A three member UDRP panel just handed over the three letter domain name EHF.com to the European Handball Federation
The panel of Flip Jan Claude Petillion, John Swinson and The Hon Neil Brown Q.C. found that the domain was parked, listed for sale for $150,000, owned by someone who is in the business of domaining and was registered 5 years after the trademark of the Complainant was filed.
It seemed the response from the domain holder was way over the 5,000 word limit but its not clear how that effected the decision
Here are the highlights:
“The Panel notes that the Disputed Domain Name
Accordingly, Complainant has made out the first of the three elements that it must establish.
B.2. Rights or Legitimate Interests
The Panel notes that Respondent has not apparently been commonly known by the Disputed Domain Name and that Respondent does not seem to have acquired trademark or service mark rights. Respondent’s use and registration of the Disputed Domain Name was not authorized by Complainant. There are no indications that a connection between Complainant and Respondent existed.
In addition, the Panel is of the opinion that Respondent is not “making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
Respondent uses the Disputed Domain Name to refer to a website incorporating pay-per-click links which, at least intermittently, relate to handball and the Complainant.
According to the Panel, such use of the Disputed Domain Name is detrimental to the Complainant and cannot be considered to constitute a bona fide commercial or fair use
In view of the foregoing, the Panel considers that the Complainant has also made out the second of the three elements that it must establish.
B.3. Registered and Used in Bad Faith
In the instant case, the Panel finds that Respondent must have had knowledge of Complainant’s rights in the EHF trademark at the moment it registered the Disputed Domain Name. The Complainant has valid trademarks in the Benelux, where the Respondent is located. At least two trademarks of the Complainant were registered in 1998, 5 years before Respondent acquired the Disputed Domain Name.
A simple trademark search on the Internet would have revealed the presence and use of the EHF trademark by Complainant.
Moreover, the historical Google searches included in the annexes to the Response show that there were already links to the Complainant and its trademarks between 1999 and 2000 on the website linked to the Disputed Domain Name.
Complainant also shows that an archived version of the website mentioned the sign “ehf” for the first time in April 2004, a few months after Respondent acquired the Disputed Domain Name.
The sign was mentioned in connection with sports, which is a further indication that Respondent was aware of the Complainant.
Respondent states that the Disputed Domain Name was acquired as a large portfolio purchase, and mentions that it has numerous other domain names in its portfolio.
The Panel notes that Respondent also appears in a large number of UDRP disputes, which further indicates that Respondent is in the business of selling domain names.
The Panel finds that paragraph 2 of the Policy implicitly requires some good-faith effort to avoid registering and using domain names corresponding to trademarks in violation of the Policy, especially when Respondent is a professional domain name registrant reseller
There is no evidence in the record that the Respondent in the present case engaged in any trademark review before registering the Domain Name, listing it for sale for USD 150,000 and using it to redirect visitors to a website filled with advertising links.
Such review might not be considered necessary in registering a domain name containing “dictionary words”, but the likelihood of infringing the rights of a third party or creating a likelihood of confusion as to source is clearly greater where the domain name is not a dictionary word or descriptive phrase. This is particularly true for three- or four-letter strings (See e.g., Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No.. D2006-0964).
As mentioned above, Respondent uses the Disputed Domain Name to refer to a website incorporating pay-per-click links which, at least intermittently, relate to handball and the Complainant.
While the intention to earn click-through-revenue is not in itself illegitimate, the Panel finds that the use of a domain name that is deceptively similar to a trademark to obtain click-through-revenue is found to be bad faith use.
Respondent gives a detailed explanation of the pay-per-click method it used. It argues that the “periodic appearances[of references to the Complainant]were related to the Complainant’s advertising activities and were not related to any actions undertaken by the Respondent.” The Panel does not accept this argument, as Respondent is solely responsible for the content of websites linked to the Disputed Domain Name
The Panel concludes that, by using the Disputed Domain Name incorporating the Complainant’s trade mark in connection with a website containing links relating to the Complainant and its trademarks, the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark. In accordance with 4(b)(iv) of the Policy, this is evidence of registration and use in bad faith.
In view of the above, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name
That is disturbing.
Not at all, common sense which most domain owners still don’t have,,,, “The Panel concludes that, by using the Disputed Domain Name incorporating the Complainant’s trade mark in connection with a website containing links relating to the Complainant and its trademarks, the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark.”
Goodnight
Im not defending Parking, but even if I were, 3-letter acronym is not so cut and dry like that, dozens if
not hundreds of other entities ( and brands ) could state the same for the exact same domain and parking page. What I find more disturbing is the amount of “Cached Evidence” , I think it’s great we can go back
in time and see screenshots, but it shouldnt be the the main argument ( Specifically for 3char, 2char and 1char ), and or deciding evidence. Not even questioning veracity, but merely the fact that it can be a malicious trap.
Would it alleviate the bad faith if a similar screenshot is produced, for the same domain and page but
referring to Environment Handling Fee ( EHF ) ? That’s a common 3-char acronym in Canada.
Maybe the domain owner can quote the godaddy/oscar case in a real court.
Of course, this is just my opinion.
Also, the fact that the Spanish Royal Family has a direct, very direct connection with Handball and cited association is
not related, right WIPO ?
@thelegendaryjp,
You have your opinion, but it’s hardly common sense – meaning that it’s debatable.
