A few weeks ago told you about a UDRP had been filed on the domain name legalsupply.com.
At the time there was no indication who filed the UDRP seeking control of the domain, but the decision has just been issued and the complainant is eLegalsupply.com, LLC.
And guess what?
eLegalSupply.com just took the generic domain name LegalSupply.com away from the domain holder based off a Trademark for eLEGALSUPPLY.COM which was filed years after the original registration.
Moreover in the wild, wild west of UDRP decision the one member panel decided that “The Transfer Of A Domain Is Equivalent To A New Registration”
Yup against a ton of UDRP decisions that went the other way.
No wonder most domainer’s think that the UDRP is nothing more than a Crap table when it comes to decisions and speaking of crap here are the relevant facts and findings by the one member panel:
Complainant has registered its ELEGALSUPPLY.COM mark with the United States Patent and Trademark Office (“USPTO”) filed January 28, 2008; registered August 5, 2008.
Respondent’s <legalsupply.com> domain name is confusingly similar to Complainant’s ELEGALSUPPLY.COM mark because it differs only by a single letter.
3. Complainant never licensed or authorized Respondent to use the mark.
4. Respondent’s disputed domain name resolves to a website that features a banner stating that the website is listed for sale at domainnamesales.com and displays links referencing Complainant’s competitors.
5. Respondent has not been commonly known by the disputed domain name and the WHOIS information provides no indication that Respondent is associated with the disputed domain name.
6. Respondent registered the disputed domain name for the purpose of selling the disputed domain name for valuable consideration in excess of Respondent’s out-of-pocket costs.
7. Respondent uses the disputed domain name to intentionally attract Internet users, for commercial gain, to the resolving website by creating a likelihood of confusion with the mark as to the source, sponsorship, or affiliation of the disputed domain name and resolving website.
8. Respondent has demonstrated a pattern of bad faith domain name registration.
“The Panel finds that Respondent was not the first person to register the domain name. ”
“As of March 1, 2007, the domain name was registered to Kevin Daste at the registrar, Network Solutions, LLC. As of April 9, 2012, the domain name was registered to Respondent at the registrar, Fabulous.com Pty Ltd.”
“The domain name must therefore have been transferred to Respondent at some point after March 1, 2007.”
“Complainant has registered its ELEGALSUPPLY.COM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,482,692 filed January 28, 2008; registered on the Supplemental Registry on August 5, 2008).”
“The Panel finds that using a confusingly similar disputed domain name to host links advertising Complainant’s competitors is not consistent with a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). “
“Complainant also contends that Respondent’s disputed domain name resolves to a website featuring an orange banner on top of the screen stating that the domain name has been listed in the marketplace at <domainnamesales.com>. ”
“The Panel finds that offering the disputed domain name for sale does not indicate rights and legitimate interests under Policy ¶ 4(a)(ii). ”
“The Panel agrees with Complainant and finds that Respondent is guilty of typosquatting and lacks rights and legitimate interests in the <legalsupply.com> domain name under Policy ¶ 4(a)(ii).”
“Had the Respondent established that it was selling or otherwise dealing in legal supplies, the Panel might have decided differently, but there being no indicia of rights or legitimate interests in the disputed domain names, the Panel finds that the Complainant has met the Policy ¶ 4(a)(ii) criteria.”
“Respondent was not the first person to register the domain name. ”
“As of March 1, 2007, the domain name was registered to Kevin Daste at the registrar, Network Solutions, LLC. As of April 9, 2012, the domain name was registered to Respondent at the registrar, Fabulous.com Pty Ltd. The domain name must therefore have been transferred to Respondent at some point after March 1, 2007. Even assuming that Complainant’s first use of the mark was on May 7, 2002 – which Respondent suggests and Complainant denies – that use would still pre-date Respondent’s re-registration of the domain name by at least four years and nine months.”
“The transfer of a domain name is equivalent to a new registration under the UDRP
Accordingly, it is Ordered that the legalsupply.com domain name be TRANSFERRED from Respondent to Complainant.”
Certainly a troubling decision for any domain holder.
Just not domainers, but any domain holder.
Another horrible decision. Hopefully the LegalSupply.com owner fights this out in court.
Terrible decision.
Parking a descriptive domain having descriptive search results has already been established as creating rights for the owner.
The panelist definitely got this point wrong.
Just imagine:
Someone sold a business (along with domain).
The buyer will lose the business domain after transfer 🙁
Wow……UDRP SUCKS!
ICANN SUCKS!
Was the panelist Maninder Singh?
He is very biased against domain registrants……all his decisions are for the complainants!
Guy is just a …………you know what 🙂
The question is what are the legal instruments from preventing such inconclusice decisions in the future?
The one member panelist was:
Hugues G. Richards
com
Well I would argue the domain owner didn’t even properly defend it in the UDRP proceeding by not demanding the three member panel which is within his right
If you don’t spend a $1,500 to get a three member panel then what is the chance you fight it in federal court where fees are measured in $xx,xxx or higher figures not in $x,xxx figures
What’s strange is that eLegalSupply.com appears to be a private labeled affiliate face of LegalStore.com
They sell legal office supplies- nothing different than what is sold in Office Depot
eLegalSupply.com would say to me these are not the office supplies but the software, scanning, indexing, presentation templates, trial exhibits, depositions etc used in the digital practice of law. I spent years working in the legal niche for printer and scanner companies and there’s a great book called the digital practice of law which lays this out.
I’m not sure why the argument shouldn’t be….
You named your business eLegalSupply.com either because LegalSupply.com was taken and a computer made a suggestion that eLegalSupply.com wasn’t. You could have engaged a lawyer then to see if there was a way to buy the domain or get advice on whether it was even smart to name yourself this since there was already someone established. You created the confusion when you made this decision. And for 5 years you lived with it. And you aren’t going after the people who suggested the name without informing you that you could buy the name you wanted second hand.
Or, you may have named yourself eLegalSupply.com because the “e” was cool and you didn’t want to be just another legal pad outlet then. Either way you chose and continued to use this name.
Here are examples of 3000 companies who acted similarly and now realize truncating their name can improve business. And they bought the shorter name from $20-100K. Cheap considering an agency charges $25K to a million to think up a name. An it costs Office Depot $10 million to open a store. In fact Office Depot bought out a mail order office supply vendor for $85 million. It was the size of their inventory and subscribers that created value.
In your case, you don’t even have corporate info on your site. All you have are product feeds available to any site. Merchandise that is warehoused, shipped and carried by a third party. You just get commission.
How is this model any more or less valuable to society than a parking page?
In fact, if you want to talk confusion 65% of your type-ins go to the search bar instead of the browser bar. Instead of landing at your site, your prospect lands in a sea of competitors. Change the name doesn’t change this.
I think you’d do better buying illegal supply.com because most of your traffic will be lost by confusion to those who spell it as they hear it.
How about a class action suit?
So I can get cloudhosting as I own ecloudhosting.com
Whopeeeeeeeee!!
So, I guess this business practice is ok:
Establish what industry you want to be in.
Choose the top descriptive .com in that field – let’s say, Printers.com (for example).
YOU decide to buy and use a name VERY close to Printers.com – since it’s in use.
You decide to go with iPrinters.com (random example).
So, the best bet is to do this – wait until the name you can’t afford gets sold – because,
eventually it will.
Then you take Printers.com to court and establish that you were there first – when in reality, all you did was wait for the domain name to change hands.
Seems shady to me.
This is singularly the worst UDRP decision I’ve ever seen.
The transfer of a domain name is equivalent to a new registration under the UDRP
wha???
that’s like saying if you sold a patent today then the new date of the patent is today.
just does not make sense
Trademarkers have gone too far. UDRP decisions are just plane ‘ole BAD.
Sounds like they Rick Schwartz’d him. See Saveme.Com. It’s the new thing and latest craze in arbitration. Sue for one you really don’t deserve and see what happens.
What is it going to take to get WIPO to add some teeth to the reverse squatting provision so that companies can move for damages against such frivolous claims?
Presently, a plaintiff has only $1500 to lose in a WIPO effort to try to steal a precious .COM domain. Big hairy deal. The worst part is that the respondent has a lot at risk with very little to gain unless such reverse squatting teeth are enacted.
