In domain holder that paid over $5,000 for a LLLL.com today just lost it in a UDRP
The case involved the domain name kena.com
There have been some nice sales of LLLL.com just at Afternic recently recently making this a pretty valuable domain the right hands.
Here is what the one member panel had to say:
“Complainant has registered several KENA-formative trademarks on the register of the Mexican Institute of Industrial Property
These are a word and design mark KENA LATINA (and design), registration number 928951, in International Class (hereinafter “IC”) 16, dated April 17, 2006; KENA LA NAVIDAD (and design), registration number 750227, dated May 31, 2002, in IC 16; KENA LABORES (and design), registration number 740115, dated March 26, 2002, in IC 16, and; KENA COCINA (and design), registration number 741345, dated March 27, 2002, in IC 16..
“Complainant has registered the word trademark KENA on the Principal Register of the United States Patent and Trademark Office (USPTO), dated June 29, 2010,
The application for this trademark was filed as an “intent to use” (ITU) application on April 29, 2008, and Complainant notified first use and first use in commerce as of May 5, 2010.1″
“Complainant publishes a magazine in the Spanish language under the name KENA, as well as magazines under the names KENA NOVIAS, KENA COCINA NAVIDEÑA, SALUD Y BALLEZA KENA and related titles.”
“These magazines are principally distributed in Mexico, but also in other Spanish-speaking Latin American countries”
“The domain was transferred to the present registrar in the name of Respondent on June 2, 2008. Respondent has provided evidence that it purchased the disputed domain name on May 30, 2008 by payment to Sedo GmbH in the amount of US$5,150.”
“Respondent has used the disputed domain name in connection with a pay-per-click link farm parking page maintained by Sedo, including an indication on the parking page that the disputed domain name may be for sale by its owner.”
Respondent indicates that it has designated “shopping” and “travel” as the preset keywords for advertising connections under the Sedo parking system.”
“Complainant has provided evidence of registration of the word trademark KENA on the Principal Register of the USPTO in the United States”
“Complainant has provided evidence of registration of several KENA-formative word and design marks on the register of IMPI in Mexico”
“Complainant has provided persuasive evidence that the term KENA is well-known in Mexico in association with its magazine products, including by providing evidence of the substantial print runs of KENA-identified magazines and the high level of Internet search engine results returned with respect to Complainant’s products by Google, Bing and Yahoo. In addition, Complainant has provided evidence that third-party advertisers actively promote their products in Complainant’s KENA-identified publications.”
“Respondent has argued that it registered the disputed domain name with the good faith intention to establish a website devoted to providing information about success stories with respect to domain names and websites. However, Respondent has provided no tangible evidence of a business plan with respect to such an enterprise, and Respondent registered the disputed domain name more than 2 1/2 years ago. Respondent has not provided evidence of demonstrable preparations for a bona fide offering of goods or services prior to notice of the dispute.”
“It is well-established that operating a link farm parking page using a distinctive trademark in a domain name, and providing connection to goods and/or services competitive with the trademark owner, does not establish rights or legitimate interests.”
“Respondent has sought to justify its use of Complainant’s trademark in the disputed domain name in connection with a link farm parking page on grounds that it is making fair use of a generic or commonly descriptive term. To establish that fact, Respondent has referred to a village in Lithuania, Latin American flutes, Indian religious philosophy, a term in Estonian, misspellings of cities and countries, and abbreviated names of organizations. Respondent has also referred to use of “Kena” as a personal name.”
“Respondent has failed to persuade the Panel that it is making use of the trademark KENA in a generic or commonly descriptive sense such as might establish a legitimate use of that term in connection with a pay–per-click link farm parking page.
“Respondent has provided evidence that “Kena” may be used as a first name or a surname. However, Respondent’s evidence demonstrates that this is an uncommon name in the United States and other places for which it has provided evidence. If there are 1,289 individuals in the United States using “Kena” as a first name, and 58 using it as a surname, that represents a very small proportion of the 300+ million individuals living in the United States. Respondent has not provided evidence sufficient to establish that “Kena” is so widely used as a personal name as to be open for fair common usage with a link farm parking page.”
