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Lawyer who filed a reverse domain name hijacking case says so what?

by — Policy & Law 18 Comments

Lawyer thinks it’s no biggie that a panel found that he filed a misleading UDRP complaint.

A lawyer who filed a RDNH case says, “…RDNH label from the UDRP has no weight anywhere. Might as well stick thumb in mouth and cry…”

Yesterday, I wrote a story encouraging people to hire a domain name attorney when faced with a domain dispute of some kind. One person took exception to this suggestion: a lawyer who recently filed a reverse domain name hijacking case.

Nathan Brown, attorney at Brown Patent Law, filed a UDRP against the domain name ITDC.com, which is owned by Internet Tool & Die Company. The Complainant was found guilty of reverse domain name hijacking for a number of reasons. A critical one is that the complaint said the domain registrant didn’t exist at the address it listed, even though the Complainant knew the domain owner was a subsidiary of a business that did exist at that address.

In response to the suggestion that you hire a specialist (the story was unrelated to the ITDC.com decision), Brown tweeted:

That didn’t make much sense to me. I asked him to explain. To which he responded:

I’m not sure what the optimal jurisdiction argument is. You can file a lawsuit anywhere you have jurisdiction. If you file a UDRP, you’re also submitting yourself to the jurisdiction of either the domain registrar’s location or the domain owner’s location. In this case, the Complainant and its lawyer are in Arizona. Neither the registrar (Enom) or the Respondent are located there.

Well, he has a point there. There’s no fine for RDNH in a UDRP. But even if a court doesn’t have to give deference to a UDRP decision that showed that the Complainant misled the tribunal and that it’s not a case of cybersquatting, I have to think those make for good opening arguments against any lawsuit brought against the domain. Oh, and if found to have tried reverse domain name hijacking in court, there can be some stiff costs associated with that.

I can’t find out much about Brown’s legal practice. The website in his twitter bio leads to a 404 error. He has a Facebook page that has a few posts from several years ago. I found one other UDRP he filed in 2018.

I might be Biased, but this should be reverse domain name hijacking

by — Policy & Law 0 Comments

Owner of Unbiased.co.uk takes another crack at Unbiased.com.

Reverse domain name hijacking graphic

The owner of Unbiased.co.uk has failed for a second time to get the domain name Unbiased.com through a UDRP.

The company, which helps people find financial advisers, mortgage brokers, solicitors and accountants, filed a UDRP against Unbiased.com in 2015. It lost that case because the panel determined that it was likely that the domain was acquired due to its generic value, not to target Unbiased.co.uk.

It filed another case in January but apparently didn’t bring anything new to the table. The three-member World Intellectual Property Organization panel declined to consider the refiled case.

Panelist Neil Anthony Brown concurred with the majority opinion that the case should be dismissed and said this is a case of reverse domain name hijacking. Brown pointed out that Unbiased.co.uk didn’t mention its first failed attempt at securing the domain in a UDRP when filing the second dispute and chose a different venue (National Arbitration Forum and then WIPO).

He wrote:

This is therefore the classic case where it can be said that the Complainant must have intended to harass the Respondent and put it to timewasting expense to defend this claim for the second time, as it knew it could not succeed without good cause being shown why the case could be commenced. If ever there were a case showing the wisdom of the Canadian rule that in an appropriate case the panel may award part of a respondent’s costs against an offending complainant, this must be it. But in the absence of power to award costs against a recalcitrant complainant, making a finding of RDNH is the only sanction that can be imposed.

While Unbiased.co.uk doesn’t have a good argument to win a UDRP, the domain name owner should seriously consider removing links to financial services on its parked page.

Is this trademark infringement or cybersquatting?

by — Policy & Law 3 Comments

Confusing similarity might be a stretch.

Blue image with the letters UDRP

A World Intellectual Property (WIPO) panelist has found in favor of Dr. Reddy’s Laboratories, a generic drugs maker, in a dispute it filed against the domain DrLede.com. The pharmaceutical company uses the domain name DrReddy.com.

The Complainant in a UDRP needs to show that the domain in question is confusingly similar to a mark in which it has rights. In this case, it’s a comparison of DrReddy vs. DrLede.

This seems like a stretch at first glance. They certainly aren’t visually similar. The argument here is that they are phonetically similar even though they aren’t visually similar. You could pronounce Led like lead (the element) with a long ‘e’ at the end. That sounds similar to Reddy.

It reminds me of the company that called (still calls?) new domain registrations and says they are with “GoWebby”, which sounds an awful lot like GoDaddy. They don’t look anything alike visually but certainly sound alike when someone quickly rattles off the name in a thick accent.

In this case, the respondent is clearly up to no good. He has a landing page that uses Dr. Reddy’s old logo and a login box. He didn’t respond to the dispute.

The panelist referred to section 1.15 of the WIPO overview, which lists examples of disputes in which panelists considered the usage of the domain when determining confusing similarity.

While this dispute strikes me as more of a trademark dispute than a cybersquatting dispute, it’s not surprising that the panelist took a small leap to find a way to award the domain to the Complainant.

Domain buyer brokers should protect themselves against being used in a dispute

by — Policy & Law 9 Comments

They should forbid clients from using their negotiations in UDRPs and lawsuits.

Picture of a Voxan electric motorcycle

The maker of Voxan bikes used a broker’s negotiation as the basis for a UDRP. Photo from Venturi website.

Many skilled domain brokers help companies acquire domain names. When negotiations fail to result in a transaction, clients sometimes use the broker’s effort in an ensuing UDRP or lawsuit.

That was the case in a dispute for Voxan.com last year.  Gildo Pallanca-Pastor, the CEO of Venturi Automobiles, filed a dispute against domain name investor VirtualPoint. The panel found it was a case of reverse domain name hijacking.

Venturi initially used a French firm called Solidnames to try to acquire the domain name. The broker in that case has now told VirtualPoint that it didn’t realize the client would turn around and file a UDRP. He wrote in an email: “Following the failure of negotiations, the end client changed strategy with his lawyer.”

Domain buyer brokers should avoid having their name thrown into a UDRP. Bill Sweetman of Name Ninja explained in a podcast last year that his company’s terms forbid clients from using any of his firm’s negotiations/communications in a UDRP or lawsuit.

As for Venturi, it has tasked Solidnames with trying to acquire Voxan.com again. I suspect it’s going to need to offer a lot more money to buy the domain now than before it filed its abusive UDRP.

[Note: I mistyped the name of the brokerage firm in the initial post. I apologize for the error.]

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.

 

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