That’s it. I’ve had it with this dump! We’ve got no food, we got no jobs,… our pets’ HEADS ARE FALLIN’ OFF!!!
The real issue is that there is only one name and 1000s of people that could argue it should be theirs.
Do you give it to the highest grossing company?
The one who has more customers depending on it?
The one that owns the .net?
Do you give it to a startup cause the big guys have an advantage like the employment act?
The guy who owns the french name that translates to this in English?
If it’s Regal.com does a car brand take priority over a cinema?
It might be interesting if there was a way the lawyer representing the domainer could get info on how many shares of Google stock the ceo has owned and the company holds in pension funds and how much those shares have grown.
It would then be hard to claim that keyword advertising is not a viable business model.
Typosquatting! Put each word in MS spell check and tell me which one is the typo. Why didn’t the lawyer defend that?
I think the problem here is that past decisions against this owner marked him for life.
It is very well established that a transfer from one registrant to another starts the clock ticking again for the purposes of determining whether a domain registrant preceded a trademark registration.
But for those that found this decision wrong, you are indeed correct but for a different reason.
The complainant DID NOT HAVE A REAL TRADEMARK UNDER US LAW!!!!!
It says right in the decision that the “mark” was on the Supplemental Registry of the USPTO.
Registration in the Supplemental Register is not sufficient: WIPO/D2002-1103
Registration in the Supplemental Register might even prove that no rights existed at the time of registration: WIPO/DBIZ2002-0167
Registration on the Supplemental Register “provides the Complainant with no protectable rights” in the alleged mark, CyberTrader, Inc. v. Bushell, D2001-1019 (WIPO Octobrt 30, 2001). Indeed, it is “evidence that there are no common law rights at the time of application,” Roberta Chiapetta dba Discount Hydroponics v. C.J. Morales, D2002-1103 (WIPO January 20, 2003). It signifies that the generic or descriptive mark is incapable of crossing the threshold of distinctiveness accorded to marks enrolled on the Principal Register. Nevertheless, having a registration on the Supplemental Register “shall not constitute an admission that the mark has not acquired distinctiveness,” 15 U.S.C. §1095.
From INTA’s own website:
What are Principal and Supplemental trademark registrations?
The United States has two sections of the Federal Trademark Register: the Principal Register and the Supplemental Register. Most marks are registered on the Principal Register. The Supplemental Register is reserved for nondistinctive marks that are capable of acquiring distinctiveness (i.e. “secondary meaning”), but have not yet done so.
What is secondary meaning?
Secondary meaning, which is also referred to as “acquired distinctiveness,” attaches when a non-distinctive mark becomes known to consumers as a designation of source for particular products or services due to the mark’s long-term and extensive use. The exact amount of use needed to prove secondary meaning varies according to each mark’s level of descriptiveness, but a presumption of secondary meaning arises after five years of substantially continuous and exclusive use of a trademark in commerce.
What types of marks are registered on the Supplemental Register?
Marks registrable on the Supplemental Register include:
descriptive marks that are capable of acquiring distinctiveness,
surnames,
geographic terms, and
nondistinctive, nonfunctional trade dress.
What rights are provided by registering a mark on the Supplemental Register?
A registration on the Supplemental Register grants its owner the right to use the registered ® symbol when the mark is used with the products or services listed in the registration. A registration on the Supplemental Register will also block later-filed applications for confusingly similar marks for related goods.
How does a registration on the Supplemental Register differ from a registration on the Principal Register?
A registration on the Supplemental Register does not provide all the protections of a registration on the Principal Register. For example, a Supplemental Registration does not convey the presumptions of validity, ownership and exclusive rights to use the mark that attach with a registration on the Principal Register. A Supplemental Registration cannot be used to stop importation of counterfeit products. Also, a Supplemental Registration can never become incontestable.
How and why does one obtain a registration on the Supplemental Register?
One may file an application seeking registration on the Supplemental Register, if for example, one is certain the USPTO will view its mark as descriptive. More often, however, the Patent and Trademark Office rejects an application for the Principal Register and gives its owner the option to amend the application to the Supplemental Register. A trademark must actually be used in commerce at the time the applicant seeks registration on the Supplemental Register; trademarks not in use may not be registered.
Can one oppose registration of an application for the Supplemental Register?
No. Applications for registration on the Supplemental Register are not published for third party opposition, unlike applications for registration on the Principal Register. If a third party objects to an application for the Supplemental Register, it must seek to cancel the registration after it issues.
Can a Supplemental Registration be converted to a Principal Registration?
No. A Supplemental Registration cannot be converted into a Principal Registration. Instead, the owner of the Supplemental Registration can file a new application for a Principal Registration of the mark. If the trademark owner has used the mark sufficiently that it has acquired secondary meaning, the mark will be granted a Principal Registration, with all the protections it affords.
Yeap- as suspected there was an X factor- you may be treated differently
Second, there is the transfer of the Domain Names and other domain names from Mr. Daste, who seems to reside in New Orleans, to an entity that appears to operate out of a post office box in Charleston, the capital of Nevis. Perhaps there is an innocent explanation for this. However, in the absence of any submission from the Respondent, the Panel accepts that the most likely explanation is that this Mr. Daste is attempting to disguise his continuing connection with these domain names. If Mr. Daste honestly believed these registrations to be legitimate, it is difficult to understand why he acted in this way.
Lost:
citibuisnesscreditcards.com
citibussinesscreditcards.com
citicash.com
citivisa.com
QVCPRODUCT.COM
neimanmarcushome.com
OMFG not only did this cocksucker win a descriptive domain, but they also used a supplemental TM to do so.
It’s equivalent to winning a UDRP with NO trademark rights what so ever.
Someone needs to create hall of shame site and blast this idiot UDRP panelist on it.
is Hugues G. Richards even a lawyer ??
Yes, OMFG as they say in Latin….
Great decision. Only because the other party had a trademark. legalsupply.com should lose the domain. Total no-brainer here. It’s so funny that everyone here gets upset at people losing domains that infringe on others trademarks…
Another reverse high-jacking thief gets through the system. The arbitrator is an *$%&$er, imho.
“Legal Supply” trademarked?
We have definitely entered the “Domain UDRP Twilight Zone”.
Regardless of the respondent’s history Legal Supply is and only ever will be a generic descriptive domain name.
Of course if it was parked it would show legal supplies, duh.
The complainant knew the domain was not available when they registered their name.
Parasites should crawl back into the holes they come out of.
Mike This is even worse than you think.
the transfer wasn’t even to a new owner. . The owner is still Daste, or at least looks like it may be one of his entities.
So he likely just transferred in to his own company name. Unreal . . horrible precedent . bah !
Wow. This is truly criminal. Seriously. This “panel member” needs to be questioned. This is like a referee throwing the game. Maybe his wallet is a bit fatter…
This is ridiculous.
Being able to file a dispute like this is bad enough, being able to win it is unbelievable.
ICANN needs to take control of this process now, and reform UDRP in a sensible common sense manner. They brought about this process that is able to be abused and it is making a mockery of real courts.
UDRP has no respect for precedents, and no actual legal standing, which makes the entire process invalid.
Brad
Oh, and congrats to eLegalSupply.com for successfully (for now) stealing this domain through the perverted tool called UDRP.
I believe companies and people that abuse the system will get what they deserve in the end.
Also, this is completely invalid – “The Transfer Of A Domain Is Equivalent To A New Registration”.
With virtually any assets an owner is allowed to transfer their rights and interest to a new party. With domains it is different?
Brad
If anyone was squatting here it looks like elegalsupply.com, which sure looks confusingly similar to the previously registered legalsupply.com.
If broadly adopted, this principle — “The transfer of a domain name is equivalent to a new registration under the UDRP” — means a permanent reduction in the value of all non-infringing generic domains. It means that your preexisting domain rights are subordinate to a later registered trademark that is identical or confusingly similar. That devalues the domain as a marketable asset because if you sell it to someone else they are susceptible to a UDRP filed by the trademark-based squatter.
