Director’s Choice, LLP just won is a UDRP for the domain name directorschoice.com
We read through the complaint the other day thought is was a no-brainier win for the domain holder, but as the opinion lays out it seems the three member panel thought it was a no-brainier win for the Trademark Holder.
It seems the domain holder acted as his own attorney to respond to the complaint.
Not a good idea people.
The domain holder already let us know he will be filing a Federal Suit to stop the transfer.
Here are the conclusions made by the panel:
You can read through our post and the decision and draw your own conclusions:
Complainant has been continuously using and promoting the Marks since at least as early as 1997 as the source of services for arranging travel tours for music organizations.
Complainant’s marks were in use in the U.S well before Respondent registered its domain name on March 7, 2000;
Complainant has pending applications for U.S. Trademark Registration for DIRECTOR’S CHOICE, filed July 14, 2014 (Ser. No. 86/336,351), for arranging travel tours for music organizations; organization of travel, in International Class 39; and DIRECTOR’S CHOICE TOUR AND TRAVEL, filed July 14, 2014 (Ser. No. 86/336,439), for arranging travel tours for music organizations; organization of travel in Class 39, which applications each claimed use in commerce at least as early as April 1997.
Complainant’s Mark Director’s Choice is comprised of terms which are suggestive of Complainant’s travel services for music organizations but not descriptive or generic.
Respondent and Complainant are both based in the United States and as such Respondent was aware of Complainant’s use of its common law Marks at least 3 years prior to Respondent’s registration of the disputed domain name.
Complainant has asserted facts establishing Complainant’s common law trademark rights in the Marks though Complaint Exhibits showing advertising, sponsorship and invoicing documents from 1998 using the Mark Director’s Choice, supporting over 17 years of continuous use, combined with substantial online advertising shown in specimens from its trademark applications as Exhibits annexed to the Complaint, sufficient to establish secondary meaning.
Respondent’s disputed domain name, <directorschoice.com> is substantially similar to Complainant’s Marks, because it incorporates Complainant’s DIRECTOR’S CHOICE mark in its entirety in the disputed domain name, and adds only the generic TLD “.com.” As such, this addition does not distinguish the disputed domain name from Complainant’s Mark Director’s Choice.
Respondent’s WHOIS information identifies Respondent HELP.org Domain Administrator as registrant of the disputed domain name and registrant’s organization as HELP.org, LLC.
Respondent is not commonly known by Complainant’s DIRECTOR’S CHOICE or DIRECTOR’S CHOICE TRAVEL AND TOURS Marks, nor is Respondent licensed by Complainant to use either of the Marks.
Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods or services.
Respondent has not used the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use.
Respondent has continuously offered the disputed domain name for sale at a premium above cost and not merely in response to an offer to purchase from Complainant.
Respondent has not been prejudiced by Complainant’s delay in filing this UDRP case because Respondent has known of Complainant’s business using the identical trade name DIRECTORS CHOICE for over a decade, since Complainant first emailed Respondent under such trade name in 2002, inquiring about purchasing the disputed domain name showing Complainant’s trade name in the e-mail header, as shown in Exhibits to Respondent’s Response.
Respondent should not now be permitted to avail itself of the defense of laches when the Respondent is in part responsible for the delay due to protracted negotiations with Complainant over the purchase price of the disputed domain name for over a decade.
Respondent uses the disputed domain name to offer hyperlinks to other businesses’ websites, including travel services that are in competition with
Respondent registered and is using the disputed domain name <directorschoice.com> in bad faith.
A finding of reverse domain name hijacking is not warranted as Complainant is not acting in bad faith.
Scott R. Austin, Esq., Chair of the Panel
Hon. Bruce E. Meyerson, (Ret.), Co-Panelist
Richard Hill, Co-Panelist
I note that you say it is not a good idea to act as your own attorney, but respectfully I would say that that must be qualified by “if you do not have a good understanding of law, how to present the case and have lots of money”. The problem with lawyers is that once you engage them you can then end up losing at both ends ,i.e. the costs of your lawyer and the costs of the other sides lawyer. Anyway what I was mainly going to say was that you have to be very careful to check Complainants contentions. In a not to distant UDRP a Complainant acting by Allen & Overy alleged that a certain Company had rights in a name and had done certain acts on certain dates, but when I went to expense of digging and getting a copy of the company formation documents it transpired that they had filed complete fabrication and the company they referred to did not even exist at the dates they contended . Do not trust that the lawyers will not lie and put in false evidence, they will.
The UDRP decision is misleading, there were no negotiations and no discussions of price. I simply said the domain was not for sale and they contacted me every couple years. As I see it the company enticed me for 12 years to sell the domain and when I put it up for sale they claimed “bad faith” and then filed the UDRP to transfer the domain without paying. The said I had knowledge of the trademark before I registered the domain because we are both in the United States. Also, I argued the company used “Director’s Choice” as a trade name or company name and not a trademark so a “trade name” has no relevance from a complainant’s point of view. the issue was whether I knew about the trademark prior to 2000 when I registered the domain and targeted them. That is what the UDRP bad faith is about.
The attorney, Mr. Swyers of The Trademark Company, already has one RDNH case against him and another case was thrown out because it involved business/patent dispute. he does this stuff all the time.
JohnUk
I use Mr. Berryhill, so does Mr. Schilling and Marchex to name a few.
There are some other excellent UDRP attorneys who only represent domain holders and have an excellent track record.
Yes you risk losing fees along with the domain, but your much more likely to lose the domain without representation not to mention a strike on your record which may effect UDRP’s on other domains to come.