Tracy Anderson Mind and Body LLC of Studio City, California, just won a UDRP against Mike Mann’s Domain Asset Holdings on the domain name tracyanderson.com
This marked the 6th UDRP in a row that Domain Asset Holdings has lost.
According to the UDRP, Tracy Anderson, is a professional trainer and creator of diet regimes and compilations of fitness training systems, techniques and methods, holds United States trademark registration for standard-character marks based on Tracy Anderson’s personal name, “Tracy Anderson Method,” which is used in connection with the diet and fitness regimes that she designs as well as for the website “www.tracyandersonmethod.com.
The Domain Name TracyAnderson.com was registered on January 9, 2009.
The decision is surprisingly short especially considering that it was decided by a three member panel.
Here are the relevant facts and findings
Complainant has the following trademark applications and registrations:
Tracy Anderson Method, U.S. registration number 4072973, filed on November 3, 2010 and registered on December 20, 2011.
Tracy Anderson Method, common law trademark usage asserted by the Complainant.
The Panel finds that the Disputed Domain Name “tracyanderson.com” is confusingly similar to Complainant’s trademark TRACY ANDERSON METHOD. The mere fact that “Anderson” and “Tracy Anderson” are common names in the United States is not sufficient to avoid confusion with Complainant’s trademark.
Complainant has presented evidence of its rights in the trademark TRACY ANDERSON METHOD referencing a federal registration in the United States and pre-existing usage sufficient to warrant common law trademark protection for purposes of the Policy.
Complainant alleges, and Respondent has not disputed, that Respondent is not affiliated with Complainant nor is Respondent licensed to use Complainant’s trademark.
Respondent alleges that Respondent’s use of Complainant’s trademark is permitted based on its legitimate business of offering domain names for sale.
The Panel finds that Respondent does not have a right to use Complainant’s trademark either and that, under the circumstances, it does not have a right or legitimate interest in the Disputed Domain Name. The claim that the Disputed Domain Name is merely offered as part of Respondent’s legitimate business in selling domain names is undermined by the exorbitant price for the Disputed Domain Name when compared with other domain names offered for sale by Respondent which also include “Anderson”, suggesting that Respondent is targeting the trademark of Complainant.
The Panel finds that Complainant has established this element.
Complainant rightly points out that registration of domain names based upon celebrity or well-known individual’s names are registered or used in bad faith and are subject to transfer in certain circumstances under the Policy.
In support of its argument, Complainant cites previous UDRP decisions including Ms. Barkha Dutt v. easyticket, Kapavarapu, Vas, WIPO Case No. D2009-1247 and Julie Brown v. Julie Brown Club, WIPO Case No. D2000-1628.
Complainant has also supplied evidence of its registered trademark with a first use in commerce which predates the registration of the Disputed Domain Name, as well as publications featuring the Complainant which similarly predate the registration.
Respondent’s argument that it was unaware of Complainant’s existence or celebrity when it purchased the Disputed Domain Name cannot credibly account to the Panel for the fact that the Disputed Domain Name is offered at a price which is nearly ten times that of other domain names offered for sale by Respondent which also include “Anderson.”
On balance, the Panel finds that Respondent registered the Disputed Domain Name primarily for the purpose of selling it to Complainant in excess of its out-of-pocket costs.
Therefore, the Panel finds that Respondent’s registration and use of the Disputed Domain Name is in bad faith.””
conclusion: stop placing BIN prices on your domains or don’t make it easy for people to know which domains you have…
“The claim that the Disputed Domain Name is merely offered as part of Respondent’s legitimate business in selling domain names is undermined by the exorbitant price for the Disputed Domain Name when compared with other domain names offered for sale by Respondent which also include “Anderson”, suggesting that Respondent is targeting the trademark of Complainant.”
This name was originally registered in 2003 and Mike picked it up on a drop Feb 2012 and the name redirects to his website with a buy now of $200,000. Based on the above paragraph from the UDRP if Mike didn’t offer the name at the ridiculously high price of $200,000 maybe he could have won the UDRP?
Not good
It’s one of the three worst rulings I’ve ever seen.
The fact that they simply relied on the price of $200,000 as the main reason that they ruled against Mike is ridiculous and dangerous. If that’s an acceptable reason to turn over a domain for one of the most common name combinations in the US, well then no parking company or domain investor should ever have a price listed on their domain, ever.