As for this part of the examiner’s findings — “Respondent registered the disputed domain name for the purpose of selling the disputed domain name for valuable consideration in excess of Respondent’s out-of-pocket costs.” — So what? The purchaser acquired a non-infringing asset, and the mere fact that its ownership was transferred between two parties should not alter its non-infringing nature. Since when is the hope that a legally acquired and legaly compliant asset may later be sold for additional value proof of anything except smart investment? Is the UDRP opposed to lawful profit?
This should not be allowed to stand.
When it comes to bad UDRP, the dam has sprung a leak.
When the dam finally Breaks, you’ll probably be able to run your own 24/7 cable channel covering the shit that will go down.
As in most things, there’s always bad actors on Both sides.
But, it’s clear that their “system” is overwhelmingly biased against domain investing.
UDRP is well on it’s way to becoming the next gold rush method of acquiring domain names (without having to buy them).
They may even become a victim of their own success when the system becomes unable to handle the sheer volume of cases, as the increasing hoards line up to try their luck at the domain casino.
Winner, Winner, Chicken Dinner …and a domain for desert.
UDRP needs to be Reformed!
ICANN itself needs to be Reformed!
Is is possible for the domain industry to create an alliance consortium to assist the parties losing cases like this by providing to them legal support and finance such activities? It would be interesting to discuss the opportunites relating to reducing/recovery the legal costs.
Michael, you should call Hugues and do an interview – I’d love to hear what his explanation is for this decision:
http://www.robic.ca/Professionnel.aspx?viewmode=0&id=31&language=en-CA
http://www.robic.ca/Professionnel.aspx?viewmode=0&id=31&language=en-CA
Question:
Do the panelists themselves have some sort of immunity from legal action regarding their decisions?
RE: “The Transfer Of A Domain Is Equivalent To A New Registration”
By definition this statement is FALSE. Domain names are transferrable.
RL it needs to be done, immediately if not sooner.
This case in particular is UDRP-assisted reverse hijacking.
legalsupplysucks.com
elegalsupplysucks.com
Both available to reg, now.
This seems almost like racketeering. Smells almost mafiosa !!
Can a RICO charge be filed by some attorney general over these seedy, criminal – leaning arbitration panels of the National Arbitration Foundation or the World Intellectual Property Organization , please ?
Hello, hello !!! We need help against this crooked UDRP system !!!
This is another reason why you should own the
.Co
version as well. Giving you more fire power.
Sold
ium.Co for $1,500.00
So all you have to do
IS TRADEMARK A DOMAIN!!!!!!!!
And they can no longer sell the domain or if it expires then it is dead in the water and no one can register it?????????
Are you kidding me.
Go trademark golf.com and if they go bankrupt the domain is yours!
This is just stupid all the way around.
“If broadly adopted, this principle — “The transfer of a domain name is equivalent to a new registration under the UDRP”…
Uh, Phil, that’s the law of the Third Circuit in relation to ACPA claims, btw. Schmidheiny v. Weber, 319 F.3d 581 (3d Cir. 2003). Now, I don’t know where you’ve been for the last nine years, but until a few months ago, that was the only US circuit court ruling on point. It’s been “broadly adopted” for nearly a decade already.
The only recent case on transfers re-setting the clock is GoPets Ltd. v. Hise, No. 08-56110 (9th Cir. Sept. 22, 2011), which cited Schmidheiny with disapproval. However, the cases are distinguishable on other grounds, namely that the “transfer” in Hise was to an entity solely controlled by the original registrant.
This legalsupply.com decision is flawed for other reasons pointed out above, but there are not “a ton of decisions going the other way” on the issue of naked domain transfers establishing a new registration for purposes of the UDRP, or the ACPA for that matter.
There are a couple of exceptions. Where there is a sale of the underlying business, or where there is a corporate reorganization, there are UDRP decisions that recognize a continuity of interest. Simplybusiness.com illustrates one of those exceptions.
But, seriously, anyone who thinks this is something new has got to have been living under a rock for years. And, having represented the successive owners of a domain portfolio dating back to 1999, but which was sold in late 2004, and thus having to deal with this issue every couple of months, I’m a little surprised at the surprise among people who follow this stuff even tangentially.
It’s really no different than trademark registrations, incidentally. They can be sold too. But a naked assignment of a trademark registration in the absence of ongoing goodwill, or for substantially the same goods and services is likewise not recognized as giving rise to a continuity of interest.
The outrage here is the sheer idiocy of transfer on the basis of a supplemental registration, when it was bleedingly obvious that the domain name had been registered to another party, albeit not this Respondent, when the Complainant chose its domain name and trade name in the first place.
Can we raise funds to get this stopped in court, I feel this has to be beat down…
There is a very simple solution to this litigious mess.
Simply own the
.Co
version.
Case closed.
Robert .co is looking to be a real bust, most end users do not even know it exists, I had a guy who owns the .com and .org of a domain, and wanted to buy the .net, .co is unregistered, pointed it out, he could care less.. what does that tell you, sure it has it’s niches, but overall, looking at drops, based on renewals and lack of typo traffic, they are dropping like flies…
Robert Cline – LegalSupply.co is still available, what are you going to do about it?
Sold
IUM.Co
for $1,500.00
What up
Now that the complainant won LegalSupply.com, is a UDRP for LegalSupplies.com next?
Wow… What an awful decision.
Next he should sue for just “Legal.com”.. afterall, it could be confused with his site.. Maybe after that he’ll go for “LS.com” too, after all it is the initials of his company and we wouldn’t want anyone getting confused now, would we?
And judging by the way these UDRP decisions are currently going, I would only be mildly shocked if he won them all.
@Mr.T “LegalSupply.co is still available…”
That’s kind of telling about how much people really care about .CO. Because if eLegalSupply.com was serious about covering all their “LegalSupply” bases, they would have registered that. As it is, they don’t even own eLegalSupply.co. (Which is also still available.)
Yes, Robert, you should snap both up, quick!
Truth hurts…
Or for domainers, I guess the facts get in the way of a good story
Domain was lost based on a shaky TM reg.
BUT..Daste didn’t help his case..
Daste was damn stupid to t/f the domain to a NEW REGISTRANT (even thought it may still be under his control).
Yes new registrant (ie different name from ‘Kevin Daste’)
Not just a different address – with the registrant still under “Kevin Daste” – which would still have been the SAME registrant
As we know from ddecided cases, a new registrant starts the clock ticking from Day 1 as if it was acquired by a new registrant..
(@ RL, you suck & your comprehension is dead wrong, schmuck)
Anyway good for Daste – serves him right!
They say (loss of) money is the best education…
That’ll teach him the finer points about domain law! B tch!
That Daste mofo sold insolvency.com for peanuts…is the reason he deserves this
note: in these UDRP threads, only 2 or 3 people are worth listening to.
The rest are just mental pygmy, knee-jerk domain parrots, high school dropouts who can’t or unable to grasp the finer points of domain law.
The other side of this is that eLegalSupply.com was registered in 2002. Why was it not important to obtain the LegalSupply.com name (reg’d 1998) only now, and not during the past 10 years? What changed, and why the sudden urgency?
Also, eLegalSupply.com was trademarked in 2008. So it seems that John Enyart (eLegalSupply.com registrant) was serious about using that as his business name, and not LegalSupply.com.
As Ozzy would say, “All aboard!…”
the question is how much in bribes (fees for the service) it cost for elegalsupply to procure such a judgement?
@Robert Cline – “SOLD IUM.co $1,500”
Robert, value of IUM.coM = $15,000+ … how do you explain that?
————–
LegalSupply.com – this name easily warranted getting a lawyer to defend.
Whoever owns LegalSupplies.com needs to watch their back in case these clowns come after that.
About half the time when I buy or sell a domain I use a standard domain sales agreement, and one of the sections in it transfers all trademark rights to the new owner. Would that have helped any in a UDRP case like this?
so let’s say you have registered a generic domain.
later abc corp registers a tm confusingly similar to generic domain.
you decide to retire and you want to sell generic domain.
can a buyer receive generic domain without being at risk of a udrp from abc corp?
also is it common for a panel to consider using a name like “legalsupplies” for something other than selling legal supplies to indicate lack of a legitimate interest? as if the panel thinks every domain name must be descriptive of the nature what you will find when visiting the site. there is no such rule.
if you go to milk dot com, there’s nothing about milk, just some random stories, recipes, etc. having nothing to do with milk. so for the purposes of the udrp does the owner lack a legtimate interest in this domain unless he can come up with some semantic connection of the site content to the word milk?