“Respondent has argued that it could not have registered the disputed domain name in bad faith because (a) it was unaware of Complainant’s trademark in Mexico at the time it registered the disputed domain name, and (b) registration of Complainant’s trademark in the United States postdated registration of the disputed domain name, although it was subsequent to the filing of the application for registration.”
“Complainant had rights in its KENA trademark in Mexico at the time of registration of the disputed domain name, including by registration of that trademark at IMPI.”
“More important, however, is that Respondent undertook to pay US$5,150 for the disputed domain name with no plausible explanation of the reason for such substantial expenditure unless Respondent knew or had reason to believe there was a value to that domain name beyond the combination of letters.”
“Respondent purchased the disputed domain name on or about May 30, 2008.”
“Complainant filed its application as an ITU, and notified the USPTO of first use in commerce as of May 5, 2010, with registration issuing on June 29, 2010.”
“Respondent paid a significant dollar amount for the disputed domain name that cannot be accounted for by “genericness” or a common descriptive character.”
Really
It is appearently inconvicable to the panelist that someone would pay $5K for an LLLL.com domain.
Maybe the panelist should start reading the domain blogs where we report sales of this nature almost weekly
Macc.com sold for $63K last week, wehr.com sold the week before for $75k.
Each week a several of LLLL.com domains sell above $5K but now we have a panelist who is theoretically suppose to know something about domains deciding a case based on his pereception that no one would pay $5K for a LLLL.com unless they intended to infringe on a trademark
Even if the trademark is based in a non-US country and one inside the US has ever heard of.
Well the domain purchase “Cannot Be accounted for by “genericness” unless you know something about the domain name market.
It would be nice if panelist knew something about it
This almost looked like he didn’t have an attorney in challenging this. Horrible decision really. I’ll mention that if we all used Whypark.com and took a moment to create some information on the homepage and extra pages they gave you, you’d have a decent arguement. I’d suggest contacting one of the great attorneys we know from Domaining.com and trying to get the name back.
U D R P … A / K / Internet SCAM …
It is clear that this panelist was NOT knowledgeable
in even BASIC domain industry practices,
the fact that he is not even REQUIRED to be
a industry expert on domain name disputes further
erodes the credibility of UDRP as domain name arbitrators.
There continued everyday inept embarrising decisions …
adds further fuel to the argument that they should lose there
ICANN mandate as Domain arbitrators for continued gross negligence.
Every time I start to feel better about the UDRP process, this kind of stuff happens to tear it all down again. We really need to have standards that panelists HAVE to follow. Is parking a legitimate business use or not? THis one says no, others say yes. How are we to defind ourselves? Sedo, Fab et all need to work together to get this established.
until we can all agree that icaan is a terrorist organization… these abominations will continue. an overstatement perhaps… but only a mild one.
Sick decision.
This intimation of price control is frustrating.
” Is parking a legitimate business use or not? THis one says no, others say yes”
These decisions are not as inconsistent as you suggest. Read the sentence from the decision again, and notice the qualifiers. If the domain name is a generic or descriptive term, and the PPC results relate to that primary meaning, then typically UDRP panels get that. What he says is that if it is a distinctive term displaying ads for the trademarked stuff, then that’s not going to be helpful.
Domainers tend to abuse the term “generic” mercilessly. “Kena” is not “generic” for anything, as that term is used in trademark law. A generic term is a word that one practically cannot avoid in referring to a class of things. “Apple” is generic for apples. It is not generic for computers.
I understand that people will refer to a string of letters that doesn’t mean anything or might mean lots of things as a “generic” domain name, but that is not the way the word is used in trademark law, and its use in this context is more likely to get a “WTF” response from a UDRP panelist.
It sounds as if the Respondent here took the “throw up a bunch of inconsistent arguments that go nowhere” approach. If you can’t present plausible evidence that you were going to develop a website, then the “preparations to use” defense is not going to go anywhere. Here, he says he was going to develop a website about domaining, but then says it has value as a personal name. What do those two things have to do with each other?
Yes, the name has value merely because it is a four letter domain name. In a WIPO response, you get five thousand words to explain that. That objective is not helped by making other inconsistent arguments, which convey the impression of casting about looking for a viable defense.
