Universal Assistance S.A. of Buenos Aires, Argentina, just won a UDRP against Mike Mann’s Domain Asset Holdings, LLC on the domain name UniversalAssistance.com
The Complainant had a trademark on the term, Universal Assistance since 1994 but the panel seemed to be willing to give them a common law right to the term even if they didn’t have the trademark.
The company official site was universal-assistance.com which they registered in 2004.
Mike company registered the domain subject to the UDRP in 2007.
The panel didn’t like the parking links on the domain, the fact that Mike quoted the Complainant a price of $50,000 to buy the domain and held several other UDRP losses against Domain Asset Holdings.
Here are the relevant facts and findings by the one member panel:
“The Complainant is a company incorporated in Argentina in 1980, providing travel health insurance in and outside Argentina. According to the Complainant, the company is operational in 150 countries and provides insurance to over 10 million people a year. It has trade mark registrations in Brazil, Argentina, Paraguay, Nicaragua and Colombia, with the oldest registration dating back to 1994. The Complainant registered the domain name universal-assistance.com in 2004”.
“The Respondent is a company based in the USA and is in the business of owning, developing and selling domain names.”
“It registered the Disputed Domain Name on December 9, 2007.”
“Despite the Respondent’s contention that “Universal Assistance” is a generic or descriptive term and cannot be registered, the Panel finds that the Complainant has rights in respect of the UNIVERSAL ASSISTANCE trademark on the basis of its various registrations in South America, with the oldest registration dating back to 1994″.
“Even if the Complainant was found not to have a valid trade mark registration for the UNIVERSAL ASSISTANCE trade mark, it is well-established that marks which may be generic or descriptive, but have gained a certain distinctiveness through use, should be considered a trade mark or service mark in which a Complainant has rights for purposes of the Policy.
“In its Supplementary Response, the Respondent produced a number of WhoIs records to illustrate that the hyperlinks on the website of the Disputed Domain Name belong to the Respondent, and that the Disputed Domain Name is used to advertise the Respondent’s goods and services. I
“n the Panel’s opinion, the evidence provided by the Respondent is of low probative value and therefore insufficient to overcome a prima facie finding of no rights or legitimate interests in the spirit of paragraph 4(c)(i) of the Policy.”
“Furthermore, this appears to be a mere display of hyperlinks, which although may lead to websites that are owned by the Respondent, establish no connection to the Disputed Domain Name or a name corresponding to the Disputed Domain Name such that would support a finding of a right or legitimate interest in the Disputed Domain Name.”
“The purported use of the website to which the Disputed Domain Name directs fails to show any monetary or intellectual investment that would support the Respondent’s submission that the website was used for a bone fide offering of goods or services. ”
“It is also clear, in the Panel’s opinion, that no legitimate noncommercial or fair use is being made of the Disputed Domain Name without intent for commercial gain (paragraph 4 (c)(iii) of the Policy).
“In this case there is a notice on the top and bottom of the screen advertising that the Disputed Domain Name is for sale. ”
“In addition, the Respondent admits that it offered the Disputed Domain Name to the Complainant for USD $50,000. ”
“As addressed in the preceding heading, the hyperlinks advertised on website of the Disputed Domain Name are not enough, in the view of the Panel, to amount to a bone fide use of the Disputed Domain Name and should be disregarded. ”
“The evidence taken as a whole, suggests that the Respondent did not register the Disputed Domain Name other than to offer it for sale (Training Channel, SA v, Domain Asset Holdings, WIPO Case No. D2011-0875). ”
“The fact that the Complainant was the first to reach out to the Respondent to purchase the Disputed Domain Name is of no relevance.”
“Furthermore, any doubt in the minds of the Panel as to the motives of the Respondent in registering the Disputed Domain Name is dispelled by the fact that the Complainant puts forward evidence of the Respondent’s pattern of registering domain names that involve trade marks, companies or businesses of other well-known third parties. The Respondent was involved in several disputed domain name disputes including the following: Training Channel, S.A v. Domain Asset Holdings, WIPO Case No. D2011-0875; Lifetime Assistance, Inc. v. Domain Asset Holdings, LLC, WIPO Case No. D2011-2137 ; and Facebook, Inc. v. Domain Asset Holdings, WIPO Case No. D2011-0516.”
“Previous UDRP panels have found against the Respondent for all of the above-listed domains for reasons similar to those already discussed by this Panel.”
“The Panel has taken due note of all of the Respondent’s contentions; however, the Panel does not find sufficient evidence on the provided record to establish that the Respondent did not register and/or use the Disputed Domain Name other than in bad faith. Given the above, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy in respect of the Disputed Domain Name.”
“The Panel notes that the Respondent denies that the Complainant has a valid trade mark registration since 1997, yet seeks to rely on this fact to invoke the doctrine of laches. ”
“Accordingly, the Panel does not find that the doctrine of laches apply on this ground.”
New guidelines for UDRP:
Only 24% of the opinion will apply to common sense – even in the case of a common use / generic use term – such as Universal Assistance or Nice Car.
