Vertical Axis, Inc. represented by ESQwire.com, just won a Reverse Domain Hijacking UDRP against Planate Management Group LLC of Alexandria, Virginia, who bought a UDRP on the domain name Planate.com
Also in a separate ruling issued today, Vertical Axis, Inc beat back a UDRP on the domain name Trucco.com despite a trademark citing in part the doctrine of Latches where the complainant waited more than 10 years to bring the UDRP.
So we have a rare day where the same domain holder won two UDRP’s in two separate actions.
Here are the relevant facts and findings of the panel on Planate.com (the decision on Trucco.com follows)
“”””The Complainant, Planate Management Group LLC (“Complainant”), is the owner of a United States (“U.S.”) trademark registration for the word mark PLANATE for business management consulting.
The trademark registration dates from November 21, 2008 and states a first use of January 4, 2008 and a first use in commerce of January 12, 2008.
Vertical Axis, Inc (“Respondent”) registered the disputed domain name on February 27, 2005.
“”The Panel finds that the Complainant has not made out the second element of the Policy. The Respondent has filed declaration evidence that the disputed domain name was registered because it was a misspelling of “planet” and also an English word in its own right.”
“”Registration of domain name based on a misspelling of a dictionary word can, in some circumstances, reflect a legitimate interest. “”
“Here, the links on the Respondent’s PPC website largely relate to planets, the word that was allegedly misspelled.”
“The Respondent has also provided evidence that it does register misspellings of common English words as domain names and has provided 47 examples of such registrations.”
“The Panel is satisfied that the Respondent did not have the Complainant’s trademark in mind at the time of registration of the disputed domain name because, as at the date of registration, the Complainant had not used or registered its trademark and did not do so until at least January 4, 2008. The Respondent registered the disputed domain name on February 27, 2005 some three years before the Complainant’s first use in commerce of its trademark PLANATE and 3 years and 9 months before the Complainant filed its trademark applications.”
“In the present case, even though it is a professional domainer, the Respondent has shown that it registered the disputed domain name at a time and in circumstances where the Complainant had no rights in the mark PLANATE. Further, the Respondent has produced declaration evidence that the disputed domain name was registered because it was a misspelling of “planet” and an English dictionary word in its own right”
“Even at the first renewal date on April 23, 2008, the Complainant had not yet filed a trademark application with USPTO so there was no public notice that could have come to the attention of the Respondent. Nor has the Complainant filed any evidence to show actual use of its trademark before that date or the extent of such public use;”
“The Complainant has not filed any evidence to show that the Respondent changed the nature of the disputed domain name after the successive renewals nor that it specifically targeted the Complainant.””
“””The Panel also finds on the facts that the Complainant has not demonstrated that the Respondent has used the disputed domain name in bad faith. Although PPC pages are of no societal value, see e.g. Ustream.TV, Inc. v. Vertical Axis, Inc., WIPO Case No. D2008-0598, given that the PPC links here related to the dictionary meaning of the misspelled word and not to the services offered by Complainant under its trademark, and that Respondent therefore has a legitimate interest in operating such a page “”
Accordingly, the Complainant has not met its burden of establishing the probability that the Respondent registered and has used the disputed domain name in bad faith.”
The panel then went on to find the complaint engaged in Reverse Domain Hijacking
“”In the present case it is self-evident from the facts that the Respondent did not know and could not have known of the Complainant’s rights in the mark PLANATE because they did not come into being until (at least) three years after registration. This fact would be self-evident to the Complainant itself and indeed is acknowledged in the Complaint where it is stated:
“Even if the Respondent registered the ‘www.planate.com’ domain name prior to the Complainant’s first use of the trademark on November 8, 2007 …”
Even in its fallback for contention of bad faith registration based on paragraph 2 of the Policy i.e. assertions as to what the Respondent should have done on renewal, the Complainant specifically allows for the fact that the Respondent did not know of the Complainant or its trademark:
“These renewals notwithstanding, if the Respondent did not specifically know of the Complainant or if its trademark or [of] its trademark rights when it renewed the disputed domain name multiple times, the finding of bad faith registration should still be confirmed under the circumstances of this case by Vertical Access Inc’s willful blindness.”
“”In the circumstances, the Complainant clearly knew or should have known at the time it filed the Complaint that it could not prove one of the essential elements required by the Policy, i.e. bad faith registration. In this regard the Panel also notes that the Complainant waited well over 3 years from first use of its trade trademark to lodge this Complaint.”