Why did PPC ads for the European Handball Federation appear at EHF.com? Because they themselves paid to put them there! It goes like this:
1. Some company wants to be found; so they pay Google to display their ads on a pay-per-click basis. Their agreement allows Google to distribute their ads on parked pages – the more relevant the parked domain, the better.
2. The parking company that manages EHF.com has an agreement with Google to display ads that are deemed relevant – either semantically or in as measured by click-through rate. This determination is made automatically, and it probably relies on Google’s algorithm. As a result, the company’s ad is displayed at EHF.com.
3. Next, the company sees the ad it’s paying for … displayed in a way the company approved in its agreement with Google. Instead of being satisfied or complaining to Google about where its ads are displayed, the company decides to accuse the billboard owner of “bad faith”. And it demands the billboard!
Suppose I tell a kid to pin my flyer on bulletin boards around town. He does as instructed. Next suppose I wander into a cafe and find my flyer pinned on the cork board. What would you say if I flew into a rage? I demand not only that my flyer be taken down. Beyond that, the coffee shop itself must now belong to me!
Is that common sense? These arguments based on PPC ads are absurd and must cease.
Respectfully disagree, since “Respondent is solely responsible for the content of websites linked to the Disputed Domain Name “.
So he/she can choose not to park with ads when doing so would clearly target a TM holder.
Please also note that “EHF” is not a dictionary word (not in English at least), so it has not a generic meaning.
As regards auto-generated ads, see also here:
https://randazza.wordpress.com/2008/04/02/auto-generated-websites-equal-bad-faith-under-the-udrp/
@Andrea Paladini,
The link you cite quotes UDRP decisions from 2005 and 2008. However, the line of reasoning put forward by those panelists is flawed. If I were a lawyer, precedent would matter. Since I’m a human being and not a lawyer, truth matters more than precedent.
Joe, you are a smart guy, you know ignorance or let’s be more gentle, lack of knowledge is no excuse. In saying that I have seen names saved after displaying ads. It is usually mentioned the respondent was unaware or a controller did it etc. Sometimes its works, most times it does not.
I see your kid and bulletin board example, makes sense BUT… that unfortunately is not how this works for us, wished it did, we could abuse the heck out of it! See the issue?
@thelegendaryjp,
Cybersquatting – in the sense of deliberate targeting and trademark infringement – ought to be cracked down on.
What I object to is using the mere presence of PPC ads as an argument for bad faith on the part of the domain owner. That argument is ALWAYS invalid, and it should NEVER be admissible.
Who causes ads to appear on a parked domain? The complainant pays for them and gives permission. Google feeds the ads to parked pages and determines where those ads are displayed. The parking company fulfills the order.
There’s only 1 person who has ZERO control over which ads are displayed on which domains, and that’s the domain owner. He’s completely in the dark and has no influence at all, neither in practice nor even theoretically. The 3 other parties – adertiser, ad provider, and parking company – arrange the ad; yet their decisions supposedly prove “bad faith” on the part of the 4th person, who is entirely passive and at their mercy.
UDRP panelists and complainants simply misunderstand reality. PPC ads on a parked domain can’t be a sign of intentional bad faith … because they’re not intentional at all. The domain owner can’t see ads that other people see because Google displays personalized results. Checking thousands of parked pages to see what’s being displayed there isn’t just impractical; it’s literally impossible. And the domain owner can do essentially nothing to prevent specific ads from being displayed, whereas the 3 other parties all can.
All the domain owner does is point name servers at the parking company. Typically, that’s a batch process applied to hundreds or thousands of domains at once. It isn’t directly related to choosing ads at all. This CAN’T be construed as targeting a trademark holder with PPC ads because it’s a broad untargeted process far removed from the ads themselves. And, as I say, the domain owner is the only person out of 4 parties with no control over PPC ads.
Do domain owners sometimes target trademark holders? Yes. Do they sometimes profit through PPC ads in bad faith? Do they deserve to lose in a UDRP? Yes.
But the mere presence of PPC ads tells us NOTHING about the domain owner’s intentions. Literally nothing. That argument is always utterly invalid. Logically, it’s like saying that baldness proves a person is an neo-Nazi skinhead. Baldness and PPC ads are phenomena outside a person’s control. No inference can be made unless there’s proof of deliberate ad selection.
Sorry Mr Peterson but your cafe poster analogy is not at all relevant.
In your analogy you make no mention of a trademark or intellectual rights.
The very crux of the issue in this case is of registered rights (trademark) and tha fact that the rules governing domain usage explicitly protect registered trademark rights.
In your analogy you give no reason as to why a) the person would wish for their poster to be taken down and b) any legitimate legal grounds they may have for being able to achieve this result.
In the real example a) would be because it is an infringement of their own registered
rights and b) would be through civil litigation or the UDRP process.
In any case, the cafe is a business legitimately conducting business selling food/coffee and the mere fact it has a noticeboard is not infringing any trademark.
Your analogy might work if you had said that on the noticeboard the cafe owner dubiously advertises that all the coffee provided in their establishment was made with ‘Nescafe beans’ and in fact it was not Nescafe beans but a different, inferior product.
In which case, Nestle (Nescafe parent company) could have grounds to embark on litigation and seek a remedy as the cafe will have profiteered illegally off a third party’s registered rights. This could result in some or all of the cafe’s prior profits being handed over to Nescafe, including the trademark-infringing assets being handed over to Nescafe too.