76% of the opinion is how many Panelists have been employed. 76% / 3 = 25.33%
So 24% + 25.33% = 49.33% and since that is less than 50% – the respondent loses.
Point of the math = UDRP is a vehicle to create work for panelists.
” that the Disputed Domain Name is used to advertise the Respondent’s goods and services”.
I agree with the panel on this one.
Mike Mann had so many UDRPs and was marked as cybersquatter that he is not going to win any case now. Even his stupid talk about charity is not going to help him.
The original screen with $50,000 price tag is still there… I wonder how much Universal Assistance would have paid if that was ‘too much’ for them… and how much it ended up costing them in the end through the UDRP with lawyer and any other fees.
Maybe this is why you shouldn’t hire vacuum salesman to send out spam to companies, or people week after week, trying to push your domains on them.
I hear all these people say this is a decent guy, but after reading the past week or so, including his facebook names, he does not seem like someone who is a friend of the industry, instead giving every domainer a black eye, and a email box full of spam.
so, is this a good or bad decision? i am still counting the good/bad decisons of one member panels 😐
I always like the rationale of quoting someone for a price to be considered bad faith.
or If you quote someone you have to quote it without any profit, only the out-of-pockets costs.
i guess capitalism and private property are dead.
Didn’t know Mike was also involved in spamming, I thought it was mainly an Indian thing, unless he is employing them.
I must say this is a dodgy decision, although the facebook domains was a stupid move, which I guess is what he is paying for here…
One wonders if the outcome would have been different if it had not been for the FB losses?
In a court of law, would those previous decisions be allowed as evidence even?
What I find very interesting is that a large corporate decided to go with the hyphenated version of their name and leave the other unregged???
One hopes they have fired whoever was in charge of their domain inventory!!!
Although in many instances, a hyphenated domain is more natural as search engines don’t have to try decipher them…
UDRP panelists are becoming more like football refs than respected judges….
There are plenty of decisions that say a parked page is just fine and quoting a price of $50K or higher is perfectly fine as well.
It the totality of the circumstance.
What you can’t in my opinion do its get yourself several UDRP loses, you certainly can lose more than you win.
Unfortunately it doesn’t seem to move the panels how many domains the company actually owns compared to the number of UDRP.
SO if you own 100 domains and had 20 UDRP that’s 20% of all registrations
If you own 300,000 domain names and have 20 UDRP not the same deal..
however I’m not sure I have ever seen that argument raised in a UDRP decision (although the counsel made have made the argument and the panel just didn’t include it in the opinion)
Dom
UDRP panels are decided by attorney’s, not judges
The Facebook decision was in 2011 and this one in 2013. Yes you can count all 21 names in the Facebook decision but its only 1 UDRP and this one makes 2. The odds are definitely far in his favor. How many UDRPs have they had against them total in the past 5 years? Does anyone know?
Todd
7 decisions, including the Facebook one and this decision
5 losses 2 wins,
The last 5 were losses
universalassistance.com
Universal Assistance S.A.
TRANSFER
Today
lifetimeassistance.com
Lifetime Assistance, Inc.
TRANSFER
06-Feb-2012
trainingchannel.com
Training Channel, S.A
TRANSFER
03-Aug-2011
designondemand.com
SmartFurniture, Inc.
TRANSFERRED
07-Jul-2011
aboutfacebook.com
facebookbabes.com
facebookcheats.com
[18 MORE]
Facebook, Inc.
TRANSFER
04-May-2011
royaltulip.com
Starwood Capital Group Global, LLC
CLAIM DENIED
10-Mar-2011
northwestterritories.com
Sears Brands, LLC
CLAIM DENIED
22-Jan-2010
I have a feeling the facebook case will linger for a long time.
I mean seriously – what was he thinking – and were they going to PPC as well.
the other loses including this latest one seem pretty questionable – not exactly slam dunks like facebook
Brian
Agreed more so the reason for Mike to have selected a three member panel
Hello MHB,
Thanks for such great coverage on UDRP heists I think ????
Domainers VS. attorneys??? Only Idiots butter both sides of the toast !
CHEERS
Gratefully, Jeff Schneider (Contact Group) (Metal Tiger)
“Domainers VS. attorneys??? ”
Could also be generalized to: “Makers vs. Takers” – and somewhere in there are probably political parties.
God invented Attorneys so that attorneys could invent money – this way rather than one cave man killing the other cave man – he just TAKES his wife and all his shit – but both still live for another day 🙂
The point is every time a domain like this or NiceCar.com is lost – its makes the stuff in our portfolios that cannot be taken away worth that much more – THANKS TO THE ATTORNEYS 🙂
@ Brian Wick,
Or how bout.
How can you tell if an attorney is lying ?
ANSWER : If their lips are moving
This is what’s funny… http://www.universalassistance.com.ar
Don’t they have the trademark in Argentina and NOT in the US? This should be a case for reverse domain hijacking.