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CBD company pays $160,000 for GreenRoads.com after losing UDRP

by — Domain Sales 13 Comments

Florida company buys domain that it tried to get through UDRP.

Picture of kid with sunglasses and suspenders sitting in black chair holding money

Green Roads of Florida, LLC has purchased the domain name GreenRoads.com for $160,000 after failing to win it in a cybersquatting dispute.

The CBD company filed a UDRP with World Intellectual Property Organization in October, 2018. In January, the three-person panel found in favor of the domain owner. One of the panelists found reverse domain name hijacking.

Green Roads had tried to withdraw the case after getting the complaint response from domain attorney John Berryhill, but the domain owner refused to allow this.

Now, nearly a year later, Green Roads has ponied up for the domain.

I wonder if it paid more for the domain than if it had taken the high* road to begin with?

*That’s high as in proper, not drugs.

Walmart’s Vudu is a reverse domain name hijacker

by — Policy & Law 5 Comments

Vudo.com was registered well before the streaming video company existed.

A screenshot of Vudu.com showing Good Boys video

Vudu filed a cybersquatting complaint against Vudo.com. It was found guilty of reverse domain name hijacking.

Vudu, a streaming video subsidiary of retail giant Walmart, has been found to have attempted reverse domain name hijacking over the domain name Vudo.com.

The company filed a cybersquatting complaint against the domain name owner, even thought the owner registered the domain name well before Vudu was founded. A key requirement of the Uniform Domain Name Dispute Resolution Policy (UDRP) is that the Complainant’s trademark rights must predate the domain owner’s registration. After all, if he registered the domain before the Complainant had trademark rights, then it’s hard to prove that he registered the domain to target a non-existent brand.

In finding reverse domain name hijacking, a World Intellectual Property Organization panel wrote:

The Complainant entirely sidesteps the glaring deficiency in its case on the second and third elements of the Complaint. The Domain Name is a homophone of a dictionary word, and it was registered long before the Complainant or its trademark existed. The Complaint repeatedly emphasizes the registration of the Complainant’s domain name in 1995 to suggest that the Complainant has senior rights, without disclosing that this registration was by an unrelated party. The Complainant evidently acquired that domain name in 2007 and began using VUDU as a mark in September 2007, as it claimed in its applications to the United States Patent and Trademark Office. The Complaint insinuates that the Respondent’s change of registrar and IP addresses over time is somehow significant, but the Complainant does not explain how it is significant and offers no evidence or argument whatsoever that the Respondent is not, as claimed, the original and continuous registrant of the Domain Name. Even without glancing at the WIPO Overview 3.0, counsel for the Complainant should have recognized from the plain language of the Policy that at the time of registration the Respondent could not have been attacking a trademark that did not exist and was not in contemplation for years to come.

Vudu was represented by Drinker, Biddle & Reath, LLP. The domain owner was self-represented.

Trivago argument falls way short in cybersquatting complaint

by — Policy & Law 5 Comments

Would you confuse Traveltrow with Trivago?

Logo for travel site TrivagoTravel company Trivago (NASDAQ: TRVG) has lost a cybersquatting case in which the panelist said it was “not really a close call.”

Trivago filed the complaint against the owner of Traveltrow.com, arguing that Traveltrow was confusingly similar to Trivago.

That’s not a typo: Trivago vs. Traveltrow.

Here’s how Trivago tried to convince the World Intellectual Property Organization panelist:

Complainant argues, first and foremost, that the TRIVAGO mark and the Domain Name both have three syllables (one disregards the “.com” generic Top-Level Domain). Complainant then notes that the last syllable of the Domain Name (“trow”), rhymes with the last syllable of the mark (“go”). Complainant notes that the first syllable of the mark and the Domain Name begins with the letters “tr,” and that the second syllable of both begins with the letter “v.”

Panelist Robert Badgley wasn’t buying it.

It appears that the owner of Traveltrow.com might be infringing on Trivago’s trademark rights with content hosted at the domain name. But Badgley notes that is beyond the scope of UDRP:

It may well be that Complainant has a valid trademark infringement or unfair competition cause of action against Respondent in a court of law. The UDRP, however, is focused on abusive domain name registration and use, not more generally with infringing conduct across the Internet. As such, if a domain name is not confusingly similar to the complainant’s trademark, the case is over, regardless of whether the respondent is a bad actor.

Cybersquatting cases at WIPO trending up in 2019

by — Policy & Law 4 Comments

Numbers up slightly so far this year, but still represent a very small subset of domains.

Chart showing number of cybersquatting cases filed at WIPO during first three quarters of the year. For 2019 it is 2,723

Number of cases filed at WIPO through Q3 of each year.

The caseload of cybersquatting disputes at World Intellectual Property Organization (WIPO) is trending upward so far in 2019.

2,723 cases were filed during the first three quarters of 2019, according to data on WIPO’s website. There were only 2,592 filed during this same period last year.

The chart above shows the total caseload during Q1-Q3 of each of the past five years. With the exception of 2016-2017, the number of filed cases has increased during the first three quarters of the year.

WIPO is just one of the organizations that handles cybersquatting disputes under UDRP, but it is the largest.

The total number of domains at issue is very small compared to all registered domains.

For example, through the latest update, 3,430 .com domains have been the subject of UDRP this year. There are 144 million registered .com domains, so only one in 42,000 .com domains have been the subject of a UDRP this year.

 

This WIPO panelist forgot something

by — Policy & Law 6 Comments

Vodacom filed dead-on-arrival case and domain owner said it was an abuse of the policy, but…

A World Intellectual Property Organization (WIPO) panelist has correctly found in favor of the registrant of VideoPlay.com, but he forgot something: to find the Complainant guilty of reverse domain name hijacking.

Vodacom (Pty) Ltd and Vodafone Group PLC filed the dispute against the owner of the domain who registered it in 2001. The earliest Vodafone can show any use of the term Video Play is 2014, according to the decision.

The Complainants tried to make a bad faith argument based on a single link on the site in 2003 pointing to what it says was an illegal download site. That’s a stretch…especially since the Complainant’s Video Play service didn’t exist until a decade later!

The domain registrant alleged that the Complainant “is misusing the UDRP system in an attempt to misappropriate the disputed domain name.”

For some reason, panelist Frederick Abbott did not formally decide on the issue of reverse domain name hijacking despite finding that the case was a bad one:

The Panel understands that Complainant thinks it would be a good idea to own the disputed domain name since it presumably has a commercial value to Complainant. But the Policy is not designed to accord rights to parties that think they have better uses for domain names than existing domain name registrants. Before an enterprise launches a commercial venture, it would be wise to investigate whether a domain name is available, or how much it might cost to purchase from a prior registrant.

 

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