This decision should be particularly troubling to .Co domain owners as the language in the decision seems to indicate that any .Co maybe in jeopardy if the .Com domain holder files a UDRP.
In this case the domain was not parked but was directed to another one of its other gambling domains, winner.com
“”Previous UDRP panels have found that where a domain name is purely descriptive, even where it is part of a registered trademark, then a respondent will have a right or legitimate interest, unless there is evidence that the respondent is targeting the complainant.”
“In this case the term “poker strategy” is comprised of two common English words and the combined term is purely descriptive and based on the evidence before the Panel is commonly used in the industry. ”
“Without more this would be enough to find that the Complainant has not demonstrated that the Respondent has no rights or legitimate interests in the Disputed Domain Name and to deny the Complaint. ”
“However as discussed below, there are supervening circumstances in this case which lead the Panel to infer, on the balance of probabilities, that the Respondent has in this case sought to target the Complainant and that therefore the Respondent has not acted in good faith.”
“Accordingly, the Panel finds that for the reasons set out below, the Complainant has made out its case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complaint succeeds under the second element of the Policy.”
“The Disputed Domain Name was registered by the Respondent quite recently on July 20, 2010, by which time the Complainant had been operating its website at “www.pokerstrategy.com” for a number of years and owned numerous trademark registrations or applications incorporating the “pokerstrategy” phrase or mark.”
“The Respondent admits being well aware of the Complainant’s site and acknowledged this in his email of September 15, 2010 when he said to the Complainant that he was familiar with the <pokerstrategy.com> website and thought that it was a great site and offered a good product.”
“In spite of his knowledge of the Complainant’s website and domain name, the Respondent proceeded not only to register the Disputed Domain Name but to use it to defer to his poker gaming website at “www.winner.com”.
“Based on the Respondent’s own acknowledgment of the success of the Complainant’s website at “www.pokerstrategy.com” and that the site had been in operation for a number of years prior to the Respondent’s registration of the Disputed Domain Name, the Panel infers that the Complainant’s domain name has most likely developed some degree of source identifying significance, at least amongst the Internet based poker playing community. ”
“In these circumstances the Panel infers that it is most likely that the Respondent took the opportunity to register the Disputed Domain Name with a view to using it to attract Internet users to the website at “www.winner.com”.”
“On the balance of probabilities, the Panel finds that the Respondent in so acting has intentionally sought to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source of its website in terms of paragraph 4(b)(iv) of the Policy.”
So now we seem to have a new standard by which a domain name can be taken:
“the Panel infers that the Complainant’s domain name has most likely developed some degree of source identifying significance”
Well doesn’t every domain name by definition “develop some degree of source identifying significance”
Yes
Any domain name that has been in use, develops “some degree of source identifying significance”
Would seem so and this decision seems quite disturbing especially for .Co domain name holders.
Also quite troubling is that this decision seems to be based on an inference of the panel
“The panel infers.”
According to Wikipedia the word Inference is defined as:
“a good guess”
I though the panel was suppose to look at the facts, apply the law and come to a decision.
I didn’t know they could just guess at it
This decision is another embarrassment for the UDRP process. That said, the respondent is also at some fault here for not requesting a 3 judge panel.
In any case, the decision is appalling and allowing a single panelist to transfer valuable possessions is ridiculous.
So now he has one UDRP mark against him in a three mark system, and all b/c of panelists giving a generic domain to a TM registrant with a extremely weak TM, seeing as how the words are so generic.
What a punk the owner of PokerStrategy.com is for applying for that trademark and an even bigger one for enforcing it.
Just dirty biz.
.Com
This decision may well by a lot more important and I don’t think it should be dismissed as just another bad UDRP decision.
At least for .Co domains the language in the decision could be used by almost any .Com holder to take their .Co equivalent by filing a UDRP
The registrant should appeal in real court. I don’t think this decision would stand, as its logic is extremely weak.
George by its own wording the decision seems to have been decided by an inference drawn by the panelist
“the Panel infers that the Complainant’s domain name has most likely developed some degree of source identifying significance”
The panel infers.
“This decision should be particularly troubling to .Co domain owners as the language in the decision seems to indicate that any .Co maybe in jeopardy if the .Com domain holder files a UDRP.”