So why you would be surprised that EHF.com should be transferred to a legitimate holder of a matching trademark which has been abused (whether you agree or not, it has been abused) is something which surprises me!
It’s simple, EHF.com in your analogy isn’t a coffee shop, it is an asset used to infringe a trademark. It just happens to be about as valuable as a coffee shop. Probably more valuable than most, in fact!
Suppose that EHF.com had been legitimately operating as a news website or a clothing shop or something like that, and had momentarily displayed adverts which infringed this EHF complainant, they probably wouldn’t be successful in the UDRP. Monetised domains are vulnerable as even though ad revenue is ‘supposed’ to be legitimate usage, it rarely is given much shrift through the UDRP process.
It is also a relevant factor that there are probably hundreds of EHF registered trademarks, so why should that one body who embarks on the UDRP be awarded the domain? Well, that’s the way it works. Their trademark was infringed, and the rules allow them this as a remedy. You can dislike the outcome all you like, it’s the policy which allows it.
As for the idea suggested by others – that an automated ad generator is to blame – I’m sorry, a domain name owner is totally responsible for what their domain name is used for, and they know this and abide to this understanding as part of their terms of registering the domain.
It’s rather like being pulled over by a cop for your passenger not wearing a seat belt. You may be wearing yours, but you as the driver are ultimately responsible for the vehicle under your control. Same for having bald tires or no insurance, it is your ultimate responsibility as driver in charge, no matter who owns the fleet.
So the lesson for domainers is this: not to get butthurt and blame automated ads, it is to make sure that all your domains do not infringe trademarks or else you may find yourselves in the same anguish that EHF.com owner is in.
If it is not possible to 100% rule out infringing ads being displayed on your domains (particularly a valuable one) then either take the risk and take it like a man without complaining when you lost it to a UDRP, or put your domains to another non-infringing use.
Case after case has made it pretty clear now what will happen in such cases of infringement, even momentary ‘minor’ breaches.
It is no excuse for an advertising-displaying domain holder to say ‘but I am not responsible for the adverts that show’ – you absolutely are, no ifs or buts about it, and case history is very clear on the ramifications you can expect.
@Beagle,
Let me repeat: Advertisers have already given permission for their PPC ads to be shown on these parked pages. If they wish to complain that their ads are placed where they agreed they should be placed, then their grievance is with the entity that put the ads there – i.e. Google.
That seems simple and self-evident. All your talk of trademark rights is irrelevant because it’s the trademark holder’s instructions that are being carried out, according to contracts they agreed to.
“So the lesson for domainers is this: not to get butthurt and blame automated ads”
“either take the risk and take it like a man without complaining”
The status quo is divinely ordained. Questioning it makes me less of a man.
Joseph, the flaw in your ‘argument’ is that it can be used both ways…
…you say that the “Advertisers have already given permission for their PPC ads to be shown on these parked page” and somehow suggest that because they knew (or even made sure that) their adverts would appear there, that they are to blame for the trademark infringement.
Really?
You and I both know that it is unlikely that an advertiser, embarking on a promotion campaign, would be given a list of every single domain on which his adverts could be displayed. More likely this would be done on a ‘generalised’ or ‘categorised’ basis.
Therefore the advertiser wouldn’t necessarily have given his permission (a positive explicit approval) for a particular advert of his to appear on a particular competitor’s/infringing domain name, let alone actively pursue it, because he possibly wouldn’t even know.
The approval he would have given is the general approval for the campaign of targeted ads to commence, and not for a particular domain to run a particular ad – and even if it did I would still not agree that this absolves the domain holder of liability for what appears on his domains.
The same applies to the domain holder. He gives general approval for his domain to be used for targeted advertising, the fact he has limited ability to control what appears there once it is in the hands of the advertisers is not the complainant’s problem, or the advertiser’s, it’s the domain owner’s, the advertiser is carrying out his wishes and the wishes of the advert buyers, whoever they may be.
If it turns out that that use is infringing a trademark, the buck stops with him. What recourse could the advertiser give? The court wouldn’t even take the case on, the legal case is with the domain owner.
The point is, that when you introduce arbitrariness into the mix, it is no excuse as a domain holder to say ‘it wasn’t my responsibility once it was under the advertiser’s control.’ The responsibility lies with the tool (the domain) and only ends when that asset is sold. It may be an ongoing liability for whoever owns it, but the domain name is the tool for accessing a site on the world wide web, that is why domain names have inbuilt trademark protection for pre-registered rights. Re-read the policies. After all, every time you renew one of your domains you give your express agreement to abide by those policies, every single time!
It’s basic civil liability law and domaining law.
@Beagle,
“because they [the complainant] knew (or even made sure that) their adverts would appear there, that they are to blame for the trademark infringement”
You’re mixing up to 2 different ideas: (1) ad placement; and (2) unapproved use of trademark-infringing domains. Yes, they’re to blame for the ad placement. No, they’re not to blame for he trademark infringement.
(1) The advertiser is responsible for every place their ad appears, since they agreed to Google’s policy. Google places the ads on parked pages with the advertiser’s consent. Yes, Google profits by pairing those ads with infringing domains. Yes, the advertiser has a grievance. When it comes to PPC ad placement, their complaint should be addressed to their ad provider – i.e. Google – for putting ads where they don’t want them.