“The Panel therefore considers that the Complaint does amount to Reverse Domain Name Hijacking.”
In the UDRP for Trucco.com here are the relevant findings by the 3 member panel:
“”The Complainant is the owner of the trademark TRUCCO, filed and registered as:
Community Trademark Registration No. 001246776 TRUCCO (word); filed on July 20, 1999; registered on January 22, 2004”
“The disputed domain name <trucco.com> was created on May 3, 2001 and registered subsequently by the Respondent on February 21, 2002.”
“”The Respondent, referring to the fact that the Complainant has not initiated the dispute until now, almost ten years after the registration of the disputed domain name, claims that the Complaint should be barred by laches.””
“”Many decisions in proceedings under the UDRP have expressed the view that the doctrine of laches, as such does, not generally apply under the UDRP; and that delay in bringing a complaint does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant can establish a case on the merits under the requisite three elements. The reasons advanced for that view have been that the remedies under the UDRP are injunctive rather than compensatory in nature and that a principal concern of UDRP proceedings is to avoid ongoing or future confusion as to the source of communications, goods, or services. On the other hand, that view is not universally held, and the contrary view has been expressed, as it was put in The New York Times Company v. Name Administration Inc. (BVI), NAF Claim No. FA1349045, that laches is “a valid defense in any domain dispute where the facts so warrant.”
“”However, a delay in bringing a complaint under the UDRP may make it more difficult for a complainant to establish its case on the merits; particularly in relation to the second and third elements requiring the complainant to establish that the respondent lacks rights and legitimate interests and that the respondent registered and used the domain name in bad faith. “”
“The Respondent submits that the disputed domain name <trucco.com> is a common Italian dictionary word, meaning “make-up” or “cosmetic trick” and that this fact gives rise to a right or legitimate interest in the domain name.”
“”The Panel has therefore considered the specific details in this case, and notes that:
(i) the disputed domain name clearly consists of a common, dictionary, word;
(ii) the disputed domain name was registered two years before the Complainant’s Community Trademark, and there is nothing contained in the record that persuades the Panel that the Complainant’s trademark TRUCCO, at that time, was famous enough to be automatically assumed to be related to the common word “trucco”;
(iii) from information provided by both the Complainant and the Respondent, it seems that part of the business of the Respondent is to register dictionary words in order to take advantage of the commercial value of such words as domain names;
(iv) the Respondent does not seem to have used the disputed domain name specifically to take advantage of any possible likelihood of confusion with the Complainant;
Altogether, the Panel therefore finds that the Respondent may well have sufficient legitimate interests in the disputed domain name.””
“The Panel cannot find any evidence of bad faith registration, as – considering the geographical separation between the Complainant and the Respondent, as well as the fact that at the relevant time the Complainant did not have a registered trademark for TRUCCO – there is nothing indicating that the Respondent should have been aware of the Complainant’s trademark already at the date of the registration of the disputed domain name <trucco.com>.”
“In addition, where a respondent registers a domain name consisting of a “dictionary” term because the respondent has a good faith belief that the domain name’s value derives from its generic or descriptive qualities, rather than its specific trademark value, the use of the domain name consistent with such good faith belief may be considered as evidence of use in good faith. ”
“”As to the Respondent’s reliance on the fact that the disputed domain name has been registered for almost ten years, without any action taken by the Complainant, the Panel agrees with the Respondent that this makes it more difficult to accept the Complainant’s arguments that the disputed domain name was both registered and used in bad faith. “”
“Therefore, the Panel concludes that the Complainant has failed to prove that the disputed domain name is registered and used in bad faith.”
Vertical is a habitual cyber/typo squatter that ruins the industry for all. Can’t they find a way to make an honest living? God we live in times where you dont have to steal to be rich. In my view ALL their domains should be seized and they should be jailed for life.
how does larry s makes his honest living?
larry, can we look at a list of your domains?
trademarks do not cover everything under the sun. they are restricted to classes and to geographical areas.
is larry s familiar with trademark basics?
is larry s qualified to decide what is and what is not trademark infringement?
“jailed for life?” is larry s serious?
is trademark infringement a civil or criminal offense?
these look like reasonable decisions to me. for whatever it’s worth, the international consulting firm price waterhouse coopers publicly presented this domainer with an award for his domaining achievements.
registrars could refuse to register typos. but how would they determine what is typo?
browser software authors could try to add spellchecking to domain names, but they don’t. why?
