In a one panel WIPO decision ordering the transfer of the domain, ShoeZone.com to the holder of a UK trademark, the use of Moniker.com privacy service on its registration was found to be an indication of bad faith of the domain holder
Basically the owner of the trademark chased the domain for years, first unsuccessfully attempting to buying it from Footstar in 2003, who was using the site to sell footwear and then again in 2006 from Novus who acquired the domain from Footstar and again was operating a footwear site.
In May of this year the site turned into a parking page and the trademark holder filed this WIPO action.
In finding bad faith on the domain holders part, the panelist said:
“””Two additional factors reinforce the Panel’s conclusion that the Respondent has been guilty of bad faith registration and use.””
“”First, the Respondent has failed to file any Response. A bona fide respondent, operating a genuine business or carrying on some other legitimate activity through a website at a disputed domain name, could have been expected to file a Response explaining its position. The Respondent has not done so.”””
“””Secondly, the Respondent’s use of the privacy service is at least consistent with bad faith. A respondent’s use of a privacy service is likely to cause a complainant some delay while it endeavors to ascertain details of the true respondent to its prospective complaint, and the respondent continues to derive click-through revenue during that period of delay.”””
I have seen plenty of decisions where the domain holder files no answer and still wins. Yet here the panelist finds that by not filing an answer you are guilty of “Bad Faith”.
We know that trademark groups pushing for the new Uniform Rapid Suspension (URS) wants to accomplish exactly this; shift the burden of proof from the one filing the complaint to the domain holder, but that is not in place yet.
Second if just having privacy on your registration, is going to be found to be an indication of bad faith, then it may force domainers who use privacy to remove it or risk the increased chance of losing their domains in such an action.
I’m sure the panelist would not have found privacy to be an indication of bad faith if it was going to say a MarkMonitor privacy service rather than a Moniker.com privacy service.
Not Responding is the kiss of death. Period. He lost it right there.
One person panel is not much better.
Privacy takes away your #1 marketing tool for any domain.
This was WIPO roulette and the complainant won.
Bad decision but the right one considering the circumstances and the fact that the owner did not respect the process.
I think Privacy is a very big mistake to use. Here is just one of the downfalls. Perception is reality.
Rick
I’m going to disagree with you.
I have seen lots of decisions where someone did not file a response and they still won.
You are not required to file an answer.
The burden of proof is not on the domain holder but the one filing the complaint.
The problem is the process.
In a court of law, a judge has to follow cases where legal issues have already been decided.
So for example, Privacy is either as a matter of law an indication of bad faith or its not.
All such cases need to follow the same “law”, but in UDRP/WIPO the panelists rule however they want each time, basically making law each time.
The system is broken.
Mike,
We agree that the system is broken. It was broken the day it went into effect. But we are stuck with it. I have long been on record that some of these decisions will have legal ramifications years down the road as things become more clearly defined.
As a domainer that wanted to keep a domain I would not even think of not responding no matter what anything says. We are dealing with humans and human nature.
Rick
Personally, I would always respond and ask for a three member panel (something you won’t be able to do under the URS) and I don’t use privacy, but I will defend someone’s right to do so.
Mike,
Folks are entitled to use privacy. But folks should not be under the impression that it does no harm. It does great harm and you just showed the proof. Even for panelists that don’t say so outright, they are automatically prejudiced. I am not saying this is right. But it is reality regardless of anyone’s right. Anyone using privacy has an obstacle to overcome from the get go. It is natural for folks to ask “What are they trying to hide?” That is the knee jerk reaction. The perception of that answer is not controllable by the domain owner using privacy.
Even though I’m his partner, I have to agree with Rick. The problem here is that the privacy was used in conjunction with no response and in conjunction with changing the domain to a parked page while it was a previously operating web site. I don’t believe that a 3 person panel would have come to a different conclusion. Once the complainant has met his burden of showing that the domain was infringing on its trademark and that it “appeared to be registered and used in bad faith, the burden shifts to the respondent to prove otherwise. Failing to respond in this particular type of situation was fatal.
Howard
Don’t you think that there should be a universal policy that says that privacy is an indication of bad faith or not an indication?
The domain was used for a business and then taken down and parked. I see no bad faith in that.
Whois privacy ……I see no bad faith either.
It’s all contrived bullsh*t !
IMHO……..the panelists need to be trained under strict rules and follow those rules. The willy-nilly decision making is out of hand.
I’m very surprised at Rick and Howard whom I generally agree with 99% of the time that you guys would come to this conclusion.
I think these panelist just keep voting in favor of TM interests to keep the money rolling in for both themselves, WIPO, and the NAF.