It would be nice if a panelist had some knowledge of the domain name market. Things like this are ridiculous and are akin to thievery. This process is broken and the sad part is everyone knows it except the people in charge of the process.
Just Google “Kena”. There are an endless amount of other people using the brandable term.
CVCV are a popular domainer format, it is not just some random string of letters with no other potential use.
In my opinion the decision is ridiculous as the buyer clearly did not buy this domain for the reason of squatting on that one specific niche TM.
UDRP was not designed for disputes like this IMO. It is more like a kangaroo court at this point. The decisions are all over the place. Many decisions seem to ignore previous precedent.
Brad
Who is paying the panels bills – the kangaroo knows – you get as much justice as you can afford. This is not about right and wrong – this is about putting food on the table – the kangaroo knows it we kwow it.
Hi MHB,
I think what the panelist is trying to say that it seems odd for someone to pay $5,000+ for a name like KENA.com and not have a purpose for the site name.
The MACC.COM and WEHR.COM examples your provided aren’t really comparable since those parties are end users that can offer a justification for paying such a high amount.
I think if he had paid under $500 for KENA.com, then that would be more consistent with the LLLL.com domain reselling/flipping market for that type of name quality, and a purpose for the registration shouldn’t really be necessary.
But paying $5,000+ for KENA.com without an explanation for the name choice combined with the evidence that he immediately re-listed it for sale on Sedo with competitive PPC ads (as alleged in the complaint) would suggest that the respondent was not being honest and would lead one to conclude that he was targeting them.
From a domainer perspective, “Kena.com” is a CVCV domain, a brandable, a web2 name… Sometimes, though, those letters in those domains actually have meaning and if that “meaning” represents a non-generic, whimsical trademark, you’re running a significant risk.
It’s entirely possible that the domainer here didn’t perform any due diligence- to see if the name represented a TM of some kind. He may have been acting in good faith but happened to offend against a TM. OK, so be it, but that doesn’t change the fact that he offended against a TM.
If there’s a lesson to be learned here, it’s to check and be sure that your web2 type names don’t represent a whimsical trademark. If they do, you might lose it, irrespective of whatever value “domainers” put on it as a digital collectible.
Squatter squashed like a bug. As it should be. A website on domains. A typo of a geographic place. A personal name. If indeed there is an idiot involved here it isnt the panelist. Generic, lol, get a grip. A very just decision given the circumstances.
John
The problem I have with the decision is the panelist goes down the road of a domain’s value and what someone with no infringement intent would pay for it and concluded that no one would pay $5K for a LLLL.com unless they had intention to infringe.
Now if a panelist wants to make such and argument and make valuation a factor in his decision In Principal that fine we have seen it in other decisions but then the panelist needs to know the domain market which none of them seem to do.
I see domains weekly sell in this range and upwards of $75K in just the last few weeks from one service so clearly the panelist has little knowledge of the domain market and therefore should not opine as to a buyer intent based off a price he paid for a domain
“A typo of a geographic place.”
“Kena is a village in Lithuania, Vilnius district municipality, Vilnius County, on border with Belarus.”
I dont think that is a typo of a geographic place.
And if you look further… you will see that it is some peoples proper name.
For example:
Kena Kai is the exclusive stylish designer of DataSafe leather wallets for men and women.
Seems to me that this person got boned and/or did not put up a defense at all.
I think there must be a discussion on whether parking a domain name is a legitimate business use or not.
It makes sense to most people on this site that parking is a use for a domain name that you purchased but to the average layperson… it may need to be explained in terms that everyone can understand. Such as buying a valuable car and having it parked in your garage and waiting over time for the value to increase and/or someone to come along to make you an offer for it.
This type of practice is not uncommon but not everyone can liken the use of a domain name to every day occurrences.
Would help if the panelists actually know a little about the subject on which they are making a ruling about. Especially if the plaintiff filed for trademark (in the US) in 2010 and the domain was purchased in 2008 (if I understood that correctly). To me seems that the plaintiff really had no claim to that name even if he has a trademark. The US trademark was after the fact. The domain obviously did not infringe on his use of the term in the trademark.
Just the way I see it, but what do I know!
Cheers
“The problem I have with the decision is the panelist goes down the road of a domain’s value and what someone with no infringement intent would pay for it and concluded that no one would pay $5K for a LLLL.com unless they had intention to infringe.”
