In one of the more interesting UDRP cases I’ve not because of the law or the decision but because of the fact pattern.
Jeremy Same (The Complainant) just lost his bid to get iSound.com back, a domain he bought in 2012 for $31,000 and let drop, to the company that he tried to sell the domain name to for $4 Million dollars.
Here are the relevant facts and findings of the one member panel
The Complainant “is an Internet entrepreneur recognized across the world for his introduction of innovative and disruptive technologies to the music industry.”
“Complainant’s predecessor in title, DJ Burdick, first used the trade mark ISOUND (the “Trade Mark”) in commerce in association with music discovery, music downloads, and social networking services on approximately April 14, 2004.”
“On September 27, 2011, Complainant purchased all right, title, and interest in and to the Trade Mark, the Domain Name, and the ISOUND website from DJ Burdick for $31,000.”
The domain name expired and On April 30, 2013, at which time the Domain Name was transferred to a third party on the drop who then sold the domain name to the Respondent, for an undisclosed amount.
The Complainant claims he was not informed of the domain name expiration and did not intend it to drop.
Respondent is one of the fastest growing video game and audio accessory companies in the United States. It is also a leading provider of premium portable speakers and electronic accessories under the trade mark I.SOUND (the “I.SOUND Mark”).
Respondent currently has over 300 separate products being sold under the I.SOUND Mark. It has sold products under the I.SOUND Mark in 54 countries, including Australia. Since 2004, Respondent has grossed well over $50 million in sales of products under the I.SOUND Mark.
Respondent owns registrations for the I.SOUND Mark in several jurisdictions worldwide, including a registration in the US with a filing date of September 3, 2004, registration date of June 20, 2006 and first use in commerce date of October 7, 2004, and an international registration registered on April 26, 2005.
Complainant offered to sell the Domain Name to Respondent two years ago, citing a valuation akin to Apple’s then-recent purchase of “iCloud.com” for over $4 million.
Respondent was not interested, and Complainant let the Domain Name drop.
It was then registered by a third party who subsequently sold it to Respondent.
Respondent has filed evidence which clearly establishes its rights and legitimate interests in respect of its I.SOUND Mark, registered and used since 2004 in respect of its portable speakers and electronic accessories sold worldwide.
Complainant’s evidence of use of the Trade Mark in 2004 and in 2007 amounts to single screen shots of two quite different and apparently now defunct websites.
Even if Complainant’s predecessor in title made use of the mark in 2004, on the evidence filed, such use appears to have been very limited.
Respondent’s continuous and widespread use of the I.SOUND Mark is to be contrasted with the wording of the temporary notice website apparently posted by Complainant from October 2012 until the expiry of Complainant’s registration for the Domain Name:
“Dear Music fans and artists,
Due to increasing competition for quality music discovery platforms online, it is no longer viable for iSound to continue in its current form.
Thank you to all the fans and artists who have supported iSound over the last few years, and we look forward to bringing you the next chapter, whenever that may be.
In the meantime, if you have any enquiries, please contact info@tuneday.com
The iSound Team.”
The Panel concludes the above posting is more consistent with (1) Complainant’s use of the Trade Mark not commencing until several years after Respondent had registered and commenced use of its I.SOUND Mark; and (2) Complainant having abandoned or at least suspended the use of the Trade Mark at the material time.
The Panel therefore finds that the Complainant has failed to fulfil the second condition of paragraph 4(a) of the Policy.
Registration and Use in Bad Faith
Having found the Complainant has failed to establish Respondent has no rights or legitimate interests in the Domain Name, it is not strictly necessary for the Panel to address this limb of the Policy.
For the sake of completeness, however, the Panel concludes Complainant has failed to establish bad faith registration and use on the part of Respondent, for the following reasons:
1. The evidence shows it was the previous registrant of the Domain Name, and not Respondent, who operated a parking page with sponsored links at the material time;
2. The Panel accepts Respondent’s contention that the apparent offer to sell the Domain Name relied upon by Complainant was not made by Respondent;
3. The evidence shows Respondent’s use of its I.SOUND Mark likely precedes any use of the Trade Mark by Complainant’s predecessor in title, and that Respondent has continued to coexist with Complainant in the marketplace in using its I.SOUND Mark;
4. In all the circumstances, and given Respondent’s long-standing registration and use of the I.SOUND Mark, Respondent was a bona fide purchaser in good faith of the Domain Name.
The Panel therefore finds that the Complainant has failed to fulfill the third condition of paragraph 4(a) of the Policy.””
Interestingly the Complainant which now owns isound.com is forwarding the domain to isound.net
“Interestingly the Complainant which now owns isound.com is forwarding the domain to isound.net”
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The Respondent owns that domain.
