With all the news yesterday about the ridiculous UDRP decision on ADO.com, I read a comment on DNW.com that I thought was very interesting. The point made by commenter RP may require people to rethink whether all these logos are needed to sell very short names like three and four letter .coms.
As Andrew Allemann pointed out, part of the discussion that motivated these 3 panelists to rule against Francois Carrillo centered on logos.
From the article:
Another bad claim that was accepted by the panel was that the Ado.com logo was similar to that of the bus company. While both logos are red and include the same letters (for obvious reasons), there is little similarity.
The complainant pointed to other supposed instances of logos on Catchy.com that were similar to logos of trademarks. It seems that the complainant cherry-picked these. Even at that, it did a poor job. Consider this “evidence” of similar logos:
Then I read the comment from RP
Seems like one should stay clear of advertising domains for sale in graphical form if other mark holders exist with same word or words. Some of the complainants arguments are similiar to Lanham Act. There was a notable court case back in the 1980s in Texas, Two Pesos vs. Taco Cabana that it reminds me of. Don’t agree with WIPO panel here though.
This is an excellent point in my opinion. Because this is a game, never kid yourself it’s corporations and celebrities vs domain investors. It has been going on since the beginning of the commercial Internet. This case is getting a lot of buzz and will get a lot more if Francois takes this to court to save his asset.
Other companies and their counsel will look for any nook or cranny they can find, someone will say, “hmmm ADO.com lost in part due to the logo, we have found the domain we are targeting has a similar situation.”
There are plenty of 3L and 4L.com listed at places like BrandBucket.com and Namerific.com.
You don’t need a logo to sell these names and it might just make sense to discontinue that practice.
Now I know many will push back with screw these panelists and companies, if I want a logo I will have a logo. I just don’t think you want to give these sharks any more openings than you need to.
Leave your comment.
Correct me if I am wrong but the Complainant in this “ADO” UDRP did NOT have any Registered US trademark at the time that they issued the UDRP ?. From my looking they had 2 expired ones and had Filed for US trademarks at around the dates of the UDRP ?.
Unless the buyers are “window shopping” as opposed to wanting something quite specific I don’t think logos would help a sale.
Yes, thats true, but some names like his “uddu.com” are more of a window shop name anyway.
RIP logos.
Okay but does the logo not have to be registered as a stylised mark and in use before the date of domain registration?
Registration is only evidence of underlying marks, Its the use that is important.
Stop paying so much for 3ls, maybe next time put .com
On your logo, and choose diff colours
Seems the panel could not see past red and white
He better file suit, but if he does not, then his while Catchy.com brand is gone.
Raymond, I have experience in this arena on both sides. First as an independant website operator and then overseeing digital marketing and IP legal for multi-billion ecommerce company. Here is a follow up I posted on DNW:
“Reading through all these comments I’m surprised to see the ignorance. ADO is a big company. The domain owner put the domain in logo form not dissimilar from TM version offering it for sale.
In 2000 I got a C&D for using a graphical logo on a website. It used similiar colors to a TM holder and shared a word. Nothing came about it because I changed the logo, but I went to a high priced lawyer and understood both sides of the fence.
A mistake was made by using the name in graphical form without doing proper due diligence. Lawyers jump all over that. Decision sucked. Potentially couldve been avoided. Live and learn.”
Thanks for highlighting my comment. Im not trying to defend the decision. Im merely stating that its very possible the logo was a primary factor in the loss.
Thanks RP
I don’t typically read through UDRPs but this seemed akward on the surface. Complaintaint had good overall strategy and solid legal team. Zak’s response seeemed spot on as well.
That leaves it in the hands of the court where laymen who don’t understand the difference in pricing between a 3L and 4L .com have to make a decision. Domain owners should not put themselves in this position and should do proper due diligence. The judges are looking at “confusingly similar” with the graphical presentation, similiar to Lanham Act.
