Our resident ICANN expert George Kirikos of Leap.com, just got hit with a UDRP on a 4 letter .com.
Not unlike the UDRP that went against BuyDomains.com this week for Faci.com, another complainant is playing the UDRP lottery by trying to grab the domain name Pupa.com
How generic is Pupa?
A search under Google for Pupa returns a wikipedia.org entry for the term in the 1st position.
Pupa is “A pupa (Latin pupa for doll, pl: pupae or pupas) is the life stage of some insects undergoing transformation. The pupal stage is found only in holometabolous insects, those that undergo a complete metamorphosis, going through four life stages; embryo, larva, pupa and imago. (For a list of such insects see Holometabolism).”
You can also see a ton of images for Pupa’s here
It also has an entry on britannica.com
The complainant is MICYS Company S.P.A. of Italy which has two Trademark dated April 28th 2008. The Trademark was filed in in 2003 and opposed in 2005 and granted in 2008.
One of MICYS trademark is for makeup products the other is for clothing, soaps and deodorants and travel bags.
The Italian company’s official site is pupa.it
There is another trademark on the term by another company as well.
The domain name itself is not parked, nor does it appear to be for sale.
The domain instead has information consistent with the wikipedia.org entry, actually carrying the dictionary term on the page.
As we have said before almost every dictionary word, two, three and four letter combination and every phrase or saying has been trademarked
The domain name was first registered in 2003.
On the first page of Google there is not one entry to the products of the trademark holder but there are suggestions for them on the bottom of the page.
Pupa is a well known italian TM. It will be interesting to see how the case will be solved.
Typo for papa ?
What about the TM for PUPAWEAR as well ?
Looks like they lend themselves as Pupa Milano – not Pupa.
Lots of common law tms as well – like Pupa Paradise PupaPA.com.
As Michael indicates – a UDRP lottery – who will be next ?
…was George approcahed by the company first with an offer or is this another hijacking attempt out of the blue? I guess this will be commonplace as there are no consequences not to file if you do lose. I think this benefits lawyers in the long run.
Seems like the tide is turning…doesn’t sound too good either way…
All generic domains are now at risk. Sell now, or risk a UDRP later.
Pupa domain will likely go to the Italian company – this is the new way in domains. Legislation coming in 2013 will all but end the “industry” of domaining.
Pupa acquired secondary meaning when used with makeup. On its own, it still means ‘doll’ in Latin. On another note, hundreds if not thousands of corporate domains in the US have built a brand on purely Greek words. In that sense, the Italians are angered that they can’t own their own language.
we have patent troll and now we have UDRP troll
And in Polish ‘pupa’ is a gentle word for ‘ass,’ ‘buttocks,’ etc.
Acro is dead on with all his points – Furthermore, maybe UDRP has now self-extended itself to the aid of eurozone of distressed countries – PIGS – and will throw Italy this one.
In Italy Pupa is very well known so it can be understandable that they are trying to get the domain
” Pupa ” in Romanian means kiss
There’s one benefit for some of us domain late comers,we don’t get hit with an UDRP.
The junk we buy this days for $10 and trying to sell for $1-3 k it’s not worth it to them to go that route.
These UDRP’s that are filed by one company that claims a trademark on a term when there are other companies in other industries that can claim a trademark needs to be resolved on who has first rights to it. Second, if one has a domain name prior to any trademarks showing up at USPTO site or Trademarkia then the Speculator has the right to the name. There is nothing illegal about Speculating. It happens everyday on NASDAQ, NYSE, CBOE, etc. Corps and People who think everyone who is a Speculator is a Cyber Squatter need to be educated and if need be perhaps a defamation of character lawsuit will realign their thinking process.
Joe@ “Pupa is a well known italian TM”
in Italy pupa is a well famous and used a lot word as doll, NOT a famous TM.
Also in Italy there is a law that if you get a TM you CANT go on to get the domain that is registered before your granted TM, keep in mind is not a WIPO rule is a LAW.
BrianWick – You must be British; while your humorism qualifies as such in the UK, outside of the Queen’s jurisdiction it’s just half-wit blabber. Politics have nothing to do with civilizations and languages. Either stick to a topic you’re familiar with or save the ‘PIIGS’ references for the local Welsh slaughterhouse.
“These UDRP’s that are filed by one company that claims a trademark on a term when there are other companies in other industries that can claim a trademark needs to be resolved on who has first rights to it.”
I agree with this comment. Some terms have literally hundreds of different TMs for various uses. What gives one party the right over another one?
UDRP is not there to determine the “best” TM holder for generic terms.
It is to prevent egregious violations.
Brad
This UDRP business is getting rather silly.
Pretty sure that WIPO will not try to mess this one up. George will prolly be on this like a hawk just back then when he wrote the post below.
http://www.circleid.com/posts/20100423_naf_copying_pasting_nonsense_into_udrp_decisions/
This is just getting ridiculous. These trolls needs to be stopped.