Hmmn… this is getting dangerously out of hand. Come on, this is the 21st Century. Are we simply gonna fold our arms and watch the ‘mighty’ reap from where they did not sow? Sedo, Afternic, NamePros, etc, please rise up to the challenge. Join us now and let’s fight this war together so that you too can remain positively bouyant. Domaining appears to being raped right now and we must quickly stem the tide NOW! It’s time to get some high profile attorneys involved in such cases. A DOMAINERS’ SOS Fund would NOT be out-of-place either.
Unless of course there’s some missing info from this write-up, my verdict is “NOT GUILTY”. Pure & simple!
It changed ” registrant ” (entity/ownership ) … hence the clean slate.
isn’t?
It’s the law in the 9th Circuit that the goodwill possessed by a prior owner transfers with a domain name at the time of its sale. That decision goes against what most UDRP panels have held, and I cite it every time it might be an issue with a UDRP. Looks like a bad decision all around. Three member panel might have helped.
Doesn’t anyone think it’s odd that all these companies who never challenged the rights over five or more years are waking up in the morning an it occurs to them “hey I can steal that domain for $1500”
This is a marketing campaign by people who make money on the other side of the business by helping companies monitor and protect their brand. Imagine a tool like Lead Refs but it searches for vulnerable domainers where $1500 is a cheap gamble- bad actors, privacy shield, people who can’t afford a fight or would be afraid to reveal themselves because of risk to other assets. i’m told 80% of the time with totally baseless arguments they win by default because no one shows.
So a commissioned sales rep calls on a the mark alerting them to a problem they never knew they had, they show all kinds of articles about cybersquatting years old and not rebutted by us and then boast that they have an 80% success rate catching names like this that would otherwise cost six figures (and they show comparables) offering their services to and know how to guide the prospect through the process. Their fee just a flat $10K which includes a one year protection plan. Then they show the Google page and argue this name will organically make the top and deliver more than the $10k in free customer acquisitions. Sounds good to me!
Last year 10,000 catches at $10k each plus acting as broker to find suggest and sell additional names. Do the math. Follow the money! Verizon who leads this charge reclaimed 10,000 names by UDRP last year claiming 9 million visitors gained. These are powerful case studies that motivate action. Meanwhile we let them set and control the message and have done nothing to get the other side of the story out. A banner ad under keyword cybersquatting offering the facts about your right skewed from our perspective would be a great start. ICANN?
I look forward to when they do this to a regular joe who owns a prized domain they spent all their cash on, and he is similar in state of mind to michael douglas in falling down
THEN the panelists and complainants will wake up and smell the coffee
A real reaction, not just rolling over
I’d pay to see it lol, michael douglas in falling down turning up at wipo hq, new underpants time for the bunch of fags lol
@Brett
“Three member panel might have helped.”
It’s looking like a competent Response would have helped. It looks like the respondent went after the “validity” of the trademark registration, without ever noticing that it was a Supplemental. That, and the single member panel, strongly suggest the Response was not competent.
Owen Frager –
I have asked several times on this site if there has been an increase in UDRPs and if so if there was some body of people who would stand to gain with increased litigation (lawyers – no offence Berryhill) who were pointing out potential cases to potential claimants.
This would be a natural extension of the auction frontrunning some have dabbled in.
I dont want to sound all conspiracy which is why I have asked about figures before.
IMO, this ruling is terrible. The one person panel made a terrible decision. The “e” holder probably couldn’t afford the far better domain. Therefore, they decided to take it the unethical way (IMO).
“Legal Supply” is not a typo site. It is generic. A typo of eLegalSupply, which is my opinIon is a bad domain choice, is eLegalSuply or eLegalSupplu and do forth. IMO, it is confusion of what is actually typosquatting and what is the better domain.
This is worse than the hyphenated ultimate guitar taking the unhyphenated domain. Should Schilling help in this matter since his DNS banner probably influenced the outcome?
IMO, the ruling shows lack of knowledge in trademark. The e site never applied for the generic trademark name. IMO, the one panel and the company accepting the domain lack integrity. You need integrity to operate in the legal field.
Horrible decision. Not people who own e domains can take the generic site. This indicates to companies to get the e and i domain, trademark the name, and then pursue a IDRP against the much valuable generic site. Unethical practice across the board.
@Owen — I recently posted an article at both circleid.com and internetcommerce.org which discussed that fact that 2011 UDRP filings at WIPO and NAF combined were flat notwithstanding a 9% ncrease in domain registrations last year — and that the number of domains involved in UDRPs is less than one-two hindredth of one percent of all domains.
That article also took note of some of the recent acronym UDRP rulings and asserted that there is a clear appearance of potential conflict in the fact that TM attorneys who act as ‘neutrals’ in UDRP arbitrations can also represent complainants or respondents. This is particularly troubling on the complainant representation side — you can have a panelist or panel treading new ground, such as the recent CEAT decision at WIPO, and then trademark attorneys can market that new opening to clients/potential complainants. If there is a corresponding increase in UDRP filings as a result, WIPO can be expected to issue a press release asserting an increase in cybersquatting — when in reality there has been a further erosion in registrant rights.
Let’s see… so the owner of eGoogle.com should file a case against Google.com. It is after all, “confusingly similar”.
But in all seriousness. How would you go about protecting yourself from this? Furthermore, let’s say that the UDRP continues to make ridiculous decisions like this – and the majority of domain owners concur – what recourse would we have against an entity to which we are subjected?
Back it’s not the lawyers they are on our side. It’s evil doers like fairwinds who ride in disguised as white knights
Just business in the real world
Where there is money there are vultures
And anyone with sales skills can eat your lunch because you sit passively and leave the door open for them
Mike Elliot frank scott day etc have been honest and open from day one they’ve established reputation and a traCk record that becomes the best defense- offense they are legitimate businesses
Anyone who hides usually has something to hide
so the owner of eGoogle.com should file a case against Google.com. It is after all, “confusingly similar”.”
That’s not a good example.
Google is a whimsical trademark. They haven’t gone after eGoogle.com but that doesn’t mean that whoever owns it is on solid ground with it, no different than if someone bought ePepsi.com or vMicrosoft.com.
Legal Documents is a deeply generic term. This is someone using a branded offshoot to take the generic term, so, if I start up ABCreditCards.com and obtain a supplemental TM for it, per this ruling, I can assert some right over CreditCards.com since it’s ‘similar’.
Oops, LegalSupply, not LegalDocs.
If this domain was parked on Internet Traffic, then it is another reason to avoid using that Platform (IMO). You’ll probably end up losing your best domains.
The blog owner here and FS probably don’t care whether you lose your domains (IMO). Their main concern is to probably protect their assets. Again, all talk and no action make domainers look like kids taking the bullying.
Expect to see more bad rulings. Domain blogs will keep writing to not help your cause. Maybe this is a way to increase trademark filings. Nobody knows until they fight.
Here is the irrelevant stuff as I think John Berryhill implies:
LegalSupply.com was first registered in 1998.
eLegalSupply.com claims a first use in 1999 in the USPTO.
eLegalSupply.com was last registered ‘again’ in 2002.
Archive.org shows a record in 2001 eLegalSupply.com meaning there was a prior owner and it let eLegalSupply.com expire.
..on and on and on….
The fact of the matter is ‘e’??? domains have a life of their own and LEGALSUPPLY and ELEGALSUPPLY can coexist without interfering with eachother – as the 2001 Archive.org record indicates.
Moving or moving and selling the domain offshore and add to that offshore WHOIS likely became the distraction the panel could not overcome – where the panel felt the reset button should be hit.
I do not think a 3-member panel would have agreed
@Overpriced –
You are just not a happy person – yes
We all appear to be sharing almost the same ‘sentiments’. But is there no room for an appeal against this very unpopular judgement (IMO)? Natural justice demands such. Surely, this cannot be the end of the road for the concerned domainer. I think the setting up of a global DOMAINER’S SOS FUND (under whatever name) might just provide enough funds to move the case up another level… to the mainstream courts. All we appear to be doing right now is presenting our case in the people’s court where the verdict could be morally upright but definitely meaningless, at least in the short term. I wonder who is next. Father, please save your ‘poor’ children!