“Having found the Complainant has failed to establish Respondent has no rights or legitimate interests in the Domain Name, it is not strictly necessary for the Panel to address this limb of the Policy. ”
Since when? That’s completely against Policy.
The policy seems to be twisted at panel discretion these days, is there nobody that they stand accountable to at the end of the day?
Complainant = not the smartest guppy in the pond.
iSound renewal was due March 6th . . . Yet, Jeremy Same asserts iSound.com was, “wrongfully transferred to Respondent . . . on April 30, 2013.”
That’s soon, isn’t it? Usually there is a grace period of, at least, 21 days before the domain goes to pending delete.
There are two [2] domain registrars in the Whosis history. One of them is:
Nanjing Imperiosus Technology Co. Ltd
Which is the other? Can anyone tell me?
Ron Jackson lists the sale via Moniker/Snapnames in DNJournal’s May 8th, 2013 Domain Sales newsletters, for $8,000.
http://dnjournal.com/archive/domainsales/2013/20130508.htm
Did Nanjing Imperiosus Technology Co. Ltd sell out Jeremy Same by not informing him of the due renewal?
It happened to me recently. After 132 consistent weekly reports of expiring domain names, the report seemed suspended, so I filled out a support ticket with Moniker to get them back!
Frank Schilling, if you read this, do you have relationships / partnerships with some registrars, to represent the dropped domains, instead of them go to auction? That’s what it appears . . .
Too bad about AussieCommerce Group, Jeremy Same’s company. Jeremy Same paid for iSound website and domain name, trademark and company, fair and square, it seems like, for some $31,000 in 2011. The complaint reads:
***********Quote********************
On September 27, 2011, Complainant purchased all right, title, and interest in and to the Trade Mark, the Domain Name, and the ISOUND website from DJ Burdick for $31,000.
***********UnQuote******************
not “2012.”
It’s sad for domainers, that iSound.com subsequently sold for only $8,000 in April.
It’s still listed for sale on BuyDomains: http://www.buydomains.com/lander/isound.com?domain=isound.com
The Respondent asserts it was DomainNameSales.com – Frank Schiling’s company – who offered to sell it to the complainant for $50,000.
***********Quote********************
Respondent denies having ever offered to sell the Domain Name to Complainant and notes the email relied upon by Complainant as evidence of the offer to sell for US$50,000 was sent not by Respondent but by “domainnamesales.com.”
***********UnQuote******************
It’s hard to believe Frank/DomainNameSales settled for only $8,000, when he asked, $50,000.
Furthermore, iSound is worth way more than $8,000, imo.
What does everyone think?
It’s still listed for sale.
If the, “for sale,” notice doesn’t get deleted, something smells.
It looks like AussieCommerce Group – Jeremy Same’s company – is badly burnt over a good domain name! DreamGEAR, LLC, listed on the Whosis, intends to sell it, instead of brand on it. iSound.com redirects to iSound.net, which hasn’t changed the extension in the url bar or the logo. Also, it is listed for sale on BuyDomains.com . . . That’s kind of late, if it became his at the end of April. Let’s see how many months: May, June, July, August, September, October, November, December, January: 9 months.
No matter what the respondent claimed in the UDPR, looks like he realizes the worth of a great dot com! That is, to sell it, instead of brand on it.
To win a complaint you need the big 3!
Trademark, legitimate use, and good faith
and conversely
No trademark, no use, and bad faith.
Since the panel found that the Respondent (iSound) had a trademark, and legitimate use, they didn’t necessarily need to even address bad faith. It’s like winning the world series and then playing an extra inning
If you buy a domain for 31k you register it for as long as you possibly can. What was he thinking?
The domain sold for $8,000 in May 2013.
Australian business is easy prey for theft.
That is the lesson. Hope the new owners choke on their ill-gotten domain. You can’t take it with you.
Sorry. I’m usually kum bay ya, there is some good in everybody.
But watching this go down is like watching militia men club an old lady, and all the commenters are jumping on the side of the aggressor. You’re going to get what you want. It’s too disturbing. It’s not positive energy. I dont’ want to expose myself to it anymore.
There is a feature most domain registrars have called “auto-renew”. It’s no cost, other than $8.39 renewal fee (Namesilo.com). If the complainant had used that he would not have lost his $31k domain.
@ Micahel Sura, It WAS auto-renew!
Sad….very sad…..You have to wonder how such a valuable name could have not been renewed in the first place and why didn’t he renew it for 5 years? Surely his registrar send him a email when it was time to renew.
It’s sad for the domain industry.
Problem is credit cards expire, so auto-renew is not always seamless. If domaining is full-time, really no excuse for this. But I’ve had similar situations, with so many ventures & projects in the works (probably too many). Hope the person can resolve this.