We are all familar with the stat; in 85 percent of cases decided by the WIPO the panels transferred the disputed domain names to the complainant.
I took a hard look at some recent cases in light of LH.com and this famous statistic.
Certainly having this 85% figure out there is the pink elephant in the room. It hurts the perpection of domaining. It makes it sound to the layman that 85% of domains are just one complant away from being taken.
Here’s the problem.
Loser cases.
When I was a practicing attorney, I advised many cilents that the case they were about to purue as a plaintiff or defend as a defendant were losers. I advised them if they were plaintiff’s not to bring the case and if defendants to settle.
Losers are not hard to spot.
In the last couple of months here are some cases that went to a UDRP decision resulting in the domains being transferred to the complaintant. All of these add to the 85% figure we have hanging over our heads.
All are losers.
Baylor University got
baylormedicalcenteratirving.com, baylorhealthcaregarland.com,
baylormedicalcenterhospital.com, baylorregionalmedicalcenter.com,
baylorcollegemedicine.com, baylorschools.org, baylorbanks.com
Advanta Corp. got
advantahome.net
Diners Club International got
sydneydinersclub.com, sydneydinerscard.com
McKee Foods Kingman, (owner of little debbie brand) got
littledebbie.info
State Farm Mutual got
statefarmrecruiting.com
Shutterfly.com got
hutterfly.com, chutterfly.com, dhutterfly.com,
hsutterfly.com, hutterfly.com, sgutterfly.com,
shetterfly.com, shhutterfly.com, shotterfly.com,
shtuterfly.com, shurterfly.com, shutherfly.com,
shutrerfly.com, shuttarfly.com, shutteefly.com,
shutteerfly.com, shutterefly.com, shutterffly.com,
shutterfli.com, shutterflly.com, shutterflt.com,
shutterfy.com, shutterrfly.com, shuttertfly.com,
shuttetfly.com, shuttetrfly.com, shuttherfly.com,
shuttirfly.com, shuttorfly.com, shuttrefly.com,
shuttrerfly.com, shuttrrfly.com, shutturfly.com,
shuttwrfly.com, shutyerfly.com, shuutterfly.com,
shuyterfly.com, shytterfly.com, sjutterfly.com,
sshutterfly.com, suhtterfly.com, wshutterfly.com
Bank of America got
bankofamrica.com, bankofamericacreditcards.com,
abnkofamerica.com, bankofamercica.com, bankofamarika.com,
bankocamerica.com, bank-of-america-mortgage-loans.info,
bankaamerica.com, bankofamericamyaccount.com, bankofamrcia.com,
bankofamiraca.com, bankofamirca.com, bankofcamerica.com
Other domains transferred in Feburary and March of this year were:
benefitswalmart.com
boschcompany.com
amwaycard.com
berlitzlanguagecourse.info
giadaprada.com
roncarterchevrolet.com
ambienn.com,allegrra.com,ammbien.com,wwwplavix.com
phizer.com
buyxenical.net
kohlerbaths.com
cingualar.com,cingurlar.com,ciingular.com,cinglular.com,cungular.com
starbuckscommunications.com,starbucksentertainment.com,starbucksinternetcafe.com,
starbucksinternet.com,starbuckslive.com,starbucksmerchandise.com,starbucksprices.com
expediakorea.com
westerunion.com
edmundscom.com
microsoftcourseware.com
dinersclub.mobi
joinherbalife.com
The list goes on and on.
All losers.
Here is the fact hidden in the 85% figure.
The vast majority of cases that go against the domain holder are horrible cases that you or I would vote for the trademark holder. They involve domains containing a famous marks, typo’s of famous marks.
Many cases involve domain holders which own mulitple domains containing typo’s mispells of famous trademarks.
If you are in the domain business at any level here are some rules for you.
Do not register domains that infringe on famous marks.
If you own any such names and get a C & D letter give the domain back.
If you receive a UDRP complaint and have such a name give the domain up.
You have a loser. You aren’t going to keep the domain.
You are not only going to hurt your reputation, but the domain industry, other domainers, parking companies, PPC companies.
It does not help you or the industry to take losers to a decision.
If you instist on allowing these types of losers going to a decision, then you clearly have no regard for your reputation, you clearly don’t care about the industry, the parking companies you do business with and maybe those in the industry should stop doing business with you.
If the loser cases were not allowed to go to deicision the 85% number would drop dramtically, maybe to 50% at that point we would get the monky off our back and start with an even playing field.
Yes there are very bad decisions where generic names are taken away and given to the complaint (LH.com).
There are many domains that are on the bubble. Domains whose trademark claim is actually in dispute.
Those you fight.
Those you fight not only for yourself but for the industry, for your fellow domainer.
Remember each case you take to a decision will have an effect on all other domain disputes down the line.
You don’t live in a bubble.
You are part of an industry.
Your actions effect us all.
Don’t push your losers on us.
Sometimes I can’t believe why someone would allow certain UDRP cases to go to a decision. I wonder if many of the most blatant TM names don’t have legitimate contact information, and as a result, the owner never receives the complaint.
If you aren’t going to respond to an obvious TM violation UDRP, there isn’t much of a reason not to drop it.
Great post. The best I’ve seen yet on this topic. Congrats.
Great post. And serious Domainers need to start getting pro-active about disassociating themselves from these people who continue to own these clearly obvious, non-contestable TM violations.
It is my understanding that the ICA does not allow these people to be members. If this is true (and enforced), membership in the ICA is a good place to start.
Great post Mike…some interesting stats I’ve never seen before…Agree…about not sociallising with “real” cybersquatters.