The problem, is that the panel doesn’t seem to recognize that the difference between the price of TracyAnderson.com @ $200K and RobertAnderson.com @ $40K can be assigned and set by an automated system, not deliberately by the domain owner. Not all domain sellers set their prices manually, and there’s certainly a good possibility of that being the case for a company that owns more than 300,000 domains.
For the panel to give such a brief written response on their decision I think is very much indicative of the fact that the ruling was wrong. It’s hard to substantiate a bad ruling with a lot of detail because it would require one to outright lie. This would be a perfect example of that.
I don’t understand how the panel has any ability to determine what is a reasonable price or not. Within the industry it is not uncommon for many domain owners to price their names at extremely high prices simply because they aren’t interested in parting with the domain, or it is used as a way to scare off tire kickers who want it for nothing.
Doesn’t Marchex in their domain acquisition contact form state that the starting price point for any of their domains is approximately $50K? They’ve got some gems, but there’s garbage in there as well. Is the garbage subject to UDRP based on a panelists opinion of a specific domains value?
Does that Marchex contact form message then put their entire portfolio in jeopardy based on this ruling?
This is a slippery slope and considering that this hangs largely on the fact that the domain was listed @ $200K (but not actually offered to Tracy Anderson or her reps) it means that the next step would be for someone to have a domain taken away because DomainTools and or some other listing service has old data within their system with some price listed, which as we all know happens constantly.
Truly disappointed in this panels decision and it is shameful that there isn’t more information in their response to justify this ruling.
Sean
As I noted the decision was notably short especially considering it was a three member panel
The person in question to me is not famous, I never heard of her and we can certainly agree she doesn’t have the notoriety of even Julie Brown from MTV fame which is cited by the panel.
The fact that Mike doesn’t park his pages and therefore there are no possible infringing links makes the ruling even stranger.
However I wouldn’t say it was one of the worst decisions I have ever seen or even on of the worst of the year.
My personal opinion is price did play a roll rightly or wrongly. When there have been only 10 reported sales all year for $200K or more this domain’s price doesn’t pass the smell test at $200K.
Sorry
I think you should also not discount, again rightly or wrongly that Mike’s company has now lost 6 UDRP’s in a row. Panels don’t like it and will look for ways of taking domains away when they think you are a habitual offender.
Picking your battles is VERY important when it comes to UDRP’s.
Her business partner is Gwyneth Paltrow so she has some good backing. Curious to know out of all the UDRPs he has lost are any of the losses from the same panel members or is every loss a different group of panelists.
Todd
With a three member panel the complainant picks one the domain holder picks one and those two pick the third so they could technically be the same as another panel but its not like a referee crew or umpire crew that always work together
Panelist Richard Page – well, you are already screwed
The Facebook TM domains certainly didn’t help Mike, but again, when you own 300,000+ domains and you’re purchasing tens of thousands at one time, buying portfolios of thousands and register and or buy domains on a daily basis, you’re going to have a much larger amount of “issues” to deal with than the average domainer.
That said, again it is such a generic domain, very common name, this seems like one that you should defend. The panel is presuming too much here, not basing everything on fact and this is honestly a case that would be better off being ruled (ultimately) by a judge in the US.
If all the facts were laid out, all of the documents published (from both sides) I think that the panels ruling and the brevity of the response would help substantiate that this ruling was just wrong on a number of levels.
The ruling conflicts with other name related UDRP cases that have happened just recently of truly well known and famous individuals. There’s just no logic to this way too often and it’s become just too tempting for a brand to roll the dice with UDRP then even entertain the thought of paying for a domain.
Who knows what the end result will be with Johnsons.com now.
That’s interesting. Since he has lost 6 in a row it seems like it is more than a string of bad luck. Is there a way to trace every panelist on every loss to see if anyone has served on any of his cases more than once. It just seems like there is someone internally that has it out for him and would love to know if some of the panelists are interconnected somehow possibly from the same law firm. Just curious.
I dropped USNavalAcademy.com which I had for years as a non-commercial First Amendment site.
Because Panelist Richard W. Page and most others do not believe in Constitutional speech on a .com TM – I dropped all that stuff years ago – yet Mike Mann now owns USNavalAcademy.com.