That’s regarding the PPC ads. The domain itself is another story.
(2) The trademark holder has every right to file a UDRP against trademark-infringing domains. The mere act of registering a domain can indicate bad faith, in my view. And such domains ought to be transferred to the complainant. Even if the domain isn’t parked. Even if there are no ads for the trademark holder or their competitors.
If you follow the following line of reasoning to its natural conclusion, then you may end up agreeing with me:
“the advertiser wouldn’t necessarily have given his permission (a positive explicit approval) for a particular advert of his to appear on a particular competitor’s/infringing domain name, let alone actively pursue it, because he possibly wouldn’t even know.”
Precisely. The advertiser and the domain owner are in an analogous situation. Neither of them monitors or controls ad placements on parked domains. If 1 is to be held responsible, then why not the other? In between, Google controls the specific ad placements. Therefore any sensible person ought to acknowledge that Google is most responsible. Indeed, the ad provider is the only party that can be held directly responsible for displaying specific ads. Google profits from all clicks and any infringment. Only the ad provider can monitor or control ad placements.
Responding to all this has taken us on a long tangent. Let me return to my basic point: PPC ads CAN’T show bad faith because they’re not a deliberate result of the the domain owner’s actions.
Let domain owners be held responsible for what they actually do – register domains … sometimes infringing trademarks in bad faith. Meanwhile, domain owners shouldn’t be held responsible for what they don’t do, can’t monitor, and can’t control – placing specific PPC ads on parked pages. Let Google, the parking company, and the advertiser accept their own responsibility for ad placements.
Do you see the distinction? Even if you disagree with my position, that distinction – between registering an infringing domain and placing PPC ads – is quite real. Over the first, the domain owner has full control and must bear full responsibility. Over the second, the domain owner has essentially no control beyond setting name servers.
To insist that someone is responsible for what others do when he can’t monitor or control what they do – that’s patently unjust.
another bad decision from a 3 member panel
This is a joke, there is no active trademark (word mark) in the US nor the European Union for EHF.
The Respondent should escalate the matter further and sue the hell out of those idiots!!!!
The UDRP system is totally flawed and has to be abolished immediately. It’s just a legal way to steal domain names from legitimate owners.
When you are targeting a TM holder with parking with ads, it doesn’t matter if TM is a word mark or a figurative TM.
As clearly stated by the Panel, “the use of a domain name that is deceptively similar to a trademark to obtain click-through-revenue is found to be bad faith use.” and “Respondent is solely responsible for the content of websites linked to the Disputed Domain Name “.
It’s just common sense, as thelegendaryjp correctly mentioned above.
It matters if a handful of other entities and or brands can place the same argument to the exact same
domain and parked page. 3-char Andrea….
Right decision actually.
That is what happens when you park a domain with ads targeting a TM holder.
The fact that ads are “automatically served” is not a good excuse, since you can easily decide to avoid this issue by not parking it with ads, just putting a landing page with no ads for example.
Plus the TM predates the domain registration data.
So we have both bad faith in registration and bad faith in use.
3-char
Parking kills another domain. Just plain ignorance on the part of the owner.
P.S.
As a side note, it’s curious to see that, according to the Registre de Commerce et des Sociétés (Luxembourg), the Respondent company, Xedoc Holding SA, was dissolved in March 2015: https://opencorporates.com/companies/lu/B98481
🙂
@Joseph Peterson
As regards “Who causes ads to appear on a parked domain? The complainant pays for them and gives permission.”
Nope, wrong, it’s the domain owner who causes ads to appear on his domain, when and ONLY when he/she decides to park his/her domains with ads, which is not the only option available to him/her
No offense and nothing personal, but your statements are flawed, since:
– nobody force you to park domain with ads;
– nobody oblige you to own thousands of names.
If you decide to go that way (many names, parking with ads) you have to accept all the consequences and duties of your actions, acting the right way, also avoiding to park with ads domains where there is a risk of targeting TM holders.
As a consequence, it’s only YOUR duty to check (yes, every time you park a domain) if there is such risk. All other behaviors are just a silly way of trying to discharge your (personal and direct) responsibility.
“Auto-generated ads” is not an admissible excuse, it’s just hypocrisy, since you can simply choose not to use parking with ads, you can park with no ads, using only a landing page, and many other solutions.
As for “Logically, it’s like saying that baldness proves a person is an neo-Nazi skinhead. Baldness and PPC ads are phenomena outside a person’s control. “, that’s really an out of place, nonsense example, since baldness, when it’s a disease (not when someone decides to cut their hair very short …), like in your example, it’s definitely outside a person’s control, while parking your domains with ads in definitely YOUR decision, fully under your control.
@Andrea Palladini,
Thanks for referring to my “hypocrisy”, calling me “silly” and irresponsible.
Your argument seems to be that domain owners are culpable for all PPC ads on all their domains – all ads ever displayed to anybody anywhere. Who cares that domain owners literally CAN’T see all those ads? We must imagine them and anticipate them anyway!
Your argument further suggests that if there’s any chance of displaying an ad from a trademark holder whose mark resembles 1 of our domains, then we must anticipate that chance and selectively prevent that domain from being parked. Why is it unacceptable for EHF.com to show EHF-related ads? That’s a question you gloss over.