@overpriced. We will take action. Type ‘bad business’ in google and you’ll see my site. We will add UDRP there soon.
This is actually a problem many domainers (including Rick Schwartz with his current UDRP claim regarding SaveMe.com by a Brazilian company) will be facing in the future:
If you are the domain owner who has registered a disputed domain BEFORE someone else registers a “confusingly similar” trademark, then you are reasonably safe.
However, from that point on it will be difficult to sell/transfer the domain to another registrant, because that “new” owner now has acquired the domain AFTER the registered trademark right and will be much more vulnerable to a UDRP claim.
(as a selling domainer you would actually have an ethical obligation to disclose past UDRP or other trademark issues to a buyer)
Points to take home:
1. Before you buy a domain do a quick search of the keywords in the search feature of the US trademark office (TESS), and search the domain name in the history of UDRP filings.
2. If you buy a domain that has either possible trademark issues with the keywords or that has had a past UDRP claim you should only acquire it only if you are definitely planning to use it yourself for a business purpose that does not conflict with the business of a trademark holder and could not reasonably be interpreted as “confusingly similar”.
3. If you sell a domain and are aware of possible trademark conflicts or past UDRP filings it is your ethical responsibility to disclose these to a potential buyer. Not doing so may expose you to liability for potential subsequent damages.
Again, keep in mind: the main issue with trademark disputes is “confusingly similar”. The key purpose of trademark law is to assure that consumers are not confused about trademarked companies or products.
If you own a domain that might cause trademark conflicts, then at least DO NOT resolve it to anything that could be construed as “misleading” or “damaging to the trademark owner” or as exploiting the trademark for your personal gain. The safest option is to not resolve it anywhere, that way there is no possibility of confusion whatsoever.
An interesting example of a domain and website using a trademark (“Chevy”) is Chevy.NET.
Chevy.COM is obviously owned by General Motors (who owns trademark rights for the words “Chevy” and “Chevy Trucks”).
Chevy.NET is an independent website with a clear business purpose, which has a disclaimer at the top of the “About Us” page indicating that they are not affiliated with General Motors.
Obviously this appears to be a valid use of the domain, because otherwise General Motors most likely would have claimed it a long time ago.
(Of course it is also possible that they don’t pursue this site because it does ultimately promote their own products…)
Interesting times, indeed…
How is this much different than what HSBC did in 2007 with the CreditKeeper.com case?
To recap, the domain CreditKeeper.com was registered in 2001. TMs were established in 2004 for “CreditKeeper” by a company that HSBC later bought.
The CreditKeeper.com domain was sold at the end of 2004.
UDRP launched in 2007. 3 member panel found:
– the domain name was “registered” within the meaning of the Policy by virtue of being acquired by the Respondent on or about December 15, 2004.
– the Complainant’s TM for “CreditKeeper” gives them rights to file against CreditKeeper.com
– a previous registrant’s good faith registration of a domain name DOES NOT immunize one who subsequently acquires the domain name from further scrutiny.
– the Whois Privacy service didn’t forward the Cease & Desist letter to the Registrant, and the Panel found “a failure to respond to a cease and desist letter can be evidence of bad faith. ”
So, based on HSBC and eLegalSupply.com the new game plan is:
1) create a TM (or even a Supplemental one) on a product/service with a generic name, like HomeOwners, BabyBook or JunkCars
2) wait for the domain to change hands
3) launch a UDRP
Lather, rinse, repeat.
Sounds like a Patent Troll business, but applied to domains. And before you think that it’s bottom of the barrel people doing Patent Trolling, read this: http://anewdomain.net/2012/04/05/who-would-fund-a-patent-troll-tech-companies-computerworld/
So, I think you’ll see more of the 3 step Domain Trolling happening in the coming years. DomainTrolling — defined here. Feel free to use the term. I’m busy… going to go file some Trademarks. Look out for my UDRPs in a couple years. Investors welcome.
DTVI
Domain Trolling Ventures Inc.
In The Landmark Group v. DigiMedia.com, L.P., NAF Claim Number: FA0406000285459, the same panelist Hugues G. Richard was of opinion that “Respondent alleges that its business model is the registration of large numbers of dictionary words commonly searched by Internet users, and that it generates revenue by providing pay-per-click advertising links… As long as the domain names have been registered because of their attraction as dictionary words, and not because of their value as trademarks, this is a business model that is permitted under the Policy.”
In CB Publishing, LLC v. Akway International Ltd c/o Hostmaster, NAF Claim Number: FA0702000926506, the same panelist Hugues G. Richard was of opinion that the Respondent,
who registered and parked cbpublishing.com, “has rights or legitimate interests in the disputed domain because it is using it to make a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i), by advertising various publishing services”.
In this case, according to the same panelist, parking of LegalSupply.com advertising “legal supply” services is not good.
I wonder what is real opinion of NAF panelist Hugues G. Richard on parking of domains incorporating dictionary terms?
The only logical explanation seems to be that this panelist decides the case first (how he feels to be honest) and prepares argumentation to its decision later. What makes LegalSupply.com case different? Maybe it is that the Respondent was not completely honest, claiming that it registered the domain name in 1998? Providing false or misleading information by one party may always prompt the Panelists to decide in favor of the other party…
@Brian,
“I’m mad as hell and I’m not going to take it anymore”
-The Network (Howard)
The Network is UDRP
The viewers are domainers
Who is more powerful?
@Chris,
Easy solution is to deal with less expensive domains. Develop your websites to give web surfers good information.
Anytime an end-user has a need, they will want to take something that belongs to another. It is usually a far better domain than they run.
Create a website dedicated to these unfair and or unethical rulings. Domainers don’t have time to follow the steps you outlined. There are domains that are more generic than LegalSupply. Some companies don’t attempt to go through an unethical route to pursue them.
Why waste time? Chances are that ethical domainers will make ethical decisions. Previously, StatConter on InternetTraffic featured a StatCounter link. Since then, the link has been updated. It is an obvious typo owned by Name Media.
StatCounter is nice not to take that domain. Input StatConter in Google. You will get StatCounter. However, the updates were made on the parked site to avoid such competition. Therefore, the site is not conflicting. Case closed.
If you own a conflicting domain, change the focus to avoid unwanted attention. Close barriers that normally will create confusion and or give end-users firepower to take your domain investments.
In my opinion, parking companies are irresponsible. They hang their customers out to dry. The parking companies should take responsibility or lose out big.
Joseph –
Very Good Stuff. Thanks for sharing it.
And only with 200K in legal fees this case would not hold water in the USA under ACPA – the 14th Amendment of equal access (which is implied in ACPA) would shine – LEGAL SUPPLY has not even remotely taken on secondary meaning.
I am still convinced that the perception of “running for the hills” to an offshore registrar in St. Kitts & Nevis – as Joseph might be refering to as not being “completely honest”, is where the decision was made and the Panel worked backwards from there.
@ Joseph
The issue in this particular case is not when it was initially registered or whether parking is a ligitimate business issue, but WHEN IT WAS TRANSFERRED (i.e. acquired by a new owner, who at that time has to respect trademark rights acquired before the transfer). The critical issuer is the point in time when ownership was established.
In this particular case the NEW owner acquired the domain AFTER the trademark was registered and was silly (or more likely ignorant) enough to resolve it to a destination with services that conflicted with the trademark holders services.
This is actually from a legal point a correct decision and a failrly straight forward case.
Had the NEW owner resolved the domain to no page or a page with content unrelated to the trademark holder’s services he would with near certainty not have lost the domain.
@ RichardL
You are making essentially the same point I made.
A company filing a trademark AFTER a domain has been registered will most likely not succeed against the original domain owner. But if domain ownership changes they will have a shot at the NEW owner, especially if the new owner creates any hint of trademark impropriety (i.e. parking on a site with links to competitors, or any other way that may create confusion or interfernce with the trademark owner’s goods or services).