Not exactly good PR for his Grassroots.org 🙂 And candidly it would certainly seem he is a person of questionable character – yes ?
Todd
Sure on this one involving the domain tracyanderson.com panelists were:
Maxim H. Waldbaum
Presiding Panelist
Richard W. Paige
Panelist
The Hon. Neil Brown Q.C.
Panelist
It should be noted that Mr. Brown as often as any other panelists rules in favor of domain holders
Previous cases:
universalassistance.com
Gabriela Kennedy
Sole Panelist
Previous:
lifetimeassistance.com
Christopher S. Gibson
Sole Panelist
Previous:
trainingchannel.com
Pablo A. Palazzi
Sole Panelist
Previous:
designondemand.com
James A. Carmody, Esq.,
Sole Panelist
and then there was the Facebook one that started the string of six loses:
aboutfacebook.com
facebookbabes.com
facebookcheats.com
facebookclub.com
facebookdevelopment.com
facebookfest.com
facebookintegration.com
facebookjournal.com
facebookking.com
facebookland.com
facebooksafety.com
facebookstudio.com
facebookstuff.com
freefacebookapps.com
friendsonfacebook.com
fundraisingwithfacebook.com
joinusonfacebook.com
killfacebook.com
moneyfromfacebook.com
moneywithfacebook.com
newfacebookapplication.com
William R. Towns
Sole Panelist
Prior to the Facebook one, Mike’s company won both of the other UDRP filed against it.
I think you can see where the tide turned for him
Sean
Mike had that right to go to federal court even before the UDRP was filed assuming they sent a C & D 1st, and of course he still has the right now that the case has been decided to go to federal court on this one to block the transfer and get a declaratory judgement.
Of course your going to be spending $xx,xxx in costs ad attorney fees as soon as you say federal court so you have to figure if the domain is worth that type of investment
Yes – I am advised you can get a Declaratory Judgment based on a C&D – a lot cheaper – yes ?
I cannot mention the domain but 2.5 years ago a lawyer demanded I sign over a domain – but after countless requests asking him to send a C & D – he refused to do that. Now I know after the fact he knew I had an option in my jurisdiction to get a Declaratory Judgment – yes – but I did not know that at the time.
As a result I agreed to “rent” the domain for 3 years for the cost of renewal – and that “rental” period ends in 6 months. Very cheap tuition – but now I know now and I still control the domain.
Brian
Not cheaper
Going to federal court is expensive and once your in there is no ceiling on how high your fees can go
Yes Mike –
I now recall Chad Wright requesting a Declaratory Judgment on Hayward.com – after 3 kangaroos took it away from him – he told me on the phone was not cheap at all.
None of these cases had anything to do with advertising or links on the page. It seems to me that the recurring theme is that all of these names were not developed and only offered for sale and at what the panelists would consider to be high prices. I think what is happening is anytime Mike Mann or Domain Market is searched during a new UDRP case the panelist finds the ones listed below and bases a big part of their case off of what has previously occurred in his last UDRPs. From reading this it makes sense to me the best way to combat a UDRP is to not put any pricing on questionable domains and to change the wording to “may be for sale” instead of “for sale”. I assume that is why most parked pages use the wording “may be for sale” to release liability from the parking company.
tracyanderson.com
Complainant alleges that Respondent’s business is to register and sell domain names and that Respondent is offering the Disputed Domain Name for sale with the intention of selling to Complainant or a competitor of Complainant at an inflated price in exploitation of Complainant’s high profile status. Complainant submits a printed webpage with Respondent’s sale prices for the Disputed Domain Name and several other domain names using “Anderson” which shows that the Disputed Domain Name is offered for USD 200,000 while other domain names are offered for no more than USD 40,000, and several are listed around USD 20,000.
universalassistance.com
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.
lifetimeassistance.com
Complainant states that it contacted Respondent in attempt to repurchase the Domain Name in October 2011. However, Respondent indicated that the purchase price was USD 30,000, while Complainant offered USD 3,000 in an attempt to resolve the matter quickly. Respondent rejected all of Complainant’s offers. In early November, Complainant provided notice of its trademark rights to Respondent and followed with a request that Respondent cease using the Domain Name and transfer it to Complainant. Respondent failed to respond to the Complainant’s communications and Complainant states it thus had no choice but to commence this case. Complainant highlights that Respondent has a history of registering domain names in bad faith, requiring their transfer.