I think I am safe with mine, http://wordunscrambler.com , but if they start playing a politics game then I am scared.
I think what they will try to do is claim a first use before 2003. Showing they used that brand before they filed for trademark. If they have no first use before he registered the domain then i can’t believe they could win.
So now domainers are forced to develop real websites as cyber squatting has expanded from typos of Verison type to real domains.
Lets hope that RS gets satisfaction with saveme.com – it’ll help everyone if he does.
Any domain attorneys out there willing to go NWNF to claim for expenses for UDRP-winning domain holders?
Will George file suit instead of responding?
Other than the fact that it’s a totally standard scientific word we all heard a billion times in 3rd Grade Biology class when learning about how butterflies develop…
Absurd. That is a completely generic term.
Assuming he wasn’t dabbling in the ‘dirty domainer’ gray area by using it to lean on the Italian TM for clicks, there is no reason whatsoever to take this from him.
George is going to make sure that this is a case to remember.
“Lets hope that RS gets satisfaction with saveme.com – it’ll help everyone if he does. ”
Why do people keep saying this? Because Rick keeps saying it?
Megalomaniacs approach everything in the most grandiose possible terms. This is why they may achieve staggering heights of success. Usually, though, they’re just ordinary cranks who believe everything they do is some earth moving event when really, it isn’t.
Rick was hit with a predatory UDRP that he will most likely beat back. If not, he’ll win in court. Similar UDRP filings have followed this same path before. UDRP panelists have never been bound by precedent so nothing that happens with SaveMe.com will have any relevance to anything else.
This whole PUPA thing is a bunch of KAKA 😉
(Sorry, I couldn’t resist)
I would not be suprised if the Complainant will likely ask for an Italian 3-member panel – just as the SaveMe.com.br thugs wanted a 3-member Brazialian Panel. These claims are also about national pride – even from a PIIGS country and further beating down the USA and whatever is left of our democratic republic – good god “Acro”.
Well, it just goes to show you either have to get laws passed or ICANN rules to protect us to some degree or have enough money on hand to hire a good thug exterminator such as Berryhill or Muscovitch or Kirikos.
@ Polacco
……and you can change the whole meaning & pronunciation of the word “Polish” when ya change the “P” to lower case
————————
@ Steve
Very good perspective.
Acro
I know Brian well he is about as far from British as you can get.
Same greedy sense of entitlement of the top tech companies who channel their US profits to overseas companies, so that they wind up owning nothing to the states they operate in (CA), and single digit percentages to the fed, where traditional businesses like Walmart pay 24%, the average . . .
How Apple Sidesteps Billions in Global Taxes
http://www.nytimes.com/2012/04/29/business/apples-tax-strategy-aims-at-low-tax-states-and-nations.html?hp
@ MHB, being a tax lawyer and notwithstanding, you have to draw the line at some point when US citizens personal id info gets bought, sold, and traded without the profits benefitting the consumers exploited!
well, george’s parking co. is showing links for makeup.
it doesn’t matter if it’s a dictionary generic term or one with multiple meanings… because a tm was already granted… for makeup. to argue against this tm, you should petition the tm office, not i.c.a.n.n. or their udrp providers.
and a reg’d tm for use of “PUPA” in selling makeup is all the complainant needs to take action against someone showing links to makeup from a public, globally reachable domain name with the exact string “PUPA”.
would be nice if the parking co. was a bit more intelligent, e.g., they matched search terms against reg’d tm’s in the usa and filtered out the potential udrp bait.
it’s possible to do that. but they don’t do it.
This pupa.it better withdrawal their complaint or else they will be blacklisted from entire Internet web sites.
“just as the SaveMe.com.br thugs wanted a 3-member Brazialian Panel”
Just a procedural note, btw. They did not ask for a three member Brazilian Panel. They nominated three candidates for one seat on a three member panel. Both sides nominate three people. One seat is assigned to panelist from each of those lists. Then, the provider sends a list of five names picked by the provider, and the presiding panelist is picked according to maximizing preferences expressed by both sides. At NAF, each side strikes two; at WIPO, each side provides a ranking. Mathematically, these two methods should be equivalent, but in practice WIPO fudges the rankings.
Now, before I hear complaints about that, I should explain. The “strike” system at NAF should yield the same result as your two lowest-ranked panelists (and yes, I’ve done the math). But, oddly, WIPO will often appoint your #4 or #5 rank. If they were honest about preference ranking, that should not happen. But it does.
A lot of anti British sentiment on here it seems. I married a Greek man, he does very little in terms of work, no wonder Greece is going down the pan.