I agree. Which, again, one gets 5000 words to explain in a UDRP response.
Take a look at this decision for fmcu.com:
http://www.adrforum.com/domains/decisions/860527.htm
“Attached hereto as Exhibit E is a copy of an article from the Domain Name Journal, a number of 4-letter, dot-com domain sales, including for $15,250, for $11,111 and for $10,500. The Respondent has registered quite a few four-letter domain names, including:”
You see how easy that is? The point is that UDRP panelists don’t know this stuff unless you explain it to them.
If you bought a four letter for its intrinsic value, then you say so. You don’t jump all over the map with “It’s geographic…. no, wait, it’s a name… I mean, I got it to develop a site” and so on. You might say that, yes, it might be valuable to someone for a variety of things not related to the TM, such as (list). But you destroy your own credibility if the response gives the impression that you are just throwing up contradictory excuses.
“Kena is a village in Lithuania, Vilnius district municipality, Vilnius County, on border with Belarus.”
And if the page was targeted on, say, travel to Lithuania or the Baltics generally, then the result would have been very different.
UDRP panelists are not, as a class, as dumb as you might think. But you will get nailed if you say “it’s a generic, descriptive, geographical, whatever, word” and the targeting has nothing to do with what you are saying.
BTW, Mike, reservations for the annual WIPO conference are open, if you want to get a feel for what this stuff looks like at that end.
Slate: the test is not wether or not the domain name corresponds to a surname but wether or not it is the surname of the registrant which in this case it was not. BTW the respondent did put up a defense if you could call it that. It was a bad defense but a defense just the same. And with respect to your tm comments the complainant did file an intent to use prior to the respondent getting the name so that was a problem and finally even if the name corresponds to a geographic place in whereever the name was not used in any way related to the location so like someone said earlier apple is generic but you cant use it in relation to computers so the idea that just because the name corresponds to a place doesnt give one free reign on how it can be used
“If there’s a lesson to be learned here, it’s to check and be sure that your web2 type names don’t represent a whimsical trademark. If they do, you might lose it, irrespective of whatever value “domainers” put on it as a digital collectible.”
That is particularly true for four letter domain names that begin with “W” or “K”. In the US, most commercial broadcast TV and radio stations east of the US use call signs starting with W, and in the west they use K. Sometimes the stations use the call signs as a trademark, and sometimes they don’t. On reading the headline, I thought it was going to be a broadcaster.
If you find a problem, then you want to find targeting that doesn’t implicate the mark.
What’s not clear from this decision is what were the links on the page.
One of the other problems, though, is geo-targeting. Your links might be fine as viewed from your location, and an infringement nightmare somewhere else. The good news, and UDRP panelists haven’t figured this out yet, is that if your pages are being archived by Archive.org (depending on whether your monetization agreement allows it) or Domaintools, then what is being collected is the “US view” of the page.
@JB what screenshots domaintools or archive.org collect may prove to be irrelevant if the complainant produces screenshots of their own from whatever jurisdiction they are in which provide documentary evidence of the alledged infringement
This is a combination of bonehead registrant bad defense AND overbearing UDRP panelist. Now, while I dont want to sound nefarious, if you are going to spend 5000 on a name, you had better protect it, strategically. I also learned this the hard way, and lost a four letter dot com name that I paid 5k for and was making 40k a year in ppc. In fact, it started with a K. In fact, it was an English dictionary word. In fact, I was using it in relationship to one if its published definitions. And I still lost it, and it was Mr Berryhill whom I paid to defend my use. Apparently I screwed up when I kept using the name for many months after receiving a C&D from a TM holder who has basically been given ownership of an English word buy the USPTO, at least in the eyes of 3 member UDRP panel. Even thought the trademark was “THE KNOT”, I lost the name KNOT.com for having let my ppc provider automate marriage links. In all honesty, I had no clue why the name was doing so well, until I received the C&D. It was at that point I became aware of the TM and THE KNOT inc. and should have acted differently. But when I saw that one of the definitions of a “knot” in the dictionary was : a bond, especially the bond of marriage, I thought hey, Im not doing anything wrong. So i resisted, kept my site up, fought the good fight and lost the name. I still think it is BS to this day that I cant use the word KNOT in relation to marriage as in “tie the knot” etc…. Its the power of money that counts more than anything. In hindsight, I should have immediately put up the most explicit bondage website on the planet when I received the C&D. Im sure they would have left me alone then.