Not surprising, there’s going to be thousands more like it, why would/should the .co extension be treated any different to .info, .net, .org etc
“The Respondent admits being well aware of the Complainant’s site and acknowledged this in his email of September 15, 2010 when he said to the Complainant that he was familiar with the website and thought that it was a great site and offered a good product.”
Bad faith is Bad Faith
The whole thing is a mess. No facts, just guesses, rhetoric and circumlocution. Could spell the end for all new TLDs and registration by new parties. The TM registry could nip this in the bud by doing a better job at not allowing names that are clearly generic as defined by an academic dictionary like Oxford (and not a silly urban dictionary).
“Mr.Clean”, clearly a TM. “Clean” clearly not. Clean has a common definition whereas Mr. Clean does not.
“Facebook”, clearly a TM because it doesn’t define anything and is only a business brand. “Face” is clearly generic and no TM possible because it has a common definition outside the business sphere.
The onus here lies on the TM registries. They create the problem by not giving applications proper scrutiny.
Yeah an “inference” is totally a guess. So let’s all start guessing.
I’m not convinced the panelist really understands the material put before him/her. The way it is written tells me the decision was made beforehand. When someone can’t make sense of facts, he/she usually will start arguing for his/her bias in a very awkward way, which makes no sense. I have read many cases where the arguments were solid, but this one doesn’t even come close. Extaraordinarily poor logic. He might as well just given the old children’s argument: “Just Because.”.
“The TM registry could nip this in the bud by doing a better job at not allowing names that are clearly generic as defined by an academic dictionary like Oxford (and not a silly urban dictionary). ”
Very True, they could also help nip things in the bud (going forward) by having NEW trade mark holders specify if they own the relevant domain/s. If they don’t then they should not be able to go after it by UDRP.
Its about time the granting of new Trade Marks caught up with the digital era.
For the last couple of hundred years ago domains did’nt matter one iota in Business but they sure as hell do now. 😉
This is horrible news for ALL generic .co holders. The .com’s want their typo-cousin, I guess 🙂
– TBC
Actually, had the Respondent read the disclaimer on the Trademark, it might have been a different story.
@TBC
I don’t think just for .co. This is a huge mess for domains in general created by the TM office. If you read a lot of TM certificates, they’re also a big mess with so many inconsistencies and wording that doesn’t apply to our computer age. It’s very clear what must be done, but unfortunately the old dinosaur is gonna hold on for a little while longer.
Another reason to avoid .co registrtion.
Why do people link Wikipedia as a source of information.
Wikipedia is useless as far as facts go. Anyone could change the content (pro or con) to suite their whims.
I dont think anyone should ever quote Wikipedia as a source of any content on any subject. Its a place to start to discover information but it should not be used as a link to prove a point or open discussions.
Just the way I see it
Cheers
As I understand “infer”, it is MEANT to be used in the legal way as “to deduce” or “conclude” from evidence given (Oxford definition). Unfortunately, the panelist has chosen to use “infer” when he means “guess” because there were not enough facts given to make any “inference”. Therefore a “guess” is given disguised as an inference. In any case , it was a wrong word choice or just plain masking.
@ Gazzup,
Bad faith is Bad Faith
================
Good logic, (unlike the UDRP idiot guessing)
Bad faith is Bad Faith, I have always said that about .Co
.CO is a intentional marauder that wants to steal .Com traffic
by way of Impersonation and confusion.
What would IBM be with out the M
a typo fake designed to mislead consumers.
Just owning .Co is bad faith.
So far it appears many of the decisions have gone against the .co holder. I think a few more decisions like this and it spells a lot of trouble. This could become the standard. They can start pointing to cases like this and use it as a basis for others. The “Bad Faith” part on a high profile domain may be hard to defend whether generic or not or even trademarked.
@Rick,
Do you think Godaddy & .Co Registry knew this would be an issue, but are pressing ahead anyway for the $$$?
– TBC
How will this impact the Sedo auction for the generic .COs next month. In particular, what does this mean for names like Drugstore.co, Shoes.co, Weddings.co and Business.co where the corresponding .COM “has most likely developed some degree of source identifying significance.” Aren’t they all at risk of a potential UDRP filing by the .COM holders?
