In a decision which should serve as a cautionary tale for all domainers, a LLLL domain was awarded this week to the complainant because of the domain owners reputation and history.
For all of you domainers that don’t think your reputation or history follow you into a UDRP or WIPO action, this case demonstrates quite clearly that you are sadly mistaken.
The case involved the domain CPQD.com, not a well known trademark or anything that rolls off the tongue too easy.
Why would the sole panelist award an 4 letter .com to the complainant?
If you read the decision is becomes clear.
Its not that the complainant had a great case.
Its clear when you read the opinion, for the panelist it was a close case, but at the end of the day it was the reputation and history of the domain holder that doomed him.
“””The Panel notes that the Respondent appears to have a history of engaging in abusive registrations””
“”The Panel refers in this respect to following WIPO UDRP decisions: Deere & Company v. XC2 (Moniker Privacy Services), WIPO Case No. D2007-1805; Scandic Hotels AB v. xc2, WIPO Case No. D2007-0810; Wal-Mart Stores, Inc. v. xc2, WIPO Case No. D2006-0811; The Belo Company, Belo Investments II, Belo Corp. v. XC2 / Internet Coordinator, WIPO Case No. D2006-0790; Laramar Group, L.L.C. v. XC2, WIPO Case No. D2006-0617; ESPN, Inc. v. XC2, WIPO Case No. D2005-0444; Yahoo! Inc. and Overture Services, Inc. v. Registrant (187640), a/k/a Gary Lam, a/k/a Birgit Klosterman, a/k/a XC2, a/k/a Robert Chua, a/k/a Registrant, WIPO Case No. D2004-0896; and, Martha Stewart Living Omnimedia, Inc. v. XC2, WIPO Case No. D2003-0944. WIPO Case No. D2004-0896 involved a finding against Respondent in relation to no less than 78 domain names.””
“”The question remains whether the Domain Name was registered in bad faith”
“The Respondent has a long track record of engaging in abusive registrations.”
“”The Respondent’s past conduct is taken into consideration, the evidence as to the Respondent’s motives for registration becomes overwhelming. The Domain Name can then be seen simply as one of a long line of registrations by the Respondent seeking to take advantage of the reputation of the marks of others.”””
Did I tell you the domain holder did not even respond to this complaint?
He did not.
Lesson learned.
If you lose too many of these cases you are going to be tainted.
When a close or questionable case comes before a panel, you are going to lose.
How do you prevent this from happening to you.
That is actually the easy part.
When you get a C & D letter, or a WIPO or UDRP action, and if you do not think you have a good position, a winning position, and certainly if your not going to fight it by spending the money and defending your good name, then for gods sake give the domain up.
Simply.
Logical.
The right thing to do.
Its a good business decision.
If your not prepared to hire competent counsel, spend what is required to defend the claim, have a legal position to defend the claim, just give up the domain.
The alternative, is to have a series of cases ruled against you and get a reputation that you engage in abusive registrations.
If your a businessman you need to make business decisions.
Not answering a complaint is not a valid option.
Grow up.
Having these type of cases not only hurts you but all domainers.
It’s what in large part give the trademark holders the claim that they win 85% or more of the cases and stronger, quicker and cheaper methods are needed.
Your killing your own reputation and your damaging all domainers.
Fighting a case you have no chance of winning is not a good decision.
At the end of the day you only have your name, your reputation, and that can work for you or against you.
Don’t allow yourself to be tainted, and don’t taint all of us in the process.
the problem here is certainly not that the Domainer was too lazy or didn’t want to incur the cost of defending a UDRP action. If the Cybersquatter is making money from a TM domain, then it really costs nothing to give it up and go on to the next one under UDRP. Unfortunately, this happens all too often and it leads to the entire community equating Domainers with Cybersquatters.
However, where they really run into trouble is if a case is filed against them in U.S. Federal Court under the ACPA. Then, they HAVE to defend the lawsuit or face the very real possibility of not only losing the domain, but also paying the complainant $100,000 per domain AND possibly attorneys fees. Of course, the cost of defending such a lawsuit is extremely expensive and the Cybersquatter could end up paying both HIS attorney and the Complainant’s attorney. Also, he can’t hide behind a privacy screen as the court will INSIST on his name and address and will issue a court order to the registrar to provide it.
