A three member panel not only ruled in favor of Rick Schwartz’s company eRealEstate.com on the UDRP on the domain name SaveMe.com, but the panel found the complainant engaged in abuse of process amounting to Reverse Domain Name Hijacking.
Mr. Schwartz was represented by Howard Neu, Esq.
Here are the relevant facts and findings:
“The Complainants are corporations incorporated in Brazil.”
“Since mid-2010, the Complainant has operated a daily deals website at “www.saveme.com.br”. The site is branded “Save Me”.”
“On October 14, 2010, the Complainant filed an application for a Brazilian trade mark for the stylized words “save me” plus device (No. 903036983). That application is still pending.”
“The Respondent registered the disputed domain name on August 22, 1996.”
“On August 18, 2011, the Complainant’s lawyer emailed the Respondent from his personal email account stating that he would like to buy the disputed domain name for a “start up project” and asking for the “initial price tag”.
“The Complainant responded the next day stating “Well into the 6 figs.”
“On August 26, 2011, the Complainant’s lawyer inquired: “What about 10k?”.
To which the Respondent responded on the same day: “Not even $100k”.
On September 14, 2011, the Complainant’s lawyer emailed to put forward a final offer of US$ 50,000.”
“The Respondent did not reply.”
The panel in rejecting the claim said:
“There is a fatal flaw in the Complainant’s case, namely that the Respondent registered the disputed domain name in 1996, some 14 years before the Complainant started trading in 2010, and could not therefore have registered the disputed domain name in bad faith.”
“Paragraph 4(a)(iii) of the Policy requires the Complainant to establish that the disputed domain name has been registered and is being used in bad faith.”
“The Complainant invokes various uses by the Respondent of the website at the disputed domain name since 2010 including for pornography and for pay-per-click links allegedly designed to capitalise on the Complainant’s reputation.”
“However, there is no need for the Panel to address any of these issues because, even if the Complainant establishes that the Respondent later used the disputed domain name in bad faith, and no matter how reprehensible such activities might be (as to which the Panel expresses no view), the Respondent still cannot show that the disputed domain name was registered in bad faith.”
“Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date, when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right.”
“There is no need for the Panel to consider the other issues raised by the Complainant concerning bad faith including the alleged pattern of UDRP bad faith findings against Mr. Schwarz and also the price sought by the Respondent to sell the disputed domain name following the Complainant’s approach.”
“None of this can retrospectively alter the lack of bad faith at the time of registration of the disputed domain name.”
“The Complainant’s remedy, if there is one, arising from its many grievances against the Respondent must lie in the courts.”
On this issue of Reverse Domain Name Hijacking
“Paragraph 15(e) of the Rules provides that “if after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking …. the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
“Reverse Domain Name Hijacking (“RDNH”) is defined in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
“The Complainant’s representatives are evidently familiar with the UDRP and both the Complaint and Amended Complaint make extensive reference to previous UDRP decisions.”
“Yet the version of the Complaint originally filed simply ignored the issue of registration in bad faith, labelling the third factor as “Bad Faith In the Domain Name Use”.
“This must have involved deleting the reference to registration in bad faith from WIPO’s complaint template.”
“After the Centre drew attention to this deficiency, the Complainant filed the Amended Complaint which belatedly addressed the issue of bad faith registration and, for the first time.”
“Furthermore, the Complainant even predicted in the Amended Complaint that the Respondent would make an allegation of RDNH and so the Complainant clearly knew that it was skating on very thin ice.”
“The Complainant argued that RDNH cannot arise because the Complainant has merely sought cancellation of the disputed domain name, not transfer.”
“The Panel disagrees.”
“First, complainants should not be allowed to file cases known to be fatally flawed without the possibility of a finding of RDNH against them, by simply fine tuning the remedy sought. ”
“Second, as mentioned above, RDNH is defined as use of the Policy in bad faith “to attempt to deprive” a registrant of a domain name. ”
“If the Panel had ordered cancellation, the disputed domain name would in due course return to the domain pool where it would no doubt be subject to the attentions of the Complainant and others, with only a possibility that the Respondent itself might ultimately re-register it (assuming the Respondent sought to do so). Accordingly, the Complainant’s request for cancellation is no less an attempt to deprive the Respondent of the disputed domain name than a request for transfer would have been.
“For all the foregoing reasons, the Complaint is denied and the Panel declares that it was brought in bad faith and constitutes an abuse of this proceeding.”
Adam Taylor
Presiding Panelist
Rodrigo Azevedo
Panelist
The Hon Neil Brown Q.C.
Panelist
Dated: May 31, 2012
Great News! Congratulations Rick!