Rusty
I think that is a fair question and yes I think they may all be at risk assuming the equivalent .com is an operating site and not just a parked page.
Of course in this case, the domain holder pointed the domain to another site.
Had the domain owner developed it into a site of its own would the case have turned out differently?
If the domain holder asked for a three member panel would the case have turned out differently?
If the owner of the domain takes this case to federal court will the judge rules differently?
I don’t know.
But I think its a factor that one needs to take into account, a risk which enters into the business decision of whether to acquire a particular domains and how much to invest into a domain.
MHB, good points. Possibly, if one develops the .CO and clearly brands it as the whatever.CO rather than merely redirecting, there may not be any issue.
Many of these cases seem to turn on some sort of sniff test, they recognize a lack of good faith when they see but it’s not something that can always be clearly articulated in the text of the decisions.
So, I would imagine that a fully built out site on the .CO and conspicuously identifiable as being a .CO site should be ok.
If this case were to be used as a precedent, that would be the biggest joke in UDRP history. I’ve read dozens of these similar cases in .com, .org, .net in the past year that had equally funny endings.
I think you have a point MHB. The fact that they didn’t do something with it but just redirected, may have been the key problem. Probably would have been better off making a nice blog site called pokerstrategy.co. This would have shown an independent creative impetus in having the name.
Wait until (if) .XXX is approved, all hell is going to break loose with trademark infringement.
“Had the domain owner developed it into a site of its own would the case have turned out differently?”
Good question but with a domain like pokerstrategy it would be difficult to develop it into anything other than a poker strategy site.
ie: pokerstrategy.com, pokerstrategy.co > same use developed = confusingly similar = loss of domain
So could’nt it still come under the “confusing similar” issue ?
whereas you may get away with a generic .co of a trademarked .com if it was used for something totally different that was not covered by the .com’s trademark.
Trade Marks are tricky to fully understand as there are so many potential issues and it can also depend on the interpretation of the individuals who decide a UDRP on any given day 😉
“Wait until (if) .XXX is approved, all hell is going to break loose with trademark infringement.”
All hells going to break loose on just about every single one of these new extensions, great stuff if you are a lawyer 😉
Found this in the decision:
“As far as bad faith is concerned the Complainant alleges that the Respondent registered the Disputed Domain Name for the purpose of selling it to the Complainant or to a competitor of the Complainant for excessive consideration under paragraph 4(b)(i) of the Policy and that evidence of this is contained within the Respondent’s reply to the Complainant’s request for voluntary transfer and its request for a transfer price of USD 20,000 – 25,000.”
Perhaps, the grossly unreasonable price for a domain name that was merely being used for redirection played a significant factor in the decision.
This is what happens when the U.S. allows foreign bodies like WIPO to make decisions that affect U.S. citizens. Sometimes WIPO behaves like a star chamber where a panelist costs only $1,500.00. You can ask for three of them if you have the money.
The Respondent should have put up the defense of reverse cybersquatting, which has been used at least once successfully, but in a U.S. court. The Respondent should have used it broadly, as in, THEY’re the ones who want to steal my domain.
Is this out there in the news media yet? It should. I wonder what that kind of news coverage will do to Colombia and GoDaddy’s SuperBowl commercials — will they have disclaimers such as, “if you buy a dot co, you may lose it?” Will they offer refunds?
Also, Congress should be told that this kind of decision will have a negative effect on the commercial growth of the internet. It should withdraw U.S. support for WIPO, including withdrawal of whatever funding the U.S. is providing (if any).
I suspect that, domaining being what it is, a solo gunslinger’s enterprise in the wild, wild west, the Respondent will be left to twist in the wind by himself without a legal defense committee. If that is so, all the domainers’ clamor for respect, and especially interest from the venture capital and private equity investors, will go unheard. What the VC’s and PE people will hear from their intellectual property lawyers and advisors will be this: be careful – hold back for a while. They’ll hold back for ten or twenty years.
From my understanding of the WIPO criteria, the extension is not considered in arriving at a decision but only what is to the left of the dot and this particular decision made no explicit mention of the fact that .CO and .COM are similar. So, the question then is would this decision apply to typos in general regardless of the extension or is WIPO implicitly handling the .CO extension cases differently.