Larry
Vertical Axis owns some GREAT domains and if you read the opinion’s of either of the cases, they won these too.
I have no idea what issue you have with them, but certainly your comments are on their face false.
Just curious. Can you elaborate?
Quite obviously, Larry, you have in front of you two panels of UDRP arbitrators who see things differently.
Larry is correct. Anyone who knows of Vertical Axis or cares to any investigation whatsoever will learn they have a long history of registering domain names which correspond to trademarks.
They won these two, ok and rightly so but just check their record and you will see they have lost lots of decisions as well and the names WERE typos of famous brands that were used in such a way so as to infringe on those brands. Last time I checked they had plenty of losses and plenty more domain names ripe for loss if challenged
Of course everyone loves a winner so Ham and the gang are Gods in domainland but the facts speak for themselves. If they had a three strikes and yer out rule in domaining these guys would have been done years ago.
Unlike Frank Schilling who folds like a cheap tent in a wind storm when challenged, these morons gut it out all the time and their win-loss record aint great. Facts, as uncomfortable as they may be.
With over 20 losses at the udrp its hard to describe these guys as anything but squatters.
no serious domaining portfolio (e.g. one in the 100’s of 1000’s) is 100% clean of controversial names.
if you disagree i welcome you to prove me wrong.
this is why i invite larry or others who criticise vertical axis here to post a list of their domains.
from what i’ve seen it’s quite common for small time domainers or unsuccessful web entrepreneurs to criticise large portfolio domainers. why? because they love trademarks? doubtful they even have any registered.
interestingly they rarely criticise the system of allowing individuals to own 1000’s of domains. they prefer to attack individuals or groups they unilaterally delineate.
how can we have a system that allows one person to register 1000’s of names and never criticise the system? someone besides the domainers is making a hansome profit from this and has a vested interest in seeing it continue.
even worse is the situation with ip addresses. like domain names, they are horded. and yet instead of trying to solve this problem, we aim to keep things centralised and just create more addresses.
sort of like trying to create more domain names, via new gtld’s, issued by some fictional “authority”.
this is not going to solve the problem of inequitable distribution.
there will be plenty more disputes.
why not fix the problem? perhaps because some are making handsome profits from the status quo and do not want to think about change. they will argue the problems “cannot” be fixed. more precisely, there is little motivation for them to pursue solutions.
“squatters” may be perceived as the problem, but, truthfully, they are merely a symptom.
I don’t know if the 20 figure is accurate or not but its 20 out of how many 500,000 domains?
If you own 1,000 domains and have 20 UDRP’s that’s one thing
If you own 500,000 and lost 20 well statistically pretty insignificant especially where 85% or more of all UDRP’s go in favor of the complainant and where we have seen some horrible decisions
mhb: my thoughts exactly.
there’s also the issue of which domains, out of the 1000 or 500,000 generate the most income. the above average performers.
before we can draw conclusions we may want to ask are they the ones that draw the udrp’s?
Arguing that the udrp losses are statistically insignificant is total BS. Statistically Catholic priests only molest a small number of young boys so I guess thats ok. What about the priests that don’t molest any boys. What about the domainers who also own 1000s of names yet have never even been served with a udrp.
Then theres the argument that 85% of the decisions go in favor of the complainant. Hmmmm guess what, the vast vast majority of those (high 90’s%) are squats. Yep, the sad reality is that the vast majority of the decisons are correct! Thats born out by the low # of cases that are actually challenged in court after the udrp.
Are there bad decisons? Yep. Are innocent men and womern jailed in this country? Yep, but that doesnt make every legal decison wrong does it?
Take a look at his losses. Bizzagent typos? Bad decison? Lets not talk generalities, take a look at the losses they have incurred and dissect them. You can not argue that there are bad decisons made at wipo and thus the decisons against Ham must somehow be unjust. Thats bull. Take a look at the cases he has lost and tell us which of these were “horrible” and unjust.
I suppose you want us to believe that Ham would not challenge a bad decison in court and that he would just roll over when challenged. Not buying it. Time for domainers to face the fact that the business is based on confusion. Thats what you were beaking off about yesterday no? How buy.xxx was being confused with buyxxx.com and as I recall you said you were thankful. Ham was thankfull to when all the guys looking for bzzagent.com ended up at bzzagen.com and bzzagnt.com two names which he lost although by most domainers standards these are likely just horrible decisons.
Glazed
You are comparing a loss of a UDRP to sexually molesting boys.