But let’s focus on what you say is the domain owner’s responsibility – checking for similar trademarks. This requires domain owners to examine all possible pairs of global trademarks and domains in their portfolio. Multiplying those 2 numbers creates quite a large investigative burden. And we must somehow be aware of partial overlaps – not just exact matches.
Somebody with only a few domains can check 1 by 1. But to do this properly at scale requires specialized algorithms. And you maintain that it’s the responsibility of each and every domain owner to undertake this extra work load? Why not the parking company, since they handle domains in bulk? Why not Google, since Google writes the algorithms for pairing PPC ads and domains? If anybody ought to vet domains / ads for trademark issues, it ought to be these larger players. They have the resources, not the domain owner. They profit from showing the ads. If anything is bad faith, that is.
Even if we grant your assertions this far, it doesn’t matter. The complainant paid for the ads and approved where they’d be displayed. Seeing the ads displayed as they agreed should not be grounds for seizing a domain.
I didn’t gloss over anything about this UDRP case, read again my posts here.
No offense, but you are still trying to discharge your responsibilities as domain owner with groundless statements.
If you don’t respect or if you don’t know TM regulations, it’s your fault, and they rightfully seize your domains.
I know that many people, also in the domain industry, would like to operate just with the “law of the jungle”, but that’s not how it works.
Good luck. 🙂
@Andrea Paladini,
For some reason, you insist domain owners have a responsibility to prevent certain ads from being shown on their domains. Why? The advertiser is paying for those ads and gave permission for the ads to be displayed everywhere they are being displayed. The domain owner simply entrusts the domain to a parking company and gives advertisers what they ASK FOR.
If advertisers are upset with their ads being shown somewhere, then their complaint is with Google – not domain owners. Domain owners can’t forcibly charge a company to display ads they didn’t already approve.
Yes, Andrea, I deny that domain owners have this responsibility, which you’re trying to foist upon us. Adertisers request that their ads be displayed where Google chooses. We merely comply passively by allowing them to pin their flyers on our cork board. We don’t even see what ads are there. On the contrary, we CAN’T.
I’m not advocating for the “law of the jungle”. No, I’m emphasizing that advertisers, Google, and parking companies aren’t taking responsibility for their role in PPC ad displays on parked domains. Furthermore, complainants and UDRP panelists routinely use an invalid argument to “prove” bad faith based on PPC ads. Asking UDRP panelists to understand the reality of domain parking is perfectly reasonable and just.
Andrea, it’s as simple as this:
Q: Does the presence of a particular PPC ad on a parked domain prove that the domain owner has targeted the company whose ad is shown and that the domain was registered in bad faith to exploit their trademark?
A: No. While the domain owner might be acting in bad faith, he might be entirely unaware of the company’s existence. The parking company would still display the ad.
Hopefully you can see the logical fallacy. This is equivalent:
Q: Does a shaved head prove neo-Nazi ideology?
A: No. While the person may be a white supremacist, he might not be.
Plain and simple: You can’t infer ANYTHING about a domain owner’s intentions to target a trademark holder based merely on there being a PPC ad for that company shown on a parked domain. Such reasoning is fallacious. Always.
Joseph, your arguments and contentions make absolutely no sense.
There is no argument about whether a domain owner is responsible for the content presented on his or her domain.
The domain owner IS responsible! That’s the very point – there is no argument over that, because within the rules governing domain usage aggrieved parties (whose trademarks have been violated) are provided the opportunity to seek redress from the domain REGISTRANT!
Not the ‘Californian company who displays advertisements on said domain,’ not the ‘third party company which has an algorithm to display matched content on a particular user’s computer,’ but the domain REGISTRANT! This can also result in, among other things, the domain being transferred.
How can’t you accept that? There is absolutely no argument.
There is also no argument about it being a domain owner’s responsibility to actively protect his portfolio – if you own 10,000 domains or 10 domains, you must make sure that not a single one of them is infringing another’s trademark, or you will be at risk of losing the domain in the process. If you are ok with that then fine, but it is nobody else’s responsibility in law.
Why should it be anybody else’s responsibility? If a ‘domainer’ can’t afford to put in the legal research into making sure his portfolio is safe, then all I can suggest is: a) domaining is perhaps not a safe industry for him to be in, or b) if he is faced with a losing UDRP he has to accept it and not complain.
“I am based in Timbuktu, how was I supposed to know that there is a knitting shop in Ronkonkoma with the registered trademark matching the letters of my domain which the ads shown on my website infringed?” is not a legal argument, I’m afraid.
As for your final two question and answers, the first answer you gave is totally irrelevant. The fact that a domain owner ‘might not know’ of a third party with registered rights is completely irrelevant. Ignorance is no excuse, it’s not a legal defence – so no, there is no logical fallacy like you state there is, because it is the domain-owner’s responsibility, not the ad company’s. That removes any room for ‘argument’ like you seem to think it does.
You need to realise that it is no excuse for a domain owner to say “I didn’t know what ad showed on my site,” or “I’m not responsible for the ads,” or “I didn’t know X company owned X trademark.”
The fact you can’t grasp this is surprising as you seem to be quite knowledgeable about domaining in general, but as far as registered rights are concerned, you simply do not know the law or if you do, you show no understanding of it.