A NEW owner will most likely be safe as long as he does not resolve the domain to any site (or at least not to a site with potential conflict issues) or if he uses it for his/her own legitimate business.
IT IS ILLÉGAL…..
Who are they ? To do that ?
ALL THIS SUCKS . Wé are in à dictatorship…
When you make à transfer from you to you because it IS prédécesseur and change of registrar to save money. It is ILLÉGAL ? Internet is looking like dictatorship
As to the parking… If you are still parking your generic domains using google feed, please do yourself a favor and check what ads are shown – for EACH of your domains. An example (made-up for the purposes of this post). You own BlueParrots.com and decided to park it. You even set “parrots” or “birds” keyword with your parking company. Now, you visited the domain and found ads related to, say, finances. Why? Because there is some company called “Blue Parrot LLC” providing asset management services, you never heard of this company, but google decided to ignore your suggested keyword to make more money to them (and to you). The visitors of your domain may be indeed looking for asset management ONLY! Blue Parrot LLC may indeed file UDRP and you will not win. So, if you want to be safe, you should somehow change the parking lander. Remove 1-click configuration. Set associated keywords manually. Since all “G-based” parking providers are required to show a custom search field, which may be small or large depending on lander, you should accept the fact that you will still receive parking revenue from this unfortunate confusion, as the visitors will still search for “asset management” in this search field, but at least you will be safe in UDRP sense…
“Here is the irrelevant stuff as I think John Berryhill implies”
I was responding to the notion that “change in registrant = new registration” is some kind of new idea as a UDRP or ACPA decision principle. There’s nothing new there.
Yes, the decision is awful for a lot of reasons, but not for that one.
As RichardL points out above, that principle goes back further than the creditkeeper.com decision.
Here is what panelists are trying to avoid (and I’ll get to where they run off the rails):
Example 1
——–
Albert has a domain name – fishythings.com – since 1999 and he uses it for advertising aquarium supplies and fish.
In 2002, Bob starts a clothing company specializing in selling fishnet fabric clothing. He calls it “Fishy Things”. He gets a trademark for “Fishy Things” for retail sales of clothing.
So far, no problem. Albert can keep on doing whatever he was doing before Bob started his business.
Now, Bob’s clothing is really successful and develops a huge reputation. This is still not a problem for Albert, but Albert should keep an eye on his web page, to make sure it stays with aquarium and fish. If Albert starts advertising clothing, some UDRP panelists (of the Andrew Christie variety) won’t care that Albert was there first. Other UDRP panelists would disagree, so long as Albert had the domain name first. This is one area where UDRP panelists disagree.
Okay, so.. along comes Charlie. Charlie knows that Albert doesn’t really do well with the fish business, but Charlie is perfectly aware of the clothing brand. Charlie then buys the domain name fishythings.com from Albert and starts advertising clothing that competes with Bob. In fact, Charlie pays a huge premium to Albert, well over the value of the domain name, in order to get it for that purpose.
——-
I’d be curious to know what the general sentiment is about whether or not Charlie has registered the domain name in bad faith?
Because that’s the reasoning behind the “transfer as new registration” thing comes in. In Example 1, the entire reason Charlie bought the domain name, and then started doing something with it that Albert wasn’t, was because “Fishy Things” had become a big clothing brand.
The idea that new trademarks can limit value – NOT, of course, as applied to descriptive and generic terms – is not a new one, and has always been true outside of the domain name context. There are two examples that illustrate this point. My name is “Berryhill”. Twenty years ago, if I had gone into the business of running a Mexican restaurant, I would have been free to do so, and to call it “Berryhill”. Today, I can’t do that. The reason I can’t do that, even though it has always been my name, is because there is a company in Texas that started a chain of “Berryhill” Mexican restaurants, and they have a federal trademark registration for “Berryhill” for restaurants. So, even though it’s been my name for almost half a century, there is now something for which I would be infringing, even if I used the name I’ve had all along. That is not new, and has been basic trademark law for a long time.
Another example is senior use to federal registration. Let’s say you are operating a bakery called “XYZ” in the Chicago area. Meanwhile in California, someone else starts a bakery in California. Their business takes off and spreads to several western states and they obtain “XYZ” as a federal trademark for baked goods. The result of that situation is that you can continue to operate your Chicago bakery, and you have senior rights to them in the Chicago area where you were always operating. But their federal registration has the effect of locking you in to that Chicago area. You would not be able to expand your use of the brand beyond the area where you were originally operating. Again, that is nothing new, and it has been that way for decades.
Laugh All You Want At Robert Cline, But How Much Have YOU Sold Today?
Not only he is FOR real, the LLL.co is a gold mine according to this guest post from legal magazine
Unmasked… tracked, traced and served on a silver plank, from Korea to Spokane to Long Beach meet the real man (or three men) behind Robert Cline
http://fragerfactor.blogspot.com/2012/05/laugh-ll-you-want-at-robert-cline-but.html
All generics are in dire danger and can never rest.
The best thing to do is also get the
.Co
as well.
John it’s still a case of one domain for every thousand matches
Does regal the buick count over regal the cinema
Or by default to the company with the highest revenue and most geographies
To the French domain owner of the one that means Regal in English
Or like handicapped spaces does a certain amount have to be offered to startups and minorities first
In the yellow pages the heading says Legal Supply and that doesn’t mean Legal Supply Inc is entitled to the top and biggest ad- it’s open to all.
Maybe directories are the answer I think condominiumizing untapped sub-domain potential is where the bread and fairness lies remember Rick Schwartz Men.com: Men seeking Men enter here women seeking men enter there
“1. Before you buy a domain do a quick search of the keywords in the search feature of the US trademark office (TESS), and search the domain name in the history of UDRP filings.”
The only problem I have with that suggestion, which is not a bad one, is that you have to understand that:
“Things in TESS” are not necessarily “Trademarks”
I see things from domainers all of the time where they say stuff like, “There is a live trademark in TESS” when they are talking about a refused, but not yet abandoned, application for some generic or descriptive term. Likewise Supplementals. Likewise 2(f) registrations relative to a domain name which was registered not long after the claimed date of “first use”.
It’s not rocket surgery, but domainers are just awful at interpreting what TESS records actually mean, or in using search terms inclusive enough to find relevant things.
@Owen
I’m not sure I understand your reply. I agree this decision sucks. I’m simply pointing out that the reason for the suckage is not that there is a “ton of decisions” holding that transfers don’t reset the clock. There aren’t. On that particular issue, there is no surprise here.
It DOES suck for other reasons, though.
When you are talking about dictionary words arbitrarily applied, then you are correct, “REGAL” is a mark used for cars by one entity and for movie theaters by another. If you have REGAL.com, you can’t use it for cars, and you can’t use it for movie theaters. If you want to use it for, say, package tours of palaces, that’s fine. (now, I haven’t actually checked if someone uses it for travel agency services, but you get the point)
Not all trademarks are created equal. Some are more distinctive than others. While “REGAL” and “UNITED” can and are used by multiple parties, there are some marks which are inherently distinctive – they don’t mean anything else but as a reference to the trademark. For example, you can’t say, “Oh I’m not using XEROX for copiers. I’m using it to sell shoes.”
tess won’t tell you about tm’s in other countries.
it won’t reveal state tm’s or potential common law tm’s.
but what percentage of udrp’s are based on non-us federal tm’s?
@richardl – it is certainly bottom of the barrel people. it’s a fear-based business. plain and simple. and as for who would fund them, it’s anyone in fear of being sued. so yeah, it’s easy to find willing participants.
to manage p.r., they can reinvest some of the protection money toward “innovation” and let the press feed on that. puts them in a better light. but will they take on development? don’t hold your breath.
the i.v. business is based on threats, nothing more. it was founded by a guy who regularly had to deal with simialr threats himself while at m s f t. he learned the “game”. and this is his “revenge”.
It’s fine to feel it’s illegal. Do read your registrar’s contract, though.
Well, it looks like .co also uses UDRP for domain-trademark dispute resolution:
http://www.cointernet.co/domain/policies-procedures/dispute-resolution-co-domains
Thus, so-called generic .co domains aren’t necessarily any safer than .coms.
