Domain Name Wire | Domain Name News

Domain Name Industry News

Featured Domains

FC Barcelona loses cybersquatting match

by — Policy & Law 0 Comments

Football team went after colloquial term culers.com.

Logo for FC Barcelona football teamFútbol Club Barcelona (FC Barcelona) has lost a cybersquatting challenge it brought against the domain name Culers.com.

Culers is a Catalan dictionary term for supporters of the football (soccer) team. FC Barcelona’s fans are colloquially called “culés” (in Spanish language) or “culers” (in Catalan language).

The owner of the domain registered it in 2000 and was granted a trademark related to the term culer in Spain. That trademark expired ten years later.

While FC Barcelona argues that the name has been used for a century to refer to its fans, it didn’t obtain formal trademarks until after 2000. There’s also an open question on how it was used commercially, especially given inclusion in the dictionary. It seems to have begun using it commercially recently for a fan club.

World Intellectual Property Organization panelist Reyes Campello Estebaranz found that the domain was confusingly similar to a mark in which the football club has rights, and that the registrant didn’t show he had rights or legitimate interests in the domain. (I’m a bit surprised by the legitimate interests decision given that the domain owner went through the effort to get a trademark.)

However, Estebaranz found that FC Barcelona did not show that the domain was registered in bad faith. He wrote:

Under all these cumulative circumstances, in the point of view of the Panel, in a balance of probabilities, it is difficult to consider that the Respondent targeted the Complainant and/or its trademarks when it registered the disputed domain name, before the registration and use by the Complainant of the Catalan dictionary terms “culer” and “culers” as trademarks.

Other circumstances of the present case indicate that, in a balance of probabilities, the Respondent may have been acting in good faith when it registered the disputed domain name, including inter alia:

(i) the fact that the Respondent chose to use in the disputed domain name a term included in the Catalan dictionary, not identical to the one already registered as trademark at that time by the Complainant or to the Complainant’s reputed trademarks FC BARCELONA, BARÇA, and/or BARSA;

(ii) the fact that no evidence in the file shows that the Respondent tried to sell the disputed domain name to the Complainant, to any of its competitors or to any third party; and

(iii) the fact that the Respondent included its complete name in the WhoIs record of the disputed domain name.

Under these circumstances, the Panel finds that the Complainant has not met its burden of establishing that the Respondent registered the disputed domain name in bad faith.

Herrero & Asociados represented FC Barcelona and Gonzalez-Valentí Abogados represented the domain name owner.

Another bad UDRP filing

by — Policy & Law 1 Comment

It was a week of misinformed and malevolent cybersquatting disputes.

Picture of a metal basket full of rotting apples.

A whole lot of bad apples.

There were a lot of reverse domain name hijacking cases last week. There was also one where the panelist didn’t find reverse domain name hijacking but it appears the Complainant filed a case knowing that the domain owner was dead.

Add one more notable UDRP to the list for last week: Brime.net, decided on June 24 at National Arbitration Forum.

Brime, LLC filed the UDRP against the owner of Brime.net. The company was founded last year and the domain owner registered the domain in 2001. So the case was dead on arrival, and panelist Terry Peppard ruled that the domain wasn’t registered in bad faith.

The owner of the domain didn’t respond and Peppard didn’t consider if it was reverse domain name hijacking. I think this was a mistake. Beyond the dates that doomed this case to failure, the domain is owned by someone named Robert Brime.

Brime, LLC probably didn’t know this when it filed the case. The Whois is record is obscured under GDPR. But it should have withdrawn the case once National Arbitration Forum notified it of the owner’s identity. (OK, it never should have filed the case, but it certainly should have withdrawn it at this point.)

I also take issue with Peppard’s decision to allow the case to be filed in English even though the registration agreement for the domain is in Spanish and Brime is in Spain. Perhaps Peppard decided this because he knew the case would be denied. But I take issue with Peppard accepting the Complainant’s language request:

However, Complainant has requested that the language of the proceeding should instead be English. In support of this request, Complainant submits that, during nearly all of the time that the domain name has been registered, the resolving website has been rendered exclusively in English, which demonstrates that Respondent is conversant in English. Respondent does not contest this assertion…

Here’s the thing. First, the domain didn’t resolve for a long time and the Complainant notes this. Now, it resolves to a login page. That login page has the English word “Log in”, but username and password are in Spanish. That doesn’t indicate that the domain owner likely speaks English.

Maybe he does speak English, and maybe Peppard didn’t bother with the language issue because he knew the case was dead anyway. But saying “Respondent does not contest this assertion” when he might not even speak the language is troubling.

Balch & Bingham LLP represented Brime, LLC.

Company files UDRP against deceased man, and I have questions

by — Policy & Law 13 Comments

This UDRP looks really dirty to me.

Blue image with the letters UDRP

Borum A/S, a company in Denmark, has lost a UDRP if filed against the domain name Borum.com. The decision was correct, but I have deep concerns about the Complainant and its representatives at Patrade A/S for filing this case in the first place.

The Whois record clearly states that the domain is registered to Thomas A. Borum, D.V.M. in Natchez, Mississippi. This would show that the registrant has a legitimate interest in the domain and the UDRP should fail.

In its filing, the Complainant stated (as recounted by the panelist):

the Complainant asserts that the registrant’s name in the WhoIs records may in fact be an alias used to match the disputed domain name.

