For the third time this week a UDRP panel has awarded a domain to the company that previously owned the domain and allowed ti to drop.
In this case, WesTrac Pty Ltd of South Guildford, Australia was awarded the rights to the domain name Westrac.com which is owned by Mike Mann’s Domain Asset Holdings.
Westrac owned the domain for 12 years until 2012 when the domain dropped and Domain Asset Holdings got the domain on the drop.
Subsequently Domain Asset Holdings quoted $50,000 to Westrac to buy the domain back.
The three member panel of Tony Willoughby, David Stone and Michael J. Spence found the term could only be a trademark, not generic and cited 6 previous UDRP loses by Domain Asset Holdings stating:
“Moreover the Panel is also unimpressed at the Respondent’s attempt to squeeze the Domain Name into its geographic portfolio, a portfolio into which it does not readily fit for the reason given above.
It was obviously a trade mark.
Finally, a reading of the previous cases in which the Respondent has been involved shows a track record of registering the names and trade marks of others and then pricing them at a level commensurate with their trade mark value to those complainants.”
Here are the highlights:
“”The Domain Name was first registered in the name of what appears to be an associated company of the Complainant, WesTrac Equipment Pty. Ltd., on February 22, 2000. From then until February 2012 the Administrative Contact for the Domain Name was an employee, Mark Curtis.
Following Mark Curtis’s departure from the company the Domain Name registration was allowed to lapse on February 22, 2012. It was acquired by Domain Registrar of West Jacksonville Florida, USA on February 24, 2012 and was acquired by the Respondent on a date prior to April 8, 20121 . The Domain Name is connected to a website promoting the sale of domain names and offering the Domain Name for sale for USD 50,000.
The Respondent is a company based in Utah, USA. It is engaged in the business of acquiring and selling domain names. It uses the services of its sister company, Domainmarket.com to manage the domain names it owns.
The Respondent has been involved as a respondent in six previous cases under the Policy and in each of those cases transfer of the domain names in question was ordered.
The Complainant contends that the Respondent acquired the Domain Name primarily with a view to selling it to the Complainant or a competitor at a profit.
The Respondent admits that it acquired the Domain Name primarily with a view to selling it to a purchaser at a profit, but denies that it had the Complainant in mind, because it was unaware of the Complainant at that time.
If the Complainant is to succeed under this head, the Panel either has to disbelieve the Respondent or take the view that in the circumstances of this case while the Respondent may not have been expressly aware of the Complainant, it is to be taken to have exercised a form of willful blindness and therefore to be deemed to have known that if it had conducted a simple search it would have identified the Complainant as the owner of the WESTRAC trade mark.””
As my late father used to say “It’s hard to get rich in a small town-everyone’s watching”. These guys obviously take a shot when they can and have lost six times-what we don’t know is how many companies paid them to buy back their own names-that they shouldn’t have let drop in the first place. That said-a trademark is a trademark.
@london555 Yes a “trademark is a trademark” ,but that said UDRP process is unfair in that it allows a complaint to raise a trade mark in order to issue a UDRP but it does not allow a respondent to answer that UDRP with reference to trade mark laws, only UDRP rules. That means that complainants can abuse the extent of their trade mark rights. Lets see (a) They can get a figurative trade mark on generic word and then claim rights in the “word” domain name (b) they are usually given worldwide monpoly type rights in their trade mark by panelists when in fact trade mark holder sonly have rights that extend geographically and for certain classes of product or service (c) Under trade mark laws it would not be against trade mark laws to write down a trade mark on a bit of paper on your desk ,yet a domain (unless used of course) is a cyber equivelant.
These guys bought this name knowing there was an existing trademark with the sole intent of selling back to the company that dropped it or the highest bidder-period. The panel saw through it. It’s that simple.
“Under trade mark laws it would not be against trade mark laws to write down a trade mark on a bit of paper on your desk ,yet a domain (unless used of course) is a cyber equivelant.”
What is a domain?
A domain is or isn’t property.
A domain is or isn’t like real estate.
This is the first I’ve heard of a domain being like a “bit of paper on your desk”. I’m going to give out credit to the domain community at large and say that’s because some asinine thoughts they keep to themselves.
Westrac – (a badly run) Australian company operating in Australia and China. This is a ridiculous decision.
Really a poor decision
Not really.
@h4ck3r What I meant by that is that simply owning “a” domain name does not violate TM laws AT ALL. The writing down on paper piece was meant to convey that TM violations would only occur with use, not passive holding of any name at all. A domain is NOT property under many jusrisidictions laws.