Using Trademarks or typos of trademarks for domain names can be quick easy money, but it could really cost plenty in the end.
Most of the time, the company sends you a C & D letter letting you know they are going to sue you if you don’t hand it over. THIS is the time to hand it over if you want to save legal fees or know you are infringing. Ignoring this will lead to the above. With a small valued LLLL like that you certainly would hand it over. Even if you are not in the wrong, sometimes it is easier to simply hand it over admitting no guilt. Why would you ever do that if you’ve done nothing wrong? It’s simple, money. I had someone sue me for a workman’s comp injury for a million dollars and he absolutely didn’t do it at work. We settled for 50K, why, my insurance company agreed it was much much cheaper to settle than to prove him wrong. ……….and thus my hate for ambulance chasing lawyers.
So you Domainers…do you have the BallS to fight?
HA! what a hoot! getting a bad reputation for the most double dealing sleazy business on the planet? Domainig? Are you serious, all I read about are crooks trying to steal tradmerk names, hijacking others, cyber sqauting, then parking and oh my does halvarez still ring a bell or was it always a dull thud because every one is in on it anyways?
I mean really, google up ‘trademrk domain suit’ and go down the list?
Hundreds of them.
get real.
Mike, the points you make are good ones. I’ve noticed, however, that some domainers don’t stand up for their rights *enough* when it comes to defending domains that are not obvious trademark infringements.
If you’re sitting on a domain that is blatently and unquestionably infringing a trademark, of course you should find a way to correct the problem and/or hand the domain over. But in situations where the claim being made is not as black-and-white, you shouldn’t just immediately roll over and play dead.
I’ve been on the receiving end of many “claims” this year and 99% of the time the “claims” are without merit. My approach is to always respond promptly, gather and communicate all the facts, and educate the person making the complaint. A lot of the time the other side has no clue what they are talking about. If I handed over every domain that someone had a “concern” about we’d run out of domains. ;+)
Domainers, in general. need to show these folks that they can’t just drop the “T” word in an email and expect you to immediately hand over the domain. You wouldn’t believe some of the ridiculous “claims” I’ve gotten over the years. Most situations are more nuanced, especially for the majority of domainers who have ethics.
Know your rights. Push back firmly but politely. And educate the other side. In doing so, you’ll earn more respect for you and the industry as a whole.
Bonus: you’ll stop losing domains to bogus claims.
I’m not an attorney, but I do know that past “digressions” cannot be used in a current case unless the defendant somehow brings it up in their defense. So making a decision based on a domainer’s “past UDRP” history is unfair, and un-American.
I’m surprised this wasn’t pointed out.
Stephen
I think your thinking of criminal cases, not civil ones.
When you go to court there those proceedings are governed by the state or federal rules of criminal procedures or civil procedures.
WIPO and UDRP have their own set of rules.
Previous cases can and will be cited and used in making a decision, which of course was the point of the post
Intent plays a role in the TM discussion. Therefore your reputation follows you.
Oh puh-lease
You’re just making up reasons to fit the facts – just like the panelist.
Thing is nowadays, the general trend (seemingly) is:
– it’s a crapshoot
– no such thing as precedent (one can find “precedents” which would rule for either side)
-the panelist just makes up the rules as they go along so that the complainant wins
I have little doubt if the respondent had an unblemished reputation – that the panelist would’ve ruled for the complainant on another “technicality” eg. domain was held for over 10 yrs but no ‘real’ business was ever run from the domain or some other chit
People, if you ever lose a UDRP (for whatever reason)…just change the goddang name of the registrant so it can never be used against you! 🙂
And go offshore
Hi Em-Bee,
Actually, the judge rules the court actions, jury considerations, evidence presented, etc, in both civil and criminal cases.
I wasn’t aware that ICANN didn’t incorporate a fair “domain by domain” review for each UDRP, as opposed to being influenced by past outcomes of previous UDRP’s where either party lost. There’s a reason for the logic behind judging each case on ITS OWN MERITS, without prior results helping to determine the outcome on a current case.
Oh well!