He has risen,Rick has given us the blanket of security.
He is the Father of Domains.
Coolioz good one Rick + team.
Congratuations, @ Howard Neu – good one!!! 😀
Indeed, congratulations, Rick, and Howard Neu.
Terrific.
Congrats to Rick, and kudos to Howard!! Great outcome!
It is too bad a RDNH finding doesn’t come with any penalties.
Someone needs to take a RDNH to court and sue for actual and punitive damages and set a precedent.
Brad
@Brad Mugford – that’s already been done: DigiMedia v. GoForIt. Just that it’s a civil dispute, and it may not be realistically worthwhile depending on what principle one wishes to uphold.
@Brad Mugford – if the other party isn’t located in the US, you would have a gard time getting any $
Good news! Congrats to Rick and Howard.
I’ve noticed the domain status is OK. Is the legal process still ongoing, or Rick forgot to lock it?
Congratulations Rick !!!!!!!!
Rick, you’re still da man!
Rick is always 2 things people.
Brave and Honest!
this could only have had one result in an honest world and glad panel reached the true verdict
Thanks guys! This was a very sweet victory and I promise all this is just the beginning.
Now that they have been found GUILTY of Reverse Domain Name Hijacking I am going to do what I promised.
They WILL be the Poster boys for RDNH. Márcio Mello Chaves, aka Márcio Chaves and his brother Heitor have EARNED this new title and I want people from around the world to know the consequences if they try this.
There may be no criminal penalty NOW, but that will change. And while there is no criminal penalty, we will have them pay the SOCIAL penalty of people they know being disgusted with their actions.They have labeled themselves for the rest of their lives. They did this, not me! I just won’t let them EVER forget it.
My job is to spread the word and show folks what will happen to them if they try what these guys tried on you, me or anyone. The more cases we have like this, the more insurance we have as an industry that these predators will think twice.
You can all do your part by tweeting and all other methods of alerting others. And of course the next time you are threatened, point them to the saveme.com story and let them know they too will be part of all this.
Now my job is to make a collection of ALL RDNH decisions and assemble them and use it in such a way that no entity would even think of trying to hijack a domain ever again.
the most amazing thing to me is that you registered the name in 1996…
that’s foresight.
Congrats.
Thank you all for your nice comments. I am thrilled that Rick will use SaveMe.com to epose Domain Hijackers who think that they can get away with stealing our domains through the UDRP process. NOT ANY MORE!
You know if this same type of behavior took place off line on the street, its called attempted theft and its a crime.
Hello, Michael, Rick, Howard
Congratulations goes out to Rick and Howard, and all top of pyramid Domainers who have had to fight off POACHERS. There may be a reward in the stock market for those checking out a comment I made on or about 6/11/12 about Marchex post you put out Michael. Again Congratulations Dudes job well done !
Gratefully, Jeff Schneider (Contact Group) (Metal Tiger)
Congrats guys.
These thugs are not exactly good PR for Brazil – shame on them.
Congratulations to Rick Schwartz, Howard Neu and kudos to the panelists a well deserved victory on a landmark case. Thank you in behalf of all domainers!.
“You know if this same type of behavior took place off line on the street, its called attempted theft and its a crime.”
And if this sort of statement, from Rick’s blog, happens on the street, it would also be a criminal offense:
“Tomorrow we start using the 2 x 4 with nails!”
Congrats on kicking some cheap ass theiving butts guys!
Rick & Howard 1 – The Boys from Brazil O
“Now my job is to make a collection of ALL RDNH decisions and assemble them and use it in such a way that no entity would even think of trying to hijack a domain ever again.”
Sounds like a great idea!
“Now my job is to make a collection of ALL RDNH decisions and assemble them and use it in such a way that no entity would even think of trying to hijack a domain ever again”
Here is a good one on NewZealand.com
http://www.udrpsearch.com/wipo/d2002-0754
Her Majesty The Queen is officially a reverse domain name hijacker.
Brad
I got the spam email from Rick this morning declaring: “I am happy to report to you this morning that the complainant has been found GUILTY OF REVERSE DOMAIN NAME HIJACKING!!”
Why do people think that is such a big deal? IT MEANS NOTHING!!
There are zero consequences. The complainant is not put behind bars. There is no extra monetary costs. A real court doesn’t care what a kangaroo court says.
Nice win though. No sure thing in kangaroo court. 🙂
“Now my job is to make a collection of ALL RDNH decisions and assemble them”
WIPO already does that, by the way:
http://www.wipo.int/amc/en/domains/search/legalindex.jsp?id=12890
…but I’m not sure that is complete.