@Beagle,
Let’s see …
You insist “there is no argument!” 4 times. You declare that I show “no understanding” and refer to “the fact that [I] can’t grasp” things. Yet you confess that my nonexistent arguments “make no sense” to you.
Your own argument seems to be a simple repeated assertion plus an exclamation mark: “The domain owner IS responsible!” Plus a few barked orders: “You need to realize …” And a self-congratulatory, dismissive finale: “That removes any room for ‘argument’ like you seem to think it does.”
Ambrose Bierce defined “Positive” as “mistaken at the top of one’s voice”. I’m afraid this is a conversation is better skipped.
I wonder how many Chinese are going to lose 2 & 3 letter .com’s in the next few years, just by simple mistakes, and advantageous companies trying to secure the better .com.
don’t park valuable domains.. that is what it has come to. not like parking makes much these days anyways but since its so easily manipulated its just too risky.
At the end of the day Joe we can agree to disagree but for me if you park a name you have to live with the risk, that is why I park ZERO names as of the last several years, risk/reward just not there on the good stuff any ways. Know how many names I lost to UDRP or WIPO etc, ZERO. There is certainly a direct correlation from where I stand. Obviously not looking for trouble helps as well.
@thelegendaryjp,
I agree with you about the risks of parking. Domainers are increasingly abandoning PPC and using clean landing pages with inquiry forms – less risk, greater benefit. However, default settings at various registrars and market places still steer us toward PPC. If parking companies don’t begin taking more responsibility to protect their customers – which includes educating UDRP panelists about who is really responsible for ads – then parking as a whole will see declining participation from domainers.
Risk is 1 thing. Fairness another. It’s risky to walk down a dark street at night wearing a Rolex … just as it’s risky to entrust domains to a parking company when UDRP panelists assume ads you’re unaware of and can’t control somehow represent your intentions! Both are risky. But that doesn’t imply we deserve to be mugged.
Joe I felt like you were with me there for most of the first half and make some good points then we agree to disagree again…
Does it seem unfair a “rookie” who knows no better parks his valued asset and the parking company sets infringing ads and the domain owner loses the name…doesn’t seem fair, I agree. However the issue is ignorance is no excuse, fair or unfair it does not matter what it seems it is what it would mean for every case.
Even if that guy/gal had the best non malice intentions you cannot allow rules to be broken. This applies to every day life. Could we all just plead ignorance for everything and who decides who is tell the truth?
Some lessons in life Joe are cheap, some are very expensive.
“ignorance is no excuse”
Ignorance of what? Displaying ads from advertisers who pay and give permission isn’t a crime; it’s simply fulfilling a customer order. The advertiser agreed to display their ad on the parked domain. If they fail to realize this, well, ignorance is no excuse.
The concept of “infringing ads” makes no sense. A domain may infringe a trademark. But ads are placed according to the trademark-holder’s instructions and Google policies to which the advertiser has agreed. Misplaced ads are a problem they can take up with Google, or Google can take issue with the parking company. These 3 parties control ad placements; the domainer doesn’t and can’t.
Domain owners are under NO obligation to monitor all the ads on their parked pages. There can be no such obligation since it’s literally impossible to see which ads Google’s algorithm will show someone else.
Furthermore, domain owners are under no obligation to remove ads when (1) the advertiser, (2) Google, (3) the parking company all insist the ad belongs there. This too would be impossible. Google controls the algorithm, and they don’t let us weak or customize it. From what I understand, even the parking company has no control here.
“you cannot allow rules to be broken”
What rule was broken? The domain owner provides a cork board. The complainant pays Google to stick their flyer on the cork board. Then they see their own flyer, call the domain owner a scoundrel, and demand the domain itself? Ludicrous!
Bad-faith registrations are a real problem. But you simply CAN’T prove cyber squatting by looking at PPC ads on parked pages. Never ever. It’s an absurd idea. The domain owner has nothing to do with those ads. Meanwhile the complainant is paying for the very thing they’re complaining about and using as a pretext by which to seize the domain.
Bad faith must be demonstrated in some other way. If I go out and register GoogleFindsThings.online, that would be an infringing domain, whether I park it or not. Seeing or not seeing PPC ads on it would be irrelevant.
The panelists don’t get paid if nobody files UDRP’s 🙁
Joe, to be completely honest now we could not disagree more. I can respect your passion and fight for fairness but quite simply life is not always fair. The responsibility IS on the domain owner to protect their asset by making sure it is not used in a fashion by their choice or another’s to cause damage/loss to a tm holder.
No one forced you to take that risk and no one thinks you should get free passes on competence and responsibility.
If you cannot see that which I think you will not, we agree to disagree. I think you fail to accept that when you own a domain name, acronym or word(s) you must take a certain amount of care because while we may agree in certain cases “it isn’t fair” it does not mean free passes should be handed out to the ignorant.
@thelegendaryjp,
It’s fine if we disagree. Basically I can boil this down to 2 points:
(1) Inferring bad faith from PPC ads on a parked domain is ALWAYS an invalid argument. UDRP panelists shouldn’t avail themselves of it.
(2) Displaying ads on a parked page fulfills an order at the request of the trademark holder. They have a right to file UDRPs against bad-faith registrations and to seize the domains in those cases. But they have no right to blame the domain owner for permitting their ads to be displayed, since this always occurs at their request. Issues with ad displays are properly an argument between the advertiser and Google, since Google alone decides where to place their ads.