Someone could certainly use a fake surname in Whois. But I spent 30 seconds Googling his name and found this:

Image of search results for Thomas A. Borum, D.V.M.

The first two results are for the domain registrant’s LinkedIn profile. The third (and many other) search results make it clear that Borum died in a plane crash in September last year.

I see only two possibilities here. One is that the Complainant didn’t take a minute to search the Respondent’s name before asserting it might be false. The other is that it Googled his name, realized he was dead, and decided it was an opportune time to file a UDRP.

Both of these possibilities are bad. Either it failed to undertake basic research before making its allegation, or it filed a case knowing the person was dead and didn’t mention it.

The Complainant even calls out the domain owner for not checking for trademarks before acquiring the domain. The panelist summarized:

At the very least, says the Complainant, the Respondent willfully failed to search for conflicting trade marks, prior to acquiring the disputed domain name.

So the Complainant suggests that the domain registrant needed to search trademark databases before registering the domain but it (maybe) didn’t bother to Google the domain owner’s name before filing the case?

Making matters worse, panelist Alistair Payne noted that even if Borum had searched the trademark database, all of the registrations post-date the registration of the domain.

Payne ruled in favor of the deceased domain registrant. But I have a dirty feeling about this case.

 

Spanish company attempts to reverse domain hijack Koibox.com

by — Policy & Law 0 Comments

Company filed UDRP even though domain owner registered domain well before it existed.

the words "reverse domain name hijacking" in pale yellow type on a black bacground, next to a graphic of a pirate face

A Spanish company that provides software to beauty salons attempted to reverse domain name hijacking Koibox.com, a World Intellectual Property Organization panelist has ruled.

Software Koibox S.L. filed the UDRP after first inquiring about buying the domain. According to the decision, it initially tried to buy the domain in 2015, shortly after it was founded. At the time, the registrant wanted $2,000, but the company only offered $500. It inquired again in 2019, and the domain registrant requested $50,000.

None of this matters because the owner registered the domain in 1999, some 14 years before the Complainant existed. Therefore, it’s impossible that it was registered in bad faith to target Software Koibox.

In finding reverse domain name hijacking, panelist Warwick Rothnie wrote:

Bearing in mind that the Respondent registered the disputed domain name in 1999 some fourteen years before the Complainant even existed or adopted its trademark, the Complainant should have known the Complaint must fail. Instead, the Complainant filed the Complaint, the substantive text of which consists of five paragraphs without satisfactorily addressing the fundamental requirement of registration in bad faith under the Policy.

Software Koibox appears to use the domains Koibox.net and Koibox.es.

Ankur Raheja of Cylaw Solutions represented the domain owner.

MITRE wins CVE.org dispute in questionable decision

by — Policy & Law 4 Comments

It’s hard to see the bad faith use of this domain.

A screenshot of MITRE's CVE web page showing logo and web address

MITRE won a UDRP for CVE.org. It uses the domain cve.mitre.org for the program.

A National Arbitration Forum panelist has awarded The MITRE Corporation the domain name CVE.org in a cybersquatting dispute.

Finding in MITRE’s favor was the easy decision for panelist Ho Hyun Nahm, Esq. to make. MITRE is a respected organization and its Common Vulnerabilities and Exposures (CVE) service is run in conjunction with the U.S. Department of Homeland Security and Cybersecurity and Infrastructure Security Agency (CISA). The domain name owner also didn’t respond to the dispute.

So it was the easy decision, but I’m not sure it was the right decision.

MITRE argued that the domain is currently owned by either:

1. Someone associated with the dissolved non-profit organization CVE, Inc. but under inaccurate Whois information OR
2. A person who acquired the domain name after the non-profit dissolved.

If it’s the first case, the domain wasn’t registered in bad faith. If it’s the second, then it could have been registered in bad faith. We don’t know for sure because the domain owner didn’t respond, but I think it’s the second case based on a review of historical Whois records.

Given the second case and the non-response, there’s still a legitimate question of if this domain was registered and used in bad faith. The domain isn’t active, but MITRE argues:

Respondent registered and uses the disputed domain name in bad faith. Respondent either is affiliated with the inactive organization CVE, Inc. and provided false registration information on WHOIS, or Respondent is not affiliated with CVE, Inc. and uses the disputed domain name to create confusion and disrupt Complainant’s business for Respondent’s commercial gain. Respondent’s registration and use of the domain name is also in bad faith because it prevents Complainant from registering its mark as a domain name. Further, Respondent disrupts Complainant’s business because Respondent’s inactive website creates an impression that Complainant does not exist, or it may redirect Complainant’s consumers away from Complainant’s CVE product. Complainant asserts that Respondent presumably gains commercially from this practice. Respondent acquired the disputed domain name with actual knowledge of Complainant’s rights in the CVE mark.

If the domain owner used the domain to offer a security product or a parked page with security ads, there would be evidence of bad faith.

But not using the domain? I don’t see it. Also, what evidence is there that the domain owner “presumably gains commercially” from making the domain inactive? I’d argue the registrant presumably does not gain commercially from this.

Admittedly, CVE seems to be most commonly associated with MITRE’s CVE. Most Google results on the first page are for the program.

However, I find it difficult to squeeze this three-letter .org domain dispute into UDRP and to find that the Complainant showed it was registered and used in bad faith.

Domain Name Wire | Domain Name News