Nice Nice Nice … and congratulations Rick! I have the feeling that you were never really sweating bullets about this but from a small time domainer’s point of view the finding that the “Complaint was Brought in Bad Faith” is large. Now they need to establish a healthy fine to compliment the Bad Faith finding.
I think that a rule needs to be put in place that would have the Complainant pay for all fees associated with the Respondent’s defense … only recovering the money from the Respondent if the case is found in favor of the Complainant.
And criminal charges should never be taken off of the table.
“Here is a good one on NewZealand.com”
“Her Majesty The Queen is officially a reverse domain name hijacker.”
Yeah Brad but at least she offers you a cup of tea before she tries to rob you 😉
And if this sort of statement, from Rick’s blog, happens on the street, it would also be a criminal offense:
“Tomorrow we start using the 2 x 4 with nails!”
John, just literary tongue and cheek and some passion meaning their reputation online may be beyond repair and I will do everything I can to make that a reality by circulating this far and wide. That’s metaphorically sticking it up their ass in a very uncomfortable way. I promised before the win and I intend to keep that promise.
I also want to know if the law firm he REPRESENTS, Almeida Advogados, Brazil, condone this. If they do, they might own that 2 x 4 as well.
btw, John, I do appreciate your input into this case as well as Paul Keating.
Thank you!
Hello Michael,
It is extremely evident that there are some people who do not get how big a deal this is. Ignorance on fire goes to those who think their actions do not ruin their BRAND. They will find out how important BRAND is shortly! Speak loudly and carry a 2×4 with some surprises in it. BRAVO RICK !
Gratefully, Jeff Schneider (Contact Group) (Metal Tiger)
Bingo Rick !
Attorneys need to feel the heat ! Participants need to think twice before they go WHORING !
Congrats Rick & Team,
The thing that bothers me is that if you sell the domain, can they then try a UDRP against the new owner if it is then considered a new registration? I think that hurts all of us who have had a domain registered before someone starts a company and trade-marks your domain name.
Hello Rick , Howard
Can you sue these guys for damages to your BRAND ?
Gratefully, Jeff Schneider (Contact Group) (Metal Tiger)
Domainer Extraordinaire
I’ll tell you why this decision means something and is important
Because had it not been vigorously defended and if the decision went the other way, the domain aftermarket would be irreparably harmed.
Thanks for the post Michael and Congrats Rick and Howard!
This is another great win for all (past, present and future) individuals and businesses who legally and in a timely manner, register Generic domain names!
It is obvious attempted theft when a potential Reverse Domain Name Hijacker uses bogus “cybersquatting” or “bad faith” use claims through their clueless or otherwise devious attorneys to threaten and try to have a domain name forcefully taken away from its rightful owner.
Congrats and thanks again!
I was referring to so many people, including yourself, extolling the great significance of a “Finding Of Reverse Domain Name Hijacking” (from your title), when it amounts to nothing.
I was not referring to this decision.
“Because had it not been vigorously defended and if the decision went the other way, the domain aftermarket would be irreparably harmed.”
Regardless this is over the top melodramatic. There has already been 100’s of bad decisions. One more will have little effect on the domain aftermarket.
Hi Rick, I appreciate these words:
But is it worth it? Who knows who Márcio Chaves and his brother Heitor are associated with. You mean well, and I’m sure you have great security at your house and all, but you have a family and are down to earth to be at ease with little people and big. It ‘s a shame if that has to change.
My two cents: I wouldn’t go that far. Let the Reverse Domain Hijacking be as far as it goes. Quit while you’re ahead.
Hi MicroGuy.
No newbies over at NamePros to chew on today ?
You’ve made the same post twice. Everyone understands your opinion and it’s source.
Good.
Those clowns are dirtbags, always funny to see when dirtbags screw with someone who’s willing to put up a fight and screw them back.
This is way beyond an ordinary business disagreement. They tried to steal from him.
Hello Michael,
There is an important subtle point we would like to make and it is this. You almost never see
udrps go after other extensions. Why is this? The Defacto International Address of choice lies in
the .COM Channel ,where ecommerce business transactions prevail by a large margin.
The real value lies in the “Virtual Business Foundation” .COM Channel.
Apple.com knows this, they know the internets Foundation rests in the .com Channel.
Gratefully, Jeff Schneider (Contact Group) (Metal Tiger)
”
And if this sort of statement, from Rick’s blog, happens on the street, it would also be a criminal offense:
”
now now dont get too romantic peoples
ricks schwartz, caveat emptor
Hello Rick,
It looks like you like the screwing just as much as the business.
Love to do a deal with you one day, I think lol.
Gratefully, Jon