trainingchannel.com
At the time of the filing of the Complaint the disputed domain name was not being used for any particular purpose. It contained a notice stating: “TrainingChannel.com This domain is for sale, call us at 1-888-694-6735, email sales@domainmarket.com or Request a Price Now!”. In addition, as the Complainant has stated, and the Respondent has not denied, the disputed domain name was being offered for sale at a price of USD 5,000 on the web site of Respondent.1
As there is no evidence on the record that the Respondent has undertaken any act regarding the disputed domain name other than to offer it for sale, the Panel infers that the offering for sale was the Respondent’s purpose for the registration. If the Respondent’s offer for sale is determined to be in bad faith, then the registration will also be deemed to be in bad faith (Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044). In view of the Panel, the language at the website to which the disputed domain name resolves i.e. – “This domain is for sale” – clearly suggests that the Respondent registered the disputed domain name primarily for the purpose of selling it to the Complainant or to one of its competitors for valuable consideration in excess of the Respondent’s out-of-pocket expenses (see Royal Bank of Canada v. Namegiant.com, WIPO Case No. D2004-0642).
designondemand.com
Complainant asserts that Respondent is attempting to sell the disputed domain name for $35,000 through . The Panel finds that Respondent’s willingness to dispose of its ownership of the domain name is evidence of bad faith use and registration pursuant to Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
A very sad response from the panelists for what is most certainly a common name in the USA. So if Mike had sold it for $10,000, it wouldn’t be lost? This is a horrible decision for the reasons giving. As someone that reads way too much news a day, I’ve never heard of her either. Her trademark was filed 3 years ago, yet the domain name has been around for much longer. It looks like a reverse hijack.
Sean
“The problem, is that the panel doesn’t seem to recognize that the difference between the price of TracyAnderson.com @ $200K and RobertAnderson.com @ $40K can be assigned and set by an automated system”
The automated system uses what to come up with its valuation? Perhaps indexed pages (lots), number of ads on search (a number all for her), similar domains (like tracyandersonmethod.com). The automated valuation is based off of her business and TM.
@Mike
“The person in question to me is not famous, I never heard of her and we can certainly agree she doesn’t have the notoriety of even Julie Brown from MTV fame which is cited by the panel.”
It doesn’t make any difference is she’s famous to you or not. I’m sure many here don’t know Babolat or Uniqlo. Just because you watched MTV in the 80s and not fitness in the naughties doesn’t mean anything. It really only matters what the cybersquatter Mike Mann knew (or what algorithm he depends on to value names).
Furthermore who defines what is a common firstname lastname .com? If Mr Grassroots could show that he systematically regged anything available in the top 1000 or something like that he would have a defensible case. It’s hard to justify a few random names in his collection (because the algorithm picked up on ad laden searches or TM influenced metrics) just because they also happen to be popular name (whatever that means).
The case was lost mostly because DAH is a serial squatter and he had no cause for owning the name. The fact that some other Tracy can’t own it is another discussion
I must admit, i’m largely ignorant re: UDRP, and the cases that have
gone before, but do they take previous decisions (that may have been
lost) in to account when deciding on a current case?
@ unknowndomainer
“The automated system uses what to come up with its valuation? Perhaps indexed pages (lots), number of ads on search (a number all for her), similar domains (like tracyandersonmethod.com). The automated valuation is based off of her business and TM.”
There’s no indication of what determines the price. That’s Domain Markets algo and it’s their business. My point is that the panelists don’t know the answer, yet they don’t request that information, nor do they disclose that Domain Market never offered the domain for sale, nor did Tracey Anderson’s people. They just rolled the dice on UDRP and hey what do you know, the panel made a bad ruling and it worked.
Meanwhile VogueFashionModels.com doesn’t get turned over to Vogue Magazine. In that case a company literally uses the infringing domain for the purposes of marketing services to prospective models, using the Vogue brand as a way to create a sense of brand trust and legitimacy with prospective clients.
It is the equivalent of someone creating an online affiliate store for Walmart called WalmartDeals.com.
There’s no logical explanation for either of these rulings and it just further proves that this entire system needs to be revised.
and with a 3 member panel again 🙂