Owen Frager, you have the most pointless blog on the internet and your comments are just as bad.
I wouldn’t go that far Dick.
I think his comments are far more stupid imo.
But he has some of the best articles I’ve read last year and some of the dumbest.
In my book that beats being down the middle of the road.
He makes me laugh and cry.
the rules as you thought are
fricken changing folks.
The only fricken constant is change.
live with it.
.com was yesterday’s news
.Co is todays news. live today and not the past.
Robert, you’re right, live today, but also consider the very near future. Companies like Facebook are concerned (as they well should be) with how people are moving from computers to smartphones and apps, and how that will affect their advertising revenue.
This isn’t about what alternative extension to .COM your website has, in fact that should be the least of your concerns. It’s about how the entire way in which people interact with the Internet will change.
If people at the top are concerned about the potential loss of value their websites generate because of this change, those who are struggling at the middle or bottom should be even more worried. People won’t even know you exist.
As you say, the rules are changing. But it isn’t about .CO vs .COM. That’s a trivial battle you’re waging, in comparison to the more important changes that you should be preparing for.
My comment appears to be flagged, so I’ll try again.
Bit off-topic, but .co domains appear to use UDRP for domain-trademark dispute resolution also. Thus, so-called generic .co domains aren’t necessarily any safer than their .com counterparts, especially IF someone wants to grab a generic .co domain from another using UDRP.
The domaining business is in jeopardy
with the bourgeois wielding their “cult status”
to take independent domains from us.
They are killing creativity and business
smartness which are characteristics of
entrepreneurs. It is sad!
There is cult coup to suppress the ordinary
domainer who wants to use his or her creativity
to own a business on the world wide web.
I expect an era when the heavy weights will
start fighting themselves and when the dust
settles, they will come to their senses.
My 2 cents.
With the right research, a small investment to kick off a new business, and some balls; a guy could do quite well UDRPing domains.
Watch out, punks…here I come.
Berryhill –
Great point, fantastic illustration of the reason behind the aplication of the law. IMHO The situation it is meant to protect as shown by your timeline of events is 100% bad faith.
The transfer of the domain itself should not make it bad faith but the subsequent usage after the transfer should be all that matters.
Thanks Mr Berryhill for taking the time to add real insight to these blogs.
It’s not that surprising. The domain was not being used in a pre-existing competing business similar to the complainant’s, so the respondent could not claim prior rights on that basis.
@John B – Rest assured that I have been residing in the bright, SPF-slathered sunshine and not beneath a boulder. Yes, the Schmidheiny decision exists but, as you observe, it is nine years old and a Third Circuit case, so we might well see a different decision if a trademark action was brought in the Fourth Circuit where VeriSign and therefore .com in rem jurisdiction resides, and where the post-2003 evolution of the domain aftermarket and the inherent value of generic domains could be brought to the court’s attention. Besides, UDRP practice is not bound by any national law — as the WIPO Overview of panel decisions notes at 4.15: “…the decision framework of the UDRP generally does not require resort to concepts or jurisprudence specific to national law (other than with respect to the question of whether trademark rights exist)”. (And I refer to the WIPO overview throughout this post because, even though this was a NAF decision, WIPO provides the only comprehensive summation of/guide to prior UDRP decisions and overall practice.)
National law aside, I am well aware of the portion of WIPO 3.7 stating that “the transfer of a domain name to a third party does amount to a new registration”, and had I known that my late night posting would be subject to such a persnickety critique I would have been more precise in articulating that my concern was with the application of that principle to a domain name consisting of one or more generic words vis-à-vis a trademark registered after the original registration of said domain name, where such trademark consists of generic words preceded by an Internet-referencing prefix such as “e” or a suffix such as “web” or “net”. The panelist appears to endorse the complainant’s contention that, in and of itself, such “circumstances indicate that Respondent registered or acquired the disputed domain name for the purpose of selling the disputed domain name to Complainant for valuable consideration in excess of Respondent’s out-of-pocket costs”.
The panelist’s shallow and mechanistic determination as to whether this is a case of “confusing similarity” indicative of bad faith registration fails to grasp that all sorts of parties might be interested in acquiring this combination generic domain name other than suppliers of goods to lawyers – such as an indie record label, a youth-oriented clothing line, or even a licensed medical marijuana dispensary. This decision would support a view that the registration of such trademarks as etrade, ebay, or eharmony might automatically preclude or devalue the post-TM-registration initial registration or third-party transfer of such generic domains as trade.tld, bay.tld, or harmony.tld – at .com or any other TLD subject to UDRP proceedings (and we have thousands of new gTLDs coming, so that would amount to a very broad grant of preemptive power to such species of trademarks). That’s what the panelist did here, in clearly adopting complainant’s contention that “Respondent’s domain name is confusingly similar to Complainant’s ELEGALSUPPLY.COM mark because it differs only by a single letter”.
That conclusion is highly questionable. Again, would anyone looking for an online auction really confuse bay.com with ebay.com, etc.? And when we look at the WIPO Overview at 1.10, it states, “A domain name which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name.” Well, is legalsupply an obvious misspelling of elegalsupply? It looks to me like it is the correct spelling of two combined generic words. I think an argument could have been made that the trademark “elegalsupply’ is not even a dominant or principal component of the domain name, because the “e” prefix is such a critical modifier (again, by analogy, “etrade” should not be viewed IMHO as the dominant or principal component of “trade”). So a policy that is intended for true typosquats such as elegelsupply or elagalsupply has been twisted in this case to label the combination of two correctly spelled generic dictionary words as a typosquat.
Even more to the point, WIPO 1.2 states “In order to satisfy this test [for confusing similarity], the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms.” Well, in this instance the relevant trademark elegalsupply is not recognizable within the domain name as it has greater breadth than the name; notice in particular that Overview point speaks of an “addition” to the trademark when the generic words domain at issue consists of the trademark with the all-important e-prefix subtracted. (And, again, it was the complainant who chose to add e- to a preexisting domain name.)
There are of course other WIPO principles relevant to this decision (particularly 2.2, as to whether there are rights or legitimate interests in a domain comprised of dictionary words), as well as the overall feeling that a better defense combined with a request for a 3-member panel could have yielded a different or less worrisome result. As you point out, this decision features “the sheer idiocy of transfer on the basis of a supplemental registration, when it was bleedingly obvious that the domain name had been registered to another party, albeit not this Respondent, when the Complainant chose its domain name and trade name in the first place.” Indeed, the panelist here declared his mistaken belief that “The fact that the trademark is registered on the Supplemental Register and not on the Principal Register is not a factor to be considered under the Policy.” So here we see another troubling NAF decision, like the Hardware Resources one of several months ago, in which a domain was transferred to a “rights holder” who in fact seems to lack the requisite rights. Where is their panelist quality control?
Wrapping up, especially since the WIPO Overview concedes at 4.1 that “The UDRP does not operate on a strict doctrine of precedent. However, panels consider it desirable that their decisions are consistent with prior panel decisions dealing with similar fact situations.” – and since any scan of the Overview yields the observation that there are multiple exceptions to consensus views as well as multiple “developing areas of UDRP jurisprudence” – it seems incumbent upon all of us who toil in the legal and policy realm on behalf of domain investors to try to nudge such developing areas toward a greater recognition of domain rights vis-à-vis trademark rights. That is, some decent respect should be paid to the bundle of valuable rights that make up the intangible asset called a domain when it rubs against the intangible asset known as a trademark. Such respect should surely extend to a domain consisting of two correctly spelled dictionary words that was registered well in advance of complainant’s own domain and trademark registrations, acts undertaken with full knowledge of this disputed domain’s preexisting status.
“Rest assured that I have been residing in the bright, SPF-slathered sunshine”
Just warn me this year before you sneak up on me at Bethany Beach again. That was one of the weirdest moments of my life.
I don’t know where this is going to go, but there are some problems with the way the law reads and domains. Any domain I get for any niche is confusingly similar to some other names for that niche. I am sure we will have a decade or two while the courts start trying to sort out the internet and domains.
The. Dot. Co is not solving anything…
For theone who are not aware this is colombia, so the country code tld protect in colombia …. Are you crazy enough to start your biz in bogota ?????????