All these people ought to be thrown in prison for their corruption. A RICO lawsuit needs to be against them.
when a quasi- n0n-governmental-organization has the right to take anything from anybody under the pretense of law… we are on the brink of anarchy.
C’mon Mike! You should know better than that. We’re dealing with WIPO and the UDRP here. There is no such thing as “universal policy”.
We are dealing with 2 fundamental issues here: lack of impartiality and the “human condition” – I do agree we should have SET rules that should be strictly followed, unfortunately due to those 2 issues I mentioned, you can never take a chance with a “no response”.
The bad part is you can be branded a “Cybersquatter” on a perfectly generic,non-trademarked name due to not responding. The UDRP process is badly broken and we will all continue to muddle through this process til something better is in place.
Johnny,
I agree with you. The system sucks. It is terrible. There is no rhyme or reason. There is no precedent. They do whatever they want. But that is the exact point. If you know this going in, why do everything to maximize the chances of losing? That is the point I am trying to make. It’s a crappy decision. But am I supposed to be surprised? Give 100 cases with the exact same circumstance, right or wrong and 90 or more will lose their domain.
1 panelist is a very big mistake
Privacy gives the appearance that the owner is trying to hide regardless of the reality
Not responding is thumbing your nose at the process no matter how badly it stinks
Any domainer with these 3 elements in their dispute will lose their domain names in most cases. Is that a surprise after so many years? I am not defending it. I am on record stating it will get worse. But laying down like this does all domainers a disservice.
“The UDRP process is badly broken and we will all continue to muddle through this process til something better is in place.”
The real problem is that the “something better” is really going to be SOMETHING WORDE – the URS where the burden is on the domainer to prove that he isn’t a cybersquatter.
Howard is exactly right
For those who haven’t read about the current proposal and what is coming to basically replace UDRP/WIPO actions you need to do so immediately
http://www.thedomains.com/2009/06/01/hate-udrps-say-hello-to-something-much-worse-the-uniform-rapid-suspension-system-urs/
also read this one as it shows as bad as we think the new URS will be trademark groups want something even stronger:
http://www.thedomains.com/2009/07/08/trademark-holders-dont-think-the-urs-proposal-is-tough-enough/
While there is much bantering about the Policy and if it is broken or not the fundamental problem in this instance (and WhoIs as a whole) is the use of Privacy.
Choose your privacy carefully. Complainants and NAF/WIPO serve all letters and notices to the administrative email address in the WhoIs.
Many services don’t pass the inbound email (SPAM is a common reason), but most WhoIs services don’t leave an alternative method of contact; they don’t accept postal mail or phone calls. When you leave no alternative TM holders will file a Complaint, and in the absence of a Response, Panelists only have one side of the story. In essence you’re not even giving yourself a chance. No, you don’t HAVE to respond to any UDRP, but are you going to trust a Panelist to construct your side of the argument for you? With some of the Decisions I’ve seen come out of both NAF and WIPO, I wouldn’t.
Don’t use Privacy WhoIs if you really have a right to the name or if you don’t have a legitimate reason to use it (1st amendment).
In the end 90% of Privacy WhoIs use is for gaming the system and that function should change. By using it you arouse suspicion as mentioned above, and now it appears you incriminate yourself as well.
IMO all these cases should be decided in a court of law, not by any organization and their panelists.
There should be a clear and logical law about domains, and that law should always be applied in court, and it should be specific so that everyone knows what they can do, and what they can’t do.
Each panelist decides the way he/she wants to, and that’s it.
A lot of things that are considered bad faith make no sense it all, if i own a domain shouldn’t i be able to do whatever i want with it? Isn’t that how democracy and free enterprise works? Isn’t it how it works with any other business and/or property?
So privacy is bad faith, i say it’s bad for business, but never bad faith because it’s a right i have.
Parking is bad faith, why? I paid for a domain, do i have to develop? Can’t i park? If i buy a land do i have to build or i can keep the land empty if i want to? If i buy a house do i have to move in? or rent? or i can leave it empty?
This is all obvious to me, i believe “someone” doesn’t like domaining, and this “anarchy” called URDP is simply taking domains away from its owners and giving them to companies and groups of interest.
Above i meant UDRP not URDP
Most people will assume that shielding the whois is an indication of something to hide. We know that’s not always the case, but it’s unfortunately an easy leap to make. I agree with Schwartz that it is too risky to not respond to a UDRP as that leaves the outcome to the judgement of another individual (who may be operating with an agenda/bias). I would much prefer to challenge & refute with compelling evidence in lieu of Murphy’s Law.
@Rick, FYI -> I think your signature link is missing a letter on targetedtraffic.com.