Ooops! What does the esteemed Mr. Berryhill have to say about this? Is knot not generic? Given your statement that “A generic term is a word that one practically cannot avoid in referring to a class of things.” how did you lose this case JB?
oooops
Mr Berryhill did not represent either party in this case not sure what you are talking about, he is just expressing his opinion on the case and the result like the rest of us
“how did you lose this case JB?”
How does one lose any case? Nobody wins them all. It was a bad decision for the reasons noted above.
Or did you think that every decision comes out the way it ought to?
I realize there are attorneys who advertise as if they win every time. Those attorneys are, of course, not conveying an honest impression. I love law firm websites that go on about how many cases they’ve won, etc. On the internet, no lawyer ever loses. Like doctors, attorneys have to deal with the situation that presents itself, and yet doctors don’t manage to save every patient either.
Paying attention to correspondence, among other things, helps a lot.
I’ve lost plenty of cases. The difference is that I’ll tell you that, and other lawyers won’t. I’ve also handled hundreds of UDRP cases in the last decade.
That doesn’t mean there aren’t reasonable things one can do to lower one’s risk profile.
The decision is here:
http://www.wipo.int/amc/en/domains/decisions/html/2006/d2006-0340.html
Every situation has facts which are favorable and facts which are unfavorable. Advocacy consists of persuading the fact finder that the favorable facts outweigh the unfavorable ones. There were, as noted in the decision, some things that are relatively easily avoided, and which are unhelpful in a domain name dispute:
“Respondent is identified only by a fictitious and apparently unregistered name, “In Knot We Trust LTD,” and has registered the Domain Name in care of a mysterious proxy registration service with a post office box in a nonexistent town and an obviously invalid telephone number.”
That’s pretty easy not to do.
And yes, “knot” is a generic word for things done with rope and string; and “tie the knot”, as a whole is a common expression used for getting married. However, as I have consistently said, these things are fact-intensive, and there were a number of bad facts that could have been avoided, and which the panel chose to consider to be important.
And I wholeheartedly agree with:
“if you are going to spend 5000 on a name, you had better protect it, strategically”
So, I can point out things people can and should consider doing to protect themselves or not, I suppose. The monthly “oh, this thing is awful” thread is worthwhile, as there are so many anti-domain registrant features of the UDRP that it would take me hours to go through the litany. However, whining about it also doesn’t provide any practical insight on how to protect yourself, because it’s not going away.
One of the ideas that gets kicked around in these discussions at some point is the notion of a defense fund for fighting bad UDRP decisions. I’d be happy to pass the hat for that kind of thing, but the idea has flopped every time it has been attempted, because domainers will not organize for their own interests.
Mrr Oooops. This is not, and I am not in any way trying to lay the burden on Mr Berryhill. If you read the knot udrp case, he defended my use with what he could. The bottom line was that I was earning revenue using a four letter word, that is part of a US Trademark, to earn money by linking to ads to goods and services that were protected by the word “combination” “the knot”. They, i.e. the panel, assumed, and said as much, kthat I had to know about theknot.com before I registered the name. Absolutely not true but they said it right in their decision and part of the decision was based on that assumption. They also assumed that my traffic was intended for theknot.com. Kind of hard for me to refute that considering the automated links, generated by visitors, were wedding related. The term Knot , as in tie the not, has been wedding related for centuries. Its not Mr Berryhills fault that this panel thinks the Tm “the knot” gives all rights to the word knot, as far as marriage is concerned, to the TM holder. The dictionary does not count. It doesnt matter. I do not blame Mr Berryhill for the decision or the loss of the name. I blame myself for believing I had a right to use the name to continue to provide marriage related links based on a dictionary definition. I should have consulted an attorney when I received the C&D I suppose. I learned the hard way, so now, I check the TM db often. As far as Kena goes. Does Ken Anderson have a right to that Name? Does Jim Abbott have a right to Jima.com? Were any of the links on Kena.com in spanish?? Is Cheap Ticket generic? or Cheap anything for that matter? I say no, not if the entity who wants it has big bucks for attorneys. Its all about the big money.