“No one forced you to take that risk and no one thinks you should get free passes on competence and responsibility.”
In case anybody is listening in to this conversation, let me stress that, when you say “you”, that’s just anybody; it isn’t me specifically. Personally I’ve never been involved in any UDRP. We’re talking about somebody else’s case – or, rather, principles in general.
Joseph, you are making a simple mistake (well, you’ve made many) but your ‘argument’ is not merely restricted to a trademark holder complaining that their trademark has been advertised on a matching domain.
The UDRP/WIPO route is open to anybody if their trademark is being infringed – this can include the goods of a competitor (company) or competing offering from being advertised.
A crude example would be if Nike.com lapsed, I bought it, and then advertised Adidas trainers on the site.
I could legitimately set up a forum lauding the Greek mythological character, Nike, but I would be infringing Nike Inc.’s registered trademark by offering for sale a competitor’s products in whatever category.
Your example only seems to take into consideration Nike Inc. going after me for the domain for displaying adverts for Nike Inc.’s products through adverts Nike Inc. has paid for using Google’s algorithm.
Either way, it is totally the domain holder’s responsibility what appears on the served pages of his domain.
@Beagle,
You raise a good point: The complainant’s mark may resemble the domain, while the complainant takes issue not with its own ads but with competitors’ ads being shown. My point #2 doesn’t apply in that case, since the complainant isn’t objecting to their own ad.
Yes, I’ll grant that the presence of specific PPC ads is relevant in this situation. Competitors’ ads establish that the complainant has a plausibly legitimate grievance. It’s the same situation when Google displays competitors’ ads in SERPs for a brand-name search.
However, while PPC ads are relevant for showing a grievance, they CAN’T be used to used to infer anything about the domain owner’s intentions because the domain owner most likely plays no role in selecting those ads. As I’ve explained, that’s an invalid argument. So my first point, which you didn’t address, still stands.
I’m all in favor of Nike filing a UDRP on Nike.com, whether there are PPC ads on it or not. An argument for bad faith can be made even so. Their brand is so recognizable whereas Nike from Greek mythology is so obscure that any use apart from cybersquatting seems unlikely; and the respondent ought to face an uphill battle to prove good faith and keep such a domain. We all know this, and we don’t need PPC ads to get it. That’s why your argument is persuasive – sans screen shots. PPC ads NEVER reveal the domain owner’s intentions, and we can evaluate bad faith without looking at them.
Also, let me stress this: If the complainant is annoyed that competitors’ ads are being shown on a domain resembling the complainant’s mark, then their grievance is properly with EVERYBODY profiting from those ads: (1) Google, (2) the parking provider, and (3) the domain owner.
It’s hypocritical of the first 2 corporations to sidestep responsibility, letting an individual be the fall guy. Complainants single out the domain owner because (A) he’s the smallest and most vulnerable; and sometimes (B) because they want to seize his valuable domain.
Since is 3 parties profit from showing PPC ads for Adidas at Nike.com, it’s reasonable to ask how responsibility, bad faith, and culpability ought to be apportioned between them. Currently it’s this:
0% Google
0% Parking
100% domain owner
Clearly that’s unjust. If there’s bad faith in PPC earnings from parked domains, then this bad faith applies to them all. Punitive measures ought to be applied to Google and the Parking company. They place the ads on the domains, and they profit as a result. Let them suffer the negative consequences of their own bad faith.
From reading your other contributions here and your responses to my own, I’m afraid that I have concluded that you don’t fully understand trademark law.
Your ‘beef’ is with the system and not individual results. The only way your disagreement with the end result in this (and similar cases) can be put right is if the policies are changed so that they wouldn’t end in this sort of outcome.
You simply will not accept that a domain owner is responsible for what appears on pages served on his domains. I and many others have repeatedly tried to show you that you are wrong but you simply will not have it, so it is not worth trying to ‘argue’ with you as you will not accept a blatant fundament of domain rules. You might not like it, you might wish to change the status quo, but that is what it is, it is not my ‘interpretation,’ it is the position – rightly or wrongly.
As I said, you can only really be happy if the policies are changed, because the result in this UDRP does accord with the policies as set out. You might not like that – great – that’s fine, you have every right to dislike the outcome, but when it comes to clearly set out trademark rights that are abused, as they have been, one recourse available to the damaged party is the UDPR/WIPO route. And you and every other person who buys a domain agrees to the conditions that your domain will be subject to this form of arbitration in case of a dispute.
So if you really want it drummed into you, if you don’t agree with that then you should not register domains at all because you cannot do so without agreeing to those terms!
Finally, it is not good enough to say, as you have done, that it is the purchaser of those adverts who is to blame for the infringement by ensuring that an offending advert appears on a page which could give grounds to a successful UDRP.
The trademark holder has no divine right to make his advert appear on your domain. You are the only one who has the ability to make that appear by signing up for advertising which, as you seem to suggest, is unable to be controlled. How does that become SOMEONE ELSE’S problem that YOU cannot control YOUR asset? That is YOUR problem! (Not you personally, but a domain holder.)
Also the advertising company does not have a right or a duty to post adverts on your domain, it will only do so if you have signed up to agree for targeted advertising. You make that conscious decision when you sign up for it.