While I don’t agree with this outcome of this dispute, as I consider this a generic term, I think it is hard to argue that .CO is not “confusingly similar” to .COM in general.
I predicted in the past one of the big winners in .CO will be lawyers, and it seems pretty true.
Brad
I am confused about the facts of the case:
1) Is there a trademark on PokerStrategy or PokerStrategy.com?
2) If so, was there unfair commercial use of the trademark?
Maybe the reasoning is faulty – but the decsion was the right one.
Some of you clowns persuing your own agendas must have missed the bit where the respondent tried to sell the domain for $20000-25000 to the TM holder = bad faith
“The registrant should appeal in real court”
Bwahaha…you think the respondent would want to throw good money after bad…for a domain that to all intent & purposes will never be developed (in the shadow of the full fledged site on .com)?
@aggro
I think the problem being addressed here is the generic nature of the name and whether it should have been TMd in the first place, not the asking price for the domain. “Poker Strategy” should never have been TMd in the first place.
Another thing that will happen, since this case is already precedent, is that the owners of older sites will move in on similar (and not so similar) domain names, by asking the panel to extend the application of the precedent. Lawyers think like that, and clients (corporate and humans) do, to. Judges, and panelists, can be persuaded to do so.
Example (I’m making up the names, and the situation, okay)
The owner of “car.com” will ask WIPO to apply the poker case, by extension of its principles, to “mycar.com.”
Then they’ll do it to “car3d.com” and of course “car3d.co,” and so on and so forth until WIPO says that’s far enough. In the meantime, a lot of damage will be done. It’s similar to ethnic cleansing, but with less bloodshed.
All because one panelist decided to make new law, which he did. And if you don’t like him, you can’t vote him out of office.
Pretty soon, following the precedent and its application by extension, the guys who got into this very early, the ones who own cars.com, bank.com and similar generics, will own the entire OED (Oxford English Dictionary), while the panelist who decided the poker case rests in his laurels.
– Sorry! Piggy backing not allowed –
I have heard that Registrar’s in the near future will be required to
to have a legal warning label on the Bill of Sale …
“This Bad Faith selection could be
dangerous to your Financial Health”
Copycats beware …
@ Rick Schwartz
This could become the standard.
They can start pointing to cases like this and use it as a basis for others. The “Bad Faith” part on a high profile domain may be hard to defend whether generic or not or even trademarked.
======================================================
I agree,
Bad Faith is Bad Faith …
Justice will be served!
So far from what I have read any .com that I own I see a few UDRP’s in my future and a large portfolio of .co’s
With the high profile auction of .CO names coming up (business.co, shoes.co, drugstore.co…), it would be nice to get some feedback from the registry. If this case would set a precedent for all the generic .CO domains, then every single cents spent on the .CO domains would be a waste of money.
It’s ridiculous for the panelists to use the asking price when considering bad faith. It’s either bad faith or not. We all want ‘significantly’ more than our ‘out of pocket’ costs. That’s why we are in this game. The freedom to independently price our wares is the backbone of free enterprise. If our prices are too high, the market will determine that our prices have to come down if we want to sell…or we have to wait. A decision like this is akin to theft. What right does a panelist have to tell us how to price our domains?
@ Em
I agree about whether the TM for “poker strategy” should have been allowed.
However, the fact is that they have a valid TM is a statement of fact.
The UDRP/WIPO is not the place to argue about or challenge whether it should have been allowed in the first place.
That – in addition to knowing of the TM holder’s site & responding by asking for $20-25k, is what lost it for the respondent.
Here’s a link to the case:
http://www.wipo.int/amc/en/domains/search/text.jsp?case=DCO2010-0041
If it doesn’t get you there directly, go to wipo.int and search their case database. The parties are Anachusa Ltd. v. Prasad Jason, advertoglobe in
Case No. DCO2010-0041
Their prices actually went up over the time. This is what I found so far:
Sources:
http://many.at/costofwipocases/
i’m very intersting with what you done here, just long time i had search this topic. many thanks to you and i hope you meet your success soon.