "uniform domain name dispute resolution policy" in black and blue on a black and blue background

My brother is a corporate attorney. When I ask him a legal question outside of his specialty, he tells me I might as well ask someone on the street. Law is a specialized field, and an expert in one area isn’t often best qualified to handle cases in another area.

I bring this up often when I see a poorly argued UDRP or a UDRP in which a domain name attorney versed in UDRP jurisprudence could have helped one of the parties.

Such is the case in a World Intellectual Property Organization (WIPO) case for securus.com. The domain owner didn’t respond, but panelist Tony Willoughby found in favor of the domain owner and said it was a case of reverse domain name hijacking.

At issue is the domain being registered in 1995 before the Complainant Securus Technologies, LLC had trademark rights in the term. In finding reverse domain name hijacking, Willoughby wrote:

If the Complainant’s representative had researched the Policy and its jurisprudence properly (e.g., by studying the guidance materials readily accessible on WIPO’s website), the Complaint would not likely have been filed and certainly not in its current form, bereft of any argument (still less evidence) to overcome the fundamental defect identified above. The Complainant would have been told that its complaint needed to be followed up in another forum (such as a court).

That “fundamental defect” was the registration dates. The domain registrant couldn’t have registered the domain in bad faith in 1995 to target an as-yet-non-existent trademark.

The case should not have been filed without addressing the issue, and the Complainant could have easily addressed it. While it’s uncertain, there’s a good chance the domain was acquired by another party last year.

Historical Whois records show the same owner over the last couple of decades. Then a June 30, 2020 record shows the domain pending transfer. The domain moved from Network Solutions to Uniregistry. At that point, the nameservers moved from the same ones they had for the life of the domain to point to Uniregistry’s for-sale landers. Days later, it was parked with Bodis and then moved to the Above.com registrar by the end of the year.

I don’t know for sure if the domain sold last year. If it did, it would constitute a new registration through commonly-accepted UDRP jurisprudence.

At a minimum, the Complainant should have put forth this argument, especially when the UDRP process unveiled the registrant information. Even if it lost, it likely would have taken reverse domain name hijacking off the table.

The Complainant shot itself in the foot with its filing, and the domain owner was smart not to respond.

I’m working on another story about a Complainant who should have researched historical Whois. I’ll publish it later this week.

MetaMask tries reverse domain name hijacking

by — Policy & Law 2 Comments

Maker of popular crytocurrency wallet tries to reverse domain hijack MetaMask.com.

Logo for MetaMask with a picture of a fox

The developer of MetaMask has been found to have tried reverse domain name hijacking the domain name MetaMask.com.

MetaMask is a popular cryptocurrency wallet used by over 20 million people.

ConsenSys, the creator of MetaMask, filed a cybersquatting claim under UDRP against the owner of the domain. The owner of the domain registered it in 2005, well before ConsenSys’ MetaMask existed. Therefore, ConsenSys could not prove that the domain was registered and used in bad faith, which is a requirement to win a domain in UDRP.

The Complainant also claimed that the domain was used in a phishing campaign. The domain owner says that’s not the case, and his attorney asked the company for a call to discuss it.

Instead of setting up a phone call, ConsenSys filed the UDRP. It didn’t mention the pre-case correspondence, either. That came back to bite it. Panelist Adam Taylor wrote:

The Panel considers that the following circumstances, taken together, warrant a finding of RDNH.

First, the Complainant has failed by a large margin. In the Panel’s opinion, the Complainant knew or at least should have known that it could not prove one of the essential UDRP elements. The Complainant quoted extensively from UDRP case law and the Panel thinks it unlikely that the Complainant was unaware of the current overwhelming view of UDRP panellists as to the need to prove registration as well as use in bad faith. Indeed, the discussion of the third element in the Complaint is simply headed: “The domain name is being used in bad faith”, i.e., omitting the requirement for registration in bad faith.

Second, the Complaint lacks candour in that it makes no mention of either (a) the Complainant’s email to Mr Schleifer of October 5, 2021, stating that someone had apparently adopted Mr Schleifer’s identity to try and sell the disputed domain name to the Complainant and had thereafter used the disputed domain name for phishing/fraud or, more importantly, (b) the October 6, 2021, response from Mr Schleifer’s attorney confirming that Mr Schleifer did own the disputed domain name (and denying his involvement in phishing/fraud). Even if, despite this email, the Complainant still somehow harboured doubts about the identity of the person who approached it to sell the disputed domain name, and notwithstanding that ultimately nothing turned on this issue given the lack of registration in bad faith, the Complainant ought not to have relied on the alleged use of a fake identity without at least mentioning the denial by the attorney for the very person whose identity was allegedly faked.