Be careful what you say squire Berkens or I will take off your head and display it on the Tower Of London.
in Italian “pupa” may also mean “doll”
These comments are just amazing to me. IT’S A TRADEMARK!!! I’ll just repeat that one more time. They have a trademark!!!!! These comments are the same false thinking that put domainers out of touch with reality. Like thinking that all domains appreciate in value, that an end user cares about the initial registration date, and that no domainer makes a mistake when buying/overpaying for a domain.
He should lose the domain, because the other guy has a trademark. Trademark law trumps all.
It’s just that simple.
The Brazilian guy will ultimately win also. Rick should HOPE he loses and gets it over with. He would get crushed if the Brazilian people actually sued him in Federal Court. Don’t worry, once you get sued for infringing on people’s trademarks and you sue someone else for infringing on yours you’ll all get it 🙂 BuyDomains would be absolutely nuts to put their recent case into federal court. They would lose thier ass and 1-2 years of their life. Federal court is a whole different ball game than checking emails to see if something sells on sedo or godaddy. It’s not a fun place to be.
Hey “Jimmy” – You deserve the “Jokester” title more than me with that last comment of yours.
You are hereby crowned.
@ jimmy
Do you know what the term “trademark” means?
Reading your comments I don’t think you do.
Trade = The product, service, or field you are involved in.
Mark = The name you use in that field.
A TM, especially for a generic term, only covers the term for one specific use, not every use.
Apple for instance has a TM related to the computing field, but don’t own a TM for every use. That is why there are thousands of companies called Apple in other fields. In fact Apple Records dealt in music (1968) far before Apple Computers had anything to do with music.
Virtually every generic term has from a handful to ten thousand TMs for the term.
UDRP does not exist to pick the “best” TM owner for a term.
It exists to prevent blatant TM violations.
Brad
Trademark law trumps all.
It’s just that simple.
—————————-
It’s actually not ‘that simple’ and your characterizing it as ‘that simple’ proves that you don’t have the slightest clue what you’re talking about. You don’t even have a grasp of the ‘deceivingly simple’ part of Trademark law. You are completely clueless on this issue.
Sincerely:
A Trademark Holder.
Brad
You said it well.
Even this Tm has multiple registrants in the US who knows how many everywhere in the world
Apple Wins Applecom.com And Appleprinters.com After WIPO Complaint
techcrunch.com/2012/04/29/achievement-unlocked-apple-wins-applecom-com-and-appleprinters-com-domains-after-its-wipo-complaint/
Jimmy supports reverse hi jacking.
In my book, when someone tries to “Jimmy” something, they’re trying to steal it…
“IT’S A TRADEMARK!”
Yes, and so are the following words:
CHEER
TIDE
BOLD
In fact, they are all trademarks for very well-known laundry detergents.
Are you trying to say that nobody else has the right to use the words ‘cheer’, ‘tide’ or ‘bold’?
“well, george’s parking co. is showing links for makeup.”
Where are you seeing that? Both the DT screenshot history and the Internet Archive show it as a lander for his business, and showing the dictionary definition for “pupa” for quite a few years.
The domain name appears to have been originally registered by a Pupa Data Systems in San Diego, up until it was abandoned in September 2003.
The dates aren’t as significant as Mike suggests, since earlier federal registrations show that PUPA brand cosmetics were being sold in the US for several decades.
But, I’ve pretty much given up on trying to explain when trademark registration dates matter, and when they don’t.
Must not be generic enough. There are nouns that are more untouchable than this domain. Several InternetTraffic.com websites are typos of big companies. Check out Statconter dot com. If shorter domain names are getting hit then they better watch out. Many typo domains reside on Internet Traffic.
A popular restaurant chain is parked on IT. i.e. BJsBrewery has links to Bj’s restaurants. Whereas the domain is not exact, it is close enough. I’m sure they own a copyright to BJ’s restaurants.
Many more risky generic terms that most would not want to own also display links to TM holders. Even wealthy domain investors seem to drop the ball.
Any little mistake such as allowing links that pathetic parking companies serve up will cause the domain owner to lose their name. It is up to the domain owner to make sure there are no conflicting links. If they see any, then contact the parking company to have them change the related searches manually.
Was the Pupa dot com page changed? Or has it always displayed the pupa definition. Pupa is not as common as clothes, food, web and movies. There are some generic terms that increase risk of getting hit, especially 3 character domain names.
If you own a top generic and plan to use the domain name, then trademarking it in the appropriate field is your best option. It may cost you fortune, but you will be protecting your investment.
This is all common sense. There are legal experts out there that can help you to protect your assets. Why wait until another company attempts a domain heist on your domain portfolio?
@DT – “Why do people keep saying this? Because Rick keeps saying it? ”
Nope – it’s because it’s true.
Providing RS wins, I’m sure he’ll go for the jugular as far as RDNH is concerned, and then sue for expenses; stress; etc. At the moment the worst case scenario for a hijacker is being down a few grand….might make a few think harder before trying it if they can see six figures potentially going down the drain. If they have as much to lose as they do to gain, these things won’t occur as often as they are starting to do.