Crazy times. The Canadian Registry System http://www.cira.ca by default sets domain registrations to “privacy” to avoid registrants receiving spam and releasing too much personal information. You have to agree to make your information public or it defaults to private. Is the entire Canadian registry system “using bad faith”? These idiot arbitrators and their mickey mouse system need to crawl back into the holes they came out of. The new proposed system looks even worse. Would you leave your banking or personal information out in the open for people to view and/or abuse? Time for domain names and domain disputes to move into a real court system and away from these bandits.
The Canadian government just “b**tch slapped Facebook which changed its privacy policy for the entire planet. “Back into your holes you domain thieving parasites!” Be gone.
Cheers.
Rick: REALLY??
You actually agree having your information kept anonymous is bad faith? Do you put your REAL telephone number right in the whois? Are you crazy… If we lived in a utopia where people didn’t solicit everything to your inbox/mailbox phone etc. then it would be fine to say “hey keeping secrets is not cool.” But the internet is not the most secure place to disclose your information, you know granted it has access all around the world… WTF are you thinking.
I expect a retraction of your arguement at Traffic, or right now.
@jr,
I don’t think Rick said using privacy is “bad faith” I think he said it is a “bad idea” which based on this recent decision, is.
peace.
jr
Re-read my posts. That is NOT what I said. Not even close.
This domain was bought on tdnam for $1xxx a year or so ago. I considered it, but decided against because of this trademark holder. It had good traffic. (wonder why) Personally, I think if they had responded that the decision would have gone the other way.
This is all brand new news to me & totally depressing! And here I thought about becoming a buyer/seller of domains because it was an honorable business venture (but the globalists want to make crooks out of such a business?) Since when did it become so taboo? Guess I’m a day late/dollar short!
And I so totally agree with the person who said, If I own land do I have to build on it? etc. Great analogy. Some of us don’t have a clue how to build websites or run a business but we love words, always have!. I was having a blast earlier today using my creative juices to come up with domain names (that I was going to park and sell thinking it was a great idea) until I found these articles. I guess we will have to stifle our creative
ideas and just use words like cat dog bird table chair sofa? :-/ Boy, zero fun in that!
Since nobody on the planet can think of Everything, including big Corp execs, their mouthpieces, and their webmasters, they should look at us as subcontractors and be thankful someone thought of a domain combo of words that they never thought of, and merely seek to “hire”/purchase the idea/product vs getting bent out of shape about it.
It’s like being a “salesman of words and ideas.”. It shouldn’t be looked at as such a crime. If Mr Corp Exec is lousy with words/ideas/names, he should be glad someone else is.
This whole affair with domain wars just seems all backwards & needs to be turned around. They should thank domain name creators instead of making us walk on eggshells & stifle our creative leanings. (I know… In a perfect world).
And ditto re privacy!! It’s insane to think it automatically equates to evil. As a single female I have not had my phone # in the phone book since the mid 1980s. And when I learned I could pay the phone company a few extra bucks to keep my street address out of the book as well, I’ve done that since the early 1990s. So how is WhoIs privacy any different? Those orgs
have flipped everything upside down!
(“Woe to those who say what is good is bad, and what is bad is good,” saith the Lord.)
I must subscribe to this site & get up to speed!
Welcome to the New World Order where there is
no such thing as private property, evidently including domains &/or a domain business. :-/
Domains are for everyone, not just “domainers”. Decisions like this one change perception for everyone, not just domainers. Domainers, however, discuss these issues.. to the benefit of everyone.
So any assumption that private whois is a sign of bad faith MUST be objected to by everyone (including domainers).
Sure, a smart domainer (investor in names) should recognize reality and act like a businessperson.. don’t add risk by using privacy. However, the greater good is not served with statements that smart domainers shouldn’t use privacy or that (worse) this is a reasonable and expected decision. Such talk accepts the status quo and allows it to erode our rights further next time.
I know TONS of good reasons for using whois privacy… mostly related to web publishing, including the domain investing aspect of web publishing. More important though, is that I believe I have a right to use whois privacy. Why should an arbitration board be free to take away that right?
The focus in this case needs to be on the trademark infringement, and related status of the use of the name… including complainant’s claims.
I think Mike is doing a GREAT service for everyone by highlighting how bad decisions effect everyone, not just those in this specific case. The decision may have been in the spirit of protecting trademarks, and in the spirit of suggesting legitimate rights holders are expected to respond, but if it actually sets a precendent that private whois = sign of bad faith, we all have a problem.
Queue a debate about whether or not we should have rights to use private whois, but do so in a different context, and when that gets settled, accept it as valid and don’t let this stuff infringe.