But if you want to have fun with me… I’ve got five active UDRP defenses pending right now. Any one of them might be a loss. That’s how it goes.
“@JB what screenshots domaintools or archive.org collect may prove to be irrelevant if the complainant produces screenshots of their own from whatever jurisdiction they are in which provide documentary evidence of the alledged infringement”
Could be. The reason why panelists go to the Archive or DomainTools in the first place is because frankly a lot of the complaints are so incompetently done, the Complainant often does not even bother to show a screenshot of the web page prior to the dispute. I have some cases now where I address that panelist habit with the additional suggestion that it is the Complainant’s job to make its case, not the panel’s job.
The other problem, though, is that I frequently get cases where the Complainant has entered a search term into what was otherwise a differently-targeted domain name, and that’s the screenshot they present as their “evidence”. There are several UDRP decisions address that particular sort of scumbaggery.
Mike i think oops was reffering to the knot.com case which berryhill (who is now apparently channeling rick schwartz) did defend. In that instance and based on berryhills earlier comments one could argue that knot.com was generic and being used to advertise a class of goods the name reffered that being marraige.
As far as defense funds go the problem isnt organizing a group the problem is finding some one organized enough to manage the fund. I recall a number of efforts undertaken in this vein and apparently rick and howard cant even agree on wether or not there was a vote taken on how the funds were allocated.
Noble. I believe cheap ticket is generic. Difficult to find another way to describe a cheap ticket without referring to it as a cheap ticket. In fact it would be my opinion that cheap ticket is not trademarkable
“In that instance and based on berryhills earlier comments one could argue that knot.com was generic and being used to advertise a class of goods the name reffered that being marraige.”
…and that is what is argued.
Incidentally, aside from lawyers who advertise as if they never lose, there are also lawyers who participate in online discussions without identifying themselves. I don’t do that sort of thing either.
Being a lawyer perhaps you better than anyone best understand why one might not want to self identify as one and besides anonymity and domains go hand in hand no?
@ John Berryhill
UDRP panelists are not, as a class, as dumb as you might think.
===========
That’s right Mr Berryhill,
One just has to look at there record of non informed
“nin com pope” decisions to agree with you on that, after all
if it walks like a duck, talks like a duck it must be
a UDRP panelist in training ( ops, they don’t have any training, sorry)
“Being a lawyer perhaps you better than anyone best understand why one might not want to self identify as one”
It doesn’t comport with my sense of ethics. One way to avoid criticism is, of course, not to participate in online forums. A particularly craven way to participate is to anonymously criticize a colleague.
I think you should sell prepaid, one-time use UDRP defenses as a legal services product. Criteria would obviously apply, but it would be interesting to see if those might sell and if so, who would be buying them.
Not sure whether u are intimating that you either think or know that i am a lawyer but neither notion is the least bit flattering, nor true
“One of the other problems, though, is geo-targeting. Your links might be fine as viewed from your location, and an infringement nightmare somewhere else. ”
That’s the bit I find so risky, we have very little if any control over that apart from not to park for ppc.
I was just looking at a .co domain that sold for over 50k and looking at the links on the parking page at godaddy one screenshot and he’ll be struggling to keep it…it might be a very expensive mistake indeed.
I find Trade Marks an interesting but complicated topic to get my head around but I keep trying, its great to hear cases like this discussed from the perspective of a qualified and successful lawyer….and its free 🙂
Thanks
oooops
If you read this blog often you will find me writing about WIPO cases decided by what is in my opinion fault logic or just bad application of law.
I think you would find few domainers who regard the system as anything more than a crap shoot on whether you get to keep your name or not.
Add that to the fact that 85% of these cases go against the domain holder, yet you want to call out the one guy Mr. Berryhill who has probably one more of these for the domain holder, than anyone on earth.
Yes UDRP panel’s reach horrible decisions frequently and no one is exempt from it including Mr. Berryhill.
and while we frequently disagree on this blog, IMHO there is no better attorney in this business, so to call him out for A loss in A case is quite unfair