Tell your best friend with the death and dogs . He is the biggest offender. Hard to believe that you and everyone else put him on a pedestal when his fortune has been made on the back of trademark holders hiding behind complex shell companies and privacy guard. Shame on him and shame on you for writing such an article yet breaking bread with this monster
My guess is there are two reasons these “losers” to UDRP:
-Owner has B.S. whois information or keeps changing it
-Owner know he’ll lose the domain but wants to squeeze out a few more weeks of PPC earnings
There may even be a time when it becomes more common for winners of TM names to start collecting back the udrp filing fees through lawsuits and then some. So think to yourself, hmmm would I pay 1500 for this name?
Robs
I was never very good a puzzles so i don’t know who you speak of as being my best friend with “death and dogs”
If you want to speak clearly and state what you believe go right ahead.
I certainly do not have any friends to my knowledge that engage in this behavior, much less a best friend, if you know better, inform me.
Andrew
I think some of these might have bad contact info but I don’t think a majority of these did.
There are several reasons you could allow one of these losers to go to hearing, but none of them are good.
None are good enough to justify the damage it does to the domain industry.
John
If this is ever to become a well respected industry this practice of registration of wholesale trademark infringing names must stop.
Moreover any smart businessman in any industry knows when they have a loser and cuts their losses.
Spot on. I read the decisions every day and wonder why domain owners let these things go to a decision.
I do think that there are some domainers who have changed their spots in the past year or so, but for every one of them there are two newbies who enter the field and still think there’s easy money in those names.
Thats true.
I try to make sure I always advise new domainers to stay away from regging trademarks.
Let me ask you this? what about those with Statement type names or protest names (with real usages) i.e: walmartsucks.com or even Iloveshippingwithfedex.com. Your thoughts?
Good article by the way! 🙂
John
I have seen decisions on these types of name go both ways.
Assuming the URL has actual content on the site, which follows the theme of the domain AND there is no advertising on the site which would be in the field of the trademark holder you might be OK. (definately not a parked page)
However any time you place a famous trademark in a domain you have no better than a 50-50 chance.
The question is why would you subject yourself to the cost of defending the action?
Your looking at 5K at least.
Great post Michael. Very well done. Nice to see you get mad about such issues. Kinda like some got mad when porn was smeared across TMs.
Now these TM infringers need to act or others will act for them. Robs says you need to confront someone well known that you apparently know. Like you said, its hurting us all, even you. Badly.
Interesting post and the response.
Go with the flow.
Mr. Black
Maybe you can let me know who he is talking about.
More importantly do you know who owned any of the domains I referred to in the post??
Kellie
This is an industry maybe 10 years old.
At the beginning many rules were not clear.
Today there are over 18,000 UDRP cases filed and the law and rules are clear.
The post is clear, do not take losing cases to hearing.
Mike, you are a smart man, this is no puzzle by Robs.
Nope, no idea who owns such TM names. Are we to now surmise you are on a TM infringer witch hunt? If so, that is good to hear.
Mr. Black
I am not on a witch hunt. I’m am simply making a point, which is if domainers did not take certain cases whch they have no chance of winning to a hearing, then instead of having a 85% complainant win rate we would have a 50% rate, maybe better, which would certainly help the perception of the industry and improve our chances to defend reserve hijacking attempts and cases in which there is a serious dispute.
Shoot. I liked the witch hunt question. In fact, given the skills and tools this group has, it should be able to easily root out its own TM infringers. Police its own. Just like your post’s title would logically lead to. After all, its in your best interest to do it, you said so. Its kinda hollow to yell about it but not intend to follow up and pursue the issue or its perpetrators further.
The point and the percentages you list are not of argument at all nor are they they likely disputed by the TM infringers. So then you should draw the conclusion, the TM infringers just don’t care. And will continue not to care.
Agree Robs “puzzle” is not such a puzzle, but it did catch me off-guard – unless it truly is unsolved. I would not guess this domainer it seems none of us want to name, is active in the TM space. Robs, share some domains or more if you are going to make such an accusation.
I do know one domain I consistently mistype siouxfallsymca.com (.org if the actual Y) is a RareName/BuyDomains name. Listed for sale at $588, just guessing the hope here is the buyer pays the fee versus a UDRP case. It is important to note though, and possibly even in this case…TM “guilt” should not always be established so quickly. You can own domains with TMs in them, so long as once developed there is clear separation of who is the owner, usage in non-TM industries, lack of malicious intent, etc. Though we do not advise this strategy, walmartsucks.com is an example (it appears since removed).
It seems undeveloped, you have a better chance of losing potential TM names and developed TM names that lose most were likely capitalizing on one of the primary factors to show infringement.
Robs, I can see why you did not link a site due to backlash, but retracting your comment or sharing more to open collective eyes seems appropriate.
Guys
We are getting too far away from the topic which was again simply if you have a trademark domain that is going to lose a UDRP decision, let the domain go rather than make bad law for the rest of your domain and the rest of us
Excellent post and info, Michael.
I’d suspected this was the case; thanks for taking the time to analyze some numbers to show that it’s so.
David,
You are correct. Internet Commerce Assocation requires all members to abide by the Members’ Code of Conduct. Furthermore, we are working with leaders of the parking industry to try to stop the monetization of these domains. We do not support cybersquatting!
Michael,
Thank you for taking a public stand on this important issue. This is one important part of separating responsible domain investors and developers from those who participate in abusive registrations.
Good post.
Possibly this could be done at a parking co level, where all agree to support parking co’s that don’t support obvious typo squatting.
Greg
Good idea, however I don’t know of any parking companies that have adopted or enforced such a policy