The only way the advertising company would be liable is if they owned the domain on the page which the ‘offending’ adverts appear when visited.
To use one of your favoured analogies, if you lived in a street with gardens separated by mesh fences.
At house one lives a man who loves eating home-made meat pies but who is forever complaining about his neighbour’s dog (two doors down) getting into his garden.
At house two lives a retired old lady who cooks tasty meat pies in her kitchen and sells them to anyone in her locality who orders them. Her back door is open. The smell of those tasty morsels wafts out and attracts the nostrils of the dog in the garden of house number three.
The smell gets so good that doggy gets in a fit of excitement…he jumps the fence to an extraordinary height he’s never been known to reach before…and suddenly finds himself in the kitchen of old lady at number 2, knocks her over and breaks her arm and leg.
Is the man at house number 1 at any blame for the injuries? After all, he hated that particular dog, he knew it could easily jump the fence, and he was bound to know that it would try to get out with such a pungent stimulus.
Is the old lady at number 2 at blame? She was the one who made the pies, she should have foreseen the dog coming in and sweeping her off her feet.
Of course, it’s neither. It’s those responsible for house #3 – they are ultimately responsible for the security of their assets and liabilities – the injurious dog in this case, or the domain name which is infringing others’ trademarks.
Even if you could prove that the man at #1 only ordered the meat pies to antagonise the dog, the responsibility is 100% the keeper of the dog – the keeper of the domain.
The fence needed to be higher. The domain shouldn’t have infringed.
I apologise for the analogy but nothing else seemed to work. You simply will not listen!
Of course I do not mean “you” rather just referring to someone who finds themselves in that position. I know you are a good man Joe 🙂
Thanks for disagreeing with me. It’s the best way for me to find out if I’m wrong.
TZ.com was taken from Chinese recently.
http://www.udrpsearch.com/naf/1660820
Another case
zt.com
The Zippertubing Company as Complainant
Really?
I think some company belive have right to take all value domain names just because two or 3 characters because some characters define trademark they own
Thanks for all the comments guys
PPC is not new nor is the UDRP and there a thousands of decisions of domains that were really in dispute (as opposed to typo type complaints).
Its the panels that expressed and decided that a parked domain is at more risk than one that is not parked.
If the domain is parked panels generally hold the domain holder responsible for what is on it.
Rightly or wrongly that is the way the panels have come down.
Most parking companies allow a domain holder to block certain terms, words, and topics from a parked page by domain, so you do have control over it, but as one who owned a big portfolio its not realistic to vet 80,000 domain names and decide what should be on a page or not.
So you have to either not park the domain, put up a generic the domain name be for sale type of page, or go with the same generic parking page on all domains that have no particular reference to the domain, which will reduce the revenue derived from parking , or take the risk that you might lose a domain or be forced into a federal court to protect a domain which is going to cost 5 figures in legal.
Exactly! I found Kevin did a good job with his hitfarm landers, very generic.
Right but those type of landers while protecting the domain in a UDRP much better may return 1/10 of what a targeted parked page might
Risk Vs. reward
If the domain is not parked and not directing anywhere, does the Complainant get the domain?
Ill answer that this way, while it certainly is not as bad as displaying ads for competitors for sure…
When you flip a quarter will it land on heads or tails and how many times?
Glenn
Not going anywhere is just slightly better but probably still loses the domain.
If the domain is not parked but going to a holding page much better chance in my opinion that the domain name does not transfer but he still might have lost 2-1.
Not sure what was argued by the domain holder’s attorney.
i did mention that the panel said the answer filed by the domain holder was almost 9,000 words and the limit is 5,000 words.
Did the panel take into account all 9,000 words or just the 1st 5,000 words?
i have no idea
I would say the domain holder should have attacked the TM since it was a design mark and not registered in the US so is a domain holder responsible for somehow checking out every trademark in the world?
However it should be noted the domain holder’s (the company) is not US based but EU based as is the trademark holder which could have been an issue.
Its also worth noting if you Google EHF from the US EVERY result on the 1st page goes to the European Handball Federation or something related to it (Facebook Twitter etc)
Thanks for your responses! It would be nice if first come, first owned unless you are trying to HURT a business that is a TM.
Glenn, you will find that a best use of any domain is just that, use or should I say good faith use. Names for sale has been a defense but in cases where a tm is registered or a right given AFTER the registration.
Also keep this in mind when buying a name you may have reservations about, when you buy a name it is considered “newly registered” and it does not matter if the previous owner had it since say 1992. Some times a company will watch to see if a name changes hands they up to that point had no legitimate claim for…example, registered before their mark, used in good faith etc, clean! Some companies know once sold that name now is “newly registered” so to speak and the new owner could leave room open to make a claim, so be careful! Even just offering it for sale sadly.
There will be times when a name looks highly defendable and as stated, flip a coin, there are flaws with the power and reasons for transfer on many occasions.
Hopefully there will be a more “logical” revision to deciding these cases. I wondered what would happen if 10 companies (with the same three letter TM) filed at the same time, probably go by who had the oldest TM I guess.
Not sure that would work but I am sure the great and mighty panel would find a winner LOL or a great defense for the registrant!
I have seen using the example of multiple tm holders for an acronym/word used as part f a defense but again many other factors come into play.
after a close call on a UDRP, i no longer park any domains. not worth the risk unfortunately.