Country code tld = trademark right = in it s on country….
Indeed. That’s why I’m finding it rather odd how .co is arguably any better than .com other than being one letter short, much more be able to solve domain-trademark issues since it’s also using UDRP.
People need to start suing the WIPO panelists or the organization itself otherwise this is only going to get worse. At the very least respondents should be able to appeal the decision.
@ John B — I would characterize that unexpected encounter as happening upon rather than sneaking up — but it was strange to be walking up a sparsely populated beach and run into you and your family — hope you and they are enjoying the holiday weekend
From the go.co website comes the following background information as this country code TLD (ccTLD) —
.CO, a global, recognizable, and credible domain extension, is brought to you by .CO Internet SAS, a joint-venture between Arcelandia SA and Neustar, Inc (NSR). As a global provider of managed DNS services and registry solutions, USA based Neustar, Inc. provides the domain name resolution for .CO and other domain extensions such as .US, .BIZ, and .TRAVEL. Arcelandia is a Colombian entity with interests in a variety of internet related ventures.
The .CO top-level-domain is the country code extension assigned to the Republic of Colombia by ICANN, the organization responsible for assigning domain name extensions around the world. As is common with certain country-code extensions that have broad global appeal such as .TV (Tuvalu) and .ME (Montenegro), Colombia made the bold decision to share this resource with the global internet community by adapting the registration policies for .CO to industry standards and enlisting an international joint-venture – .CO Internet SAS – to manage the marketing and operational aspects of this domain extension.
As for alleged cybersquatting disputes, .co registrants are subject to UDRP same as .com —
If a person or entity claims that your domain name registration infringes on or violates their rights, an administrative proceeding under the Uniform Domain Name Dispute Resolution Policy (UDRP) may apply to help resolve the claim. The UDRP was adopted by The Internet Corporation for Assigned Names and Numbers (ICANN) for the quick and inexpensive resolution of domain name disputes and is a simple and fast process that trademark owners can initiate with an accredited Dispute Resolution Mediation center.
Finally. .co has additional available m,easures to address other potential threats and harms —
Put into effect on December 1, 2010, the Rapid Domain Compliance Process gives the .CO Registry the ability to quickly suspend any .CO domain name, if it’s being used in a manner that appears to threaten the stability, integrity or security of the .CO Registry, or any of its registrar partners – and/or that may put the safety and security of any registrant or user at risk. The process also allows the Registry to take preventive measures to avoid any security threat.
The new team running .co has repurposed it in a very compelling and responsible way. But to assert that it is somehow a haven from UDRP jurisdiction or problems is quite mistaken. Flaws in UDRP must be addressed to imprve its operation at all gTLDs and all the ccTLDs that employ it.
And on the sixth day, God created MANchester……..
any tld within the icann system will be subject to icann “corruption” or whatever you choose to call it. that is, making money via domain names at the expense of trademarks. but maybe(?) the idea some .co fans have is that we could have a purely “generic” tld. imagine if a tld registry excluded all trademarks (and focused on names that for one reaosn or another could never be trademarked). no trademark system is “perfect” and neither would this be a “perfect” system. but it is certainly possible to limit what can be registered to avoid a vast majority of domain name/trademark disputes. would such a registry be useful?
it is possible to have a tlds or several outside the icann system. they do not have to follow the icann approach with which so many are unsatisfied.
and accessing such tld’s can be accomplished without sacraficing access to icann-sponsored tld’s. contrary to popular myth there is no need to “split the root” to accomplish this. it is not necessarily an “either-or” proposition.
whether such tld’s would benefit domainers, i’m not sure. what do you think?
keep in mind a lot of domainers do rely on confusion with trademarks in order to receive the traffic that generates the parking revenue needed to pay registration fees, e.g. for their non-infringing generic names that might be sold at a markup to end users (but which do not receive enough parking revenue to cover their own costs).
The problem is that most domainers never develop their domains. People who think domainers are providing valuable information lack insight.
Domain investors ask ridiculous prices. They block innovation. They hold back valuable information to keep lower tier domainers coming back.
This is karma at work. If you develop and use your domains the right way, there is no reason to worry. However, parking domains on domain parking sites who take no responsibility for their mistakes is unintelligent. If you lose your domains due to parking companies, you deserve it.
Seems like DomainNameSales banner and their links served a minor role in this domain case. Not every person has the money to defend cases. $1500 to a wealthy person is nothing, but it is a lot to another.
Legal supply is a good domain. It is no beauty supply, office supply, medical supply and uniform supply.
Develop your domains and use them. Parked domains offer no value on the web. Most links lead people to a pointless site. Keyword show up in website which have nothing to do with the search result.
In a way, domainers deny innovation. End-users overspend on domains rather than learn how to analyze traffic. Better luck next time.
Waste of time debating over a unappealing domain that domainers will overprice. There are far better supply domains than LegalSupply. It is no that generic of a donain to create buzz.
I can see if OfficeSupply, MedicalSupply and BeautySupply were hit with a UDRP. Legal Supply is not that great of a domain. Discussing the domain is pointless. I’m sure some here think the domain is worth $50k or more.
You can locate better unregistered domains, that if developed right, can deliver thousands of uniques and revenue in a few months. A few niches provide that playing field. Stage is a premium generic that is worth discussing. So is the NewYorkNewYork domain lost in a case.
LegalSupply is nothing to get mad about. Identifying the domain as a generic is extreme. The e site accepting the better domain selected a bad name (IMO). Talking about UDRP in blogs equip end-users to file cases.
When you think about it, you are better off writing about UDRP cases on law sites that deter future filers. People rarely take blogs serious. They are like a local diner or a fast food joint.
I would rather own LegalPad than LegalSupply. Even LegalJobs is far better. Another headline captures attention. Vanity was noted as a developed site and now LegalSupply is a generic domain.
Robert Cline has nothing better to do than push his dot co. I would say the domain extension is bad because I own three that I developed. They are extremely popular keywords.
To say that dot co is better than dot com is reaching. Dot co take too long to get ranked. Publishing article on good dot com create instant traffic. However, articles featured on dot co website take too long to get indexed.
Dot co domain content will get indexed with a good keyword. I wouldn’t bet the house on dot co or cloud sites. It is better to spread out your domain assets.
Don’t laugh: Robert Cline c0ntinues to knock it out of the park with .co- his sales are almost equal to Mike Berkens daily. Updated: http://www.fragerfactor.blogspot.com/2012/05/domain-shane-lists-give-you-sloppy.html
@Berkens: ” “The Transfer Of A Domain Is Equivalent To A New Registration”
I don’t get the title to the story. The transfer of a domain name to a third party has long been interpreted as being the equivelant of a new registration!
Huh?
Ok masked genius – are you saying there is no longer a need for a Real Estate title company which is the conduit between a seller and a buyer ?
Huh ?
Whebn you transfer the domain from godaddy to name.com to make some savings in the renewal costs knowing there is no change of ownership are you sure you can consider as a new registration ???
John
This is what mark monitor and fairwinds show to instigate these filings
http://www.computerworld.com/s/article/9134658/Image_gallery_Spotting_the_cybersquatters?taxonomyId=16&pageNumber=2
I chose one of yours that clean but most all ofthe 18 slides most aren’t and few are ever educated to the difference
@ pierre
Read it again. Transfer to a THIRD PARTY not a registrar transfer
@ Brian
Yeah ok sure
Hi guys,
This article has really got me thinking. Is it possible that I might lose my domain to another company since it only differs by one letter.
I will not reveal my domain but Iwill give a striking similarity to what I am talking about. As mentioned my domain differs only by one letter from the domain of a company that has been operational for over a decade now. I registered this domaina few months ago since it contains the “i” beginning e.g ibook , ifan , iknife, isolar……you get the picture.
Let’s call my domain isaul.com and the companies name is isault.com
Seeing as how the names are only slightly different, can I get a trademark for my name and is it possible for me to lose my domain ( which I plan to develop and invest lots of cash into by the way) to the other company simply because of the one letter difference. Please help. I need some guidance or at least advice from domainers.
It appears that this matter has gone to the courts.
http://dockets.justia.com/docket/louisiana/laedce/2:2012cv01446/150844/