The cards are already stacked against domain owners. Need to stay away from anything that could be construed as provocative to a brand if you own their TM as a domain regardless of personal beliefs and logic. IMO.
Troubling decision for sure. I will still renew my DomainLogos.com even though! 🙂 Hope he can recover the domain as it is theft pure and simple regardless of the red 3 letters .. the font is much different.
Excuse me for asking a question that most of you probably know the answer. I’ve never been involved in a UDRP.
After a decision like this, what happens? Will the registry automatically transfer the domain Ado.com to the winner/complainant of the proceeding? Will the complainant have to, at least, pay the amount that the respondent paid for the domain. I understand it was 27 K? Can the respondent appeal the decision?
Again, excuse me for my ignorance in these matters.
In my UDRP case the complainant’s outside counsel had an account at the same registrar. As soon as the decision was issued, I pushed the domain into that account, without waiting to see whether the registrar would lock up the domain. There was no reimbursement of expenses.
Why US not ban and fuck this assholes? 2-3-4 l. domains is locked for for any kind wipo and udrp decisions.
Not brag, but my comment is that I would have been cautious about this very kind of possibility already and would not use a logo or at least have done a search.
My other comment is how appalling and appallingly perverse this decision was, as I noted over at DNW. Truly shocking stuff expressed with it.
Not to*
So I basically agree with Raymond here.
Thanks John
food for thought… thanks to RP and thedomains.
P.S. I saw Shane Cultra taking a shot at all other bloggers in his post this morning that only DNW posts non polls. Troll much?
I don’t read his blog so I couldn’t tell you. Quite confident in what we do here, readership, social engagement and advertisers are all very good. Thanks for the comment.
This is the best blog in the biz, cheers to you and Michael.
Interesting discussion. I think it’s unfortunate this kind of thing gets discussed after a loss, but better late than never.
Legal process is IMHO broken, but since it is the legal process, and domainers who are not also lawyers are innovators / entrepreneurs, don’t domainers have better opportunities by changing how we operate than arguing about legal justice?
If you’re not a lawyer, the absolute best strategy is to avoid attracting attention of opposing lawyers. ANYTHING you do woth a domain is bait for opposing lawyers.
I like to think of life like a cartoon caveman…exit the cave to get food = risk of getting eaten by bigger predators. But “bitch gotta eat”,am I right?
Your very existence as a domain registrant is an art of risk management. Stay in the cave and you’ll die of starvation. Even if you had a way to somehow kill all the predators, more would come to fill the void.
The only counter balance is the similar risk that exists for the predators..all except the King of the Jungle or perhaps the polar bear, are also bait for other predators. Hence it’s a dog-eat-dog world, lol.
Think it through and you come to…civilization. Capitalism, communism, socialism, technology, weaponry….sometimes fortunate climate change that kills all the dinosaurs. And arms races…which is why some up here spend large on great domain lawyers, lol. Some believe there is a “nuclear option”, and think there is such a thing as a nuclear deterrent.
So…if YOU have valuable domains, caveman, are you alone in the wilderness, or have you formed a society? how does your society support you in your necessary risk-taking (feeding your family) and avoiding predators? What technology have you developed to fight? What efforts do you expend?
I remember when John B. said he was in a room full of “all the wrong people”. Domainers operated outside of civil society, and were comfortable doing so. That was back when he was one of few lawyers with sharpened sticks and fire….all the rest were still limited to rocks and clubs. That was what…14 years ago maybe?
Seems to me the problem noted (arguably confusingly similar logo suggests mal intent), supported a very weak claim that succeeded not honestly on merit but on circumstances : this particular panel, a short generic domain, a large, professional corporation, an inadequate defense effort (by definition), etc.
In other words, they won.
Words of wisdom Raymond, don’t confuse anyone with a similar or even vaguely close known “art” in a domainers logo who is hoping to sell. It reeks of effort with dubious intentions.
If the URL alone is good enough, that is what a buyer is seeking, not the “art” part.
I wasn’t confusing anything and have always agreed the name sells the name not the art.