ConsenSys was internally represented. Lee & Hayes represented the domain owner.

Filing a UDRP when you have a common brand name

by — Policy & Law 2 Comments

Can you show that the domain owner registered the domain with your company in mind?

Blue image with the letters UDRP

Today, National Arbitration Forum published a reverse domain name hijacking decision against Gridiron Fiber Corp. and Lumos Telephone LLC d/b/a Lumos Networks. The company operates the Lumos Networks brand for internet and TV service in part of Virginia. It filed the UDRP against lumos.com.

The case is an important lesson for companies with “common” brands. To win a UDRP, you need to show that the domain owner was targeting your brand with its domain registration. With lumos.com, that was an uphill battle.

While not technically in the dictionary, lumos is a popular brand name many companies use. It’s also a term popularized in the Harry Potter series.

The Complainant argued that the domain owner must have known about it because it has the top search position in Google. In my searches, it seems to fluctuate between #1 and #2. But there are lots of other companies that use this term. On the first page on Google, you’ll see results for the Lumos bike helmet, an NGO created by J.K. Rowing, Lumos Diagnostics, and an Oregon wine seller.

And before the current owner bought the domain for $22,722 in an expired domain auction, the domain was used by a company called Lumos Technologies and then Rowling’s charity.

So, in all likelihood, the purchase was due to its prior use and the plethora of potential buyers, not because of a broadband company in Virginia.

The domain owner could have tripped up if they had parked the domain. If it showed ads for internet access, a panel might suggest targeting even if it was merely what the pay-per-click algorithms determined. It’s why you need to be careful parking your domains.

The net takeaway for brands is that merely showing that your trademark existed when a domain was acquired is not enough to show the domain was registered and used in bad faith. Ask yourself: is the domain owner in my same geography? Am I a dominant brand connected to this word? Is there any other evidence I was directly targeted? If the answer is not clearly ‘yes,’ be very careful before making a cybersquatting claim.

In this case, the Complainant inquired about buying the domain before filing the UDRP. The panel deemed this a “Plan B” UDRP filing.

Caribou.com, purchased for $91k, saved in UDRP

by — Policy & Law 3 Comments

UK company filed a UDRP against valuable dictionary word domain.

A picture of a heard of caribou with the words Caribou.com UDRP

A domain investor who acquired caribou.com for $91,482 has successfully defended the domain in a UDRP.

Scott Dylan, a shareholder in UK delivery and logistics company Caribou, filed the complaint. The company uses the domain WeAreCaribou.com.

The domain investor, K-Ventures FZE LLC, owns a number of animal domain names, including beluga.com, hippopotamus.com, iguana.com, raccoon.com, scampi.com and wapiti.com. It acquired caribou.com in 2019.

A domain broker representing K-Ventures reached out to the Complainant’s company earlier this year. At the same time, the broker contacted a bioscience company named Caribou that went public and one other company with the same name.

This apparently triggered the Complainant’s interest and subsequent UDRP filing.

The three-person World Intellectual Property Organization panel found that the domain wasn’t registered and used in bad faith. It did not consider reverse domain name hijacking.

Sheridans, a media and technology law firm, represented the Complainant. Zak Muscovitch of Muscovitch Law P.C. represented the domain owner.

Be careful when parking three and four letter domains

by — Domain Parking 6 Comments

The ads could lead to a cybersquatting dispute.

Graphic with orange type that says "Initialisms and pay-per-click parking"

 

Elliot Silver wrote about a recent UDRP decision for ter.com. The domain name owner won the case, but the decision was closer than it needed to be.

The Complainant was the French national railway company that runs a service called TER (Transport Express Régional). The domain name resolved to a page with links related to the Complainant and other train transport.

The links likely triggered this case and made it closer than it needed to be.

In most cases, it’s fine to own a three or four letter domain that matches the initialism or acronym of a brand. But you need to be careful how you use it.  Parking one of these domains is asking for trouble. Remember that a parking page might show you innocuous ads but show different ads in another geography.

I don’t see much upside to showing ads on one of these domains, but there is a clear downside. Even if you win a UDRP, a company that sees competitors’ ads on a parked page is more likely to file a UDRP, putting you through the expense of defending it.

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