WOW
MB I do not think that Glazed was comparing sexual assault with a udrp. I think they were pointing out that your “statistically insignificant” arguments are hollow
I do not think the topic of sexually abusing children needs to be in any conversation about a UDRP of a domain name.
Obviously when it comes to a sexual abuse of children, 1 abuse is too many.
hmmm… alluding to shocking crimes involving physical abuse in a discussion about intellectual property disputes… strange.
glazed you’re still dodging the issue, imo.
show us anyone who owns 100’s of 1000’s of names and is not at least arguably infringing a trademark. do you really believe this is possible?
or maybe you think he just wanted to register a small number of names that are confusing similiar to past or future trademarks and that he registered several hundreds of thousands of other names just to obscure his true intent?
is ham’s error registering the wrong names – according to udrp filers? or is it registering too many names altogether – increasing his chances of losing some udrp complaints to “inevitable”?
if ham has done something he’s not supposed to do by registering too many names, whose responsibility is it to address that? ham’s? trademark owners?
maybe it’s time for icann, the registries, the registrars and their well-paid advisors to face the fact you clearly stated. not to mention isp’s and 3rd party dns providers who capture nxdomain traffic for profit. in the later case there is no domain name registration to complain about, and no udrp to win or lose.
does the confusion you cite, which is as we see quite profitable, arise because of the way the system is designed? or because of someone like ham who registers so many names?
Oh…the mere act of registering a domain name is not in and of itself a problem. Infringement is a product of use so the answer to your question is NO, Ham is not setting himself up for problems by virtue of his mass registrations. The domain names he has lost were lost due to the fact they were used in a predatory fashion to capitalize off of a right that he had no interest in.
WHat are you proposing? Something like China where each couple can have only one domain (child)?
The problem is in fact due at least in part to the way that the system was designed. More than one company can TM a term but only one can own the corresponding .com. That in and of itself sets the stage for problems but one might expect the source of such problems to come from the other tm owners who were unable to get the .com but the system and the way it is designed is not at fault for the practices of Ham and others who register names that correspond tomarks and then trade off of the fame or value in the mark. The system did not set the keywords that triggered the ads on Hams site, he did and as such the problem is a result of his own premeditated actions.
agreed.
so you acknowledge that the icann system creates disputes. is that correct?
the proposition is that the icann system is flawed. and in a way that as you point out would not be solved by limiting how many names one person can register. (however registering 300,000+ names will increase the chances of losing a udrp, imo)
if you accept that the likelihood of disputes increases as a result from the use of icann’s system[1], then do you think the problem with ham’s activities is due to the design of the parking “technology”? or is it due to the way ham is using it?
1. to the point of being inevitable
and how should we view browser makers, isp’s or 3rd party dns companies who target trademarks they have no rights in?
should we just ignore them and focus on domain registrants?
Ham is one of the kindest and most benevolent domainers in the world. Think of the incredible value he has added to the world by way of domains. Take for example the wildcarding of the .cm extension which alone revolutionized Internet commerce adding untold value to advertisers and the Internet as a whole. An amazingly unselfish move motivated soley by his devout faith in God and his sincere desire to make the world a better place. I am positive that all the udrp decsions he lost were absolutely horrible decisions which no doubt Lucifer was behind. Despite the negative picture the devil has painted of him Kevin was motivated to buy the squats for the sole reason of turning them over to their rightful owners. Thats the kind of guy he is. In the domain world few are bigger than Kevin and I would ranki him right up there with John Zuccarrini and Anthony Peppler, a couple of other real dogooders. God Bless Kevin and Dalsik who is no doubt very very proud of him.
Canned: Do you expect this incredible “Domain Name System” to police itself? It is severely flawed. And when something is flawed, people will take notice.
Ask yourself, why should we purchase “domain names” in the first place? They cost nothing to produce.
These indivduals you mention have exploited the fact that the “DNS” is a severely flawed system. And others helped them do what they did. TLD registries, registrars, and parking companies. And at the top, the well-paid people who manage ICANN, keeping the whole thing going.
All of them had the power to say “No” but instead they said “Yes, thank you.” And took the money.
Why would you place your faith in this system?
Your words ring with a tone of jealously regarding Ham. Perhaps you read a certain cover story, written by another domainer, and formed some opinions?
But there’s no indication of any desire in you to fix the problem: DNS.
So you’re OK with DNS and all the money being made, based on end-user naivete and confusion, but you’re disappointed that Ham and some other well-known “domainers” are among those who have been enriched?
Join the crowd.