@ JamesD
There is no legal remedy for anything you propose.
RDNH is a toothless sanction. I suppose the only real ‘actionable’ merit it presents would be as a record that testifies against a petitioners intent should they try hijacking another domain, but there is no “jugular” with RDNH. It means nothing.
He can be awarded RDNH, Super RDNH or Super Double-Secret RDNH. It means nothing.
The owner of Zero.us can tell you about ‘recovering costs’.
But anyway, James, please elaborate just what exactly is “true”, because one would assume that a person who so confidently stands up and declares that, as you just did, would be able to articulate what he’s talking about.
Unfortunately, everything you said is completely incorrect, so I’m left to assume you know something else that you aren’t letting on.
“Double-Secret RDNH” – is that like DoubleSecretProbation.com 🙂 I knew I had that one all these years for a reason !!
Poor “James” – is just a victim of Corporate Socialism – I just had to use that term in another post – very sad.
DT – It’s like this; “going for the jugular re RDNH” simply means that he won’t settle for just a win and will insist on the panel finding RDNH. Ok? You’re keeping up? Good.
Once that’s in the bag, I should image that he will sue for expenses and anything else that he sees fit at the time. (But you suggest this can’t be done…that is what you said isn’t it, that what I said was incorrect? Over to you – please explain why RS wouldn’t be able to sue).
So, once finished with, the Chaves brothers will likely wish they’d stumped up more cash to buy the domain. Which may make others think likewise. That’s why it is ‘true’.
BrianWick – I’m not a victim, and I’m not poor either.
Looks like MHB was right…you’re definately not British.
Sorry “JamesD” – I meant “Jimmy”.
Point is, “Jimmy”, Registered TM’s carry no more weight than common law trademarks – I am not a legal professional but I so know the same guidelines of strength, secondary meaning, use and distinctiveness apply to all trademarks.
“So, once finished with, the Chaves brothers will likely wish they’d stumped up more cash to buy the domain. Which may make others think likewise.”
First off, yes 15 USC 1114 provides an affirmative cause of action to recover cost and fees as a consequence of a frivolous UDRP filing. However, it’s not as if attempting to do that is without its inefficiencies.
But, more importantly, it’s not as if it would have any substantial deterrent effect on frivolous filings. Digimedia obtained a $100,000 RDNH judgment against an idiot who went after them. Did it make a difference? Perhaps it did, as far as anyone researches them specifically in bringing a case. But you’d be amazed at how little homework is done by most UDRP complainants before filing one.
Take some of the frequent UDRP respondents who regularly win cases. They still get UDRP’s, and what amazes me is how clear it is from reading the complaints that UDRP complaint filers don’t bother to even use the search tools available from the UDRP providers themselves to find out that their case is exactly like the umpteen previous cases which were won by the same respondent.
Any business has to deal with legal claims. That’s not some kind of unique and horrific situation specific to the domain industry. What you don’t normally see are the CEO’s behaving as if a simple legal dispute is the greatest crime against humanity of the century.
@ BrianWick – “Sorry “JamesD” – I meant “Jimmy”.”
Okeedokee!
In my opinion George should be able to keep the domain name only if the company filed for the trademark after: 28-Sep-2003.
If I registered a domain name in 2001 and a company comes along and files for a trademark in 2005… 4 years later. Would they still be able to snag the domain name?
Ok… wait… TM Filing Date October 9, 2003
Pupa.com was first registered: 28-Sep-2003
So in my opinion it would be unfair to take his domain unless they have an italian trademark from before 28-Sep-2003.
@ Julian
I can file a TM right now for another use.
It doesn’t mean I have the rights to the domain name.
TM is for a specific use. Just because I have a TM does not give me the rights to the domain, regardless of the dates.
Brad
well, it appears the lander has changed now. it now is titled “venture capital and micro enterprises”.
unless i mistyped pupa.com, it was parked several days ago, and it had the usual paid links “search engine” along with some links to “popular searches”. one of those was cosmetics. maybe it was parked by default by the hosting company, hostgator.
whether links to “popular searches” should give rise to a udrp or not is an open question. but imo, it is udrp bait to show them.
RUNCOM: The domain name had never been parked while owned by me (which anyone can verify via the nameservers in the historical WHOIS, e.g. via DomainTools.com) or via Archive.org. You must have made a typo.
I’m pleased to report that the Ontario Superior Court of Justice granted us default judgment recently, regarding the domain name. One can read the court’s decision at WIPO’s list of court cases:
http://www.wipo.int/amc/en/domains/challenged/
Thanks to Zak Muscovitch for his superlative UDRP skills, as well as Andrew Bernstein and Sarah Whitmore of Torys LLP for their excellent representation in the court action.