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JULY 29, 2015 BY
eWomenNetwork, Inc. lost its bid to grab the 18 year old domain eWomen.com in a UDRP
The three member panel of the Honorable Richard DiSalle, the Honorable Karl V. Fink, (Ret.) and The Honourable Neil Anthony Brown found the 18 year old domain was registered in good faith by the registrant but refused to find Reverse Domain Name Hijacking (RDNH)
Here are the highlights:
Complainant has registered the EWOMEN mark in stylized form with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,257,345, first use in commerce Dec. 30, 2000, filed Apr. 24, 2012, registered Dec. 11, 2012)
Complainant also asserts unregistered common law rights in the EWOMEN stylized mark dating back to at least December 30, 2000.
Complainant is a United States company engaged in the provision of marketing services for promoting the goods and services of women-owned businesses via the Internet.
Complainant has trademark rights in the EWOMEN mark in stylized form registered by Complainant with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,257,345, first use in commerce Dec. 30, 2000, filed Apr. 24, 2012, registered Dec. 11, 2012)( “the EWOMEN mark”).
The disputed domain name was first registered on April 18,1997 and was acquired by Respondent in May 2009 after the original registration had lapsed
The domain name has been used by Respondent to display pay-per-click hyperlinks to subjects relating to women, such as “women” and “ older women” and to other links of a more generalized nature, such as “school” and “ career”.
DISCUSSION
Rights or Legitimate Interests
Complainant relies on several grounds to show bad faith registration and use of the domain name. The Panel has given careful consideration to all of those grounds and the submissions and evidence said to be in their support.
The Panel readily acknowledges that they raise some serious questions.
In particular, there are the submissions that Respondent has displayed bad faith under Policy ¶ 4(b)(ii) by engaging in a pattern of bad faith registrations, that Respondent’s use of the domain name is diverting Internet users away who were originally seeking Complainant’s website, that Respondent has attempted to profit in bad faith from the confusing similarity associated with the domain name and Complainant’s EWOMEN mark and that Respondent must have had constructive and/or actual notice of Complainant’s rights in the “eWomen” design mark prior to registration of the domain name because of Complainant’s widespread use of the mark and its trademark registrations with the USPTO.
However, Respondent makes some cogent arguments to the effect that it did not and, in effect, could not have registered the domain name in bad faith because it acquired the domain name before Complainant registered its EWOMEN trademark. It is here that the major problem with Complainant’s case arises, which like other aspects of this jurisdiction, comes about because of the terms of the UDRP itself and the fact that panels are bound by those terms and the proof they require. In that regard it is clear and has been stated many times that to succeed in the summary proceedings provided by the UDRP a complainant trademark owner must show that the domain name was registered in bad faith and used in bad faith.
Respondent argues that it did not register the domain name in bad faith because it could not have had any animus directed at a trademark that had not been registered or filed for. The substance of Respondent’s case on this issue is put in the following way in its summary of argument: “Moreover, Complainant did not file its trademark until April, 2012 and did not receive its trademark until December, 2012 – over three (3) years after Respondent purchased the Disputed Domain.” Respondent verified those matters in its Attached Ex. 1 (declaration of Kurt Richter affirming the May 2009 registration). It will be recalled that the domain name was actually registered in 1997 and that Respondent bought it in 2009 after the registration had expired. Neither party gave in evidence the precise date when Respondent acquired the domain name, but it seems to be common ground that it was in May 2009. What is also clear beyond doubt is that three years later Complainant applied for its trademark for EWOMEN on April 24, 2012 and that it was registered on December 11, 2012.
The Panel notes that it makes no judgment on whether, at any time after the registration of the domain name, Respondent engaged in bad faith use.
Nor is it necessary to make a specific ruling on Respondent’s further argument under this heading, namely that as EWOMEN is clearly a trademark made up of an essentially generic expression, it was entitled to register the domain name and did so in good faith.
LACHES
Respondent argues that Complainant was aware of Respondent and the domain name for at least six (6) years and failed to initiate an action under the UDRP. Respondent therefore maintains that the Complaint is barred by the doctrine of laches. Complainant argues that laches is inappropriate in UDRP proceedings and other opinions have been expressed that support Complainant’s view. Still other opinions have been expressed to the effect that delay in instituting proceedings may be taken into account as are all other facts established by evidence.
The issue may be somewhat academic in the present case, as Complainant has not succeeded on the merits.
Accordingly, the Panel feels that it is not necessary to say any more than to adopt the observations of the three person panel in the recent decision in E-Renter USA Ltd. v. Domain Hostmaster, Customer lD. 55391430909834, Whols Privacy Services Pty. Ltd. / Domain Administrator, Vertical Axis lnc, D2015-0784 (WIPO July 10, 2015), as the circumstances were similar to those in the present case. The panel said:
“The Respondent, in its Response also raises the question of laches. The Panel notes that the Domain Name has been registered for 12 years and for 11 of those years the Complainant has been an active business. This Panel’s view is that delay in filing a complaint is not an automatic bar to a complaint, but nor can it be ignored, for all the facts must be taken into account in all UDRP proceedings and a decision made in the light of all the circumstances of the individual case. ln the present case, the Panel has found that the Respondent has not registered the Domain Name in bad faith and the Complainant therefore cannot succeed on the merits. ln these circumstances it is not necessary to make a finding as to whether the Complainant is barred from commencing or succeeding in the proceeding under the ground of Laches.”
Source: thedomains.com
BY
E-Renter USA Ltd. of Bellingham, Washington, represented by Brownlie Evans Wolf & Lee, LLP, was just found guilty of Reverse Domain Name Hijacking (RDNH) on the domain name erenter.com which is owned by Vertical Axis Inc.and was represented by ESQwire.com
The three member UDRP panel of Nicholas Smith, Debra J. Stanek and The Hon Neil Brown Q.C. found that since the domain name registrations are first come, first served and this erenter.com was registered in 2003 and the corporation that owns e-renter.com did not start using the domain r-renter.com until 2004. Moreover e-renter.com did not apply for a trademark until 8 years later in 2011.
The panel went on to find Reverse Domain Name Hijacking writing”:
“”In the view of the Panel this is a Complaint which should never have been launched.
The Complainant knew that the Domain Name was registered before the Complainant came into existence and close to 8 years before it acquired any registered rights in the E-RENTER Mark.
The Complainant made no attempt to demonstrate the existence of any rights prior to the registration of the Domain Name, nor any basis on which the Respondent could have been aware of the Complainant at the time of registration of the Domain Name.”
Here are the highlights:
E-Renter owns the domain name E-Renter.com which is a tenant screening and renter background check service.
The Complainant estimates that it has over 200,000 clients who have used the website and its services over the years with over $1M
in revenue. The Complainant’s domain name was registered by the founder of the Complainant, Guy Seeklus, on April 8, 1999 with the Complainant being incorporated on July 10, 2003.
The Complainant owns United States registered trademark No. 4028016 for the word mark E-RENTER (the “E-RENTER Mark”).
The E-RENTER Mark was first registered on September 20, 2011 in for goods in class 45, including providing background screening services, tenant and pre-employment screening services, and for providing a website for performing such screenings. The first use of the E-RENTER Mark was stated to be June 2004 and the Complainant has operated since that date.
The Domain Name was registered by the Respondent or a predecessor in title on March 19, 2003.
It currently resolves to a website (the “Respondent’s Website”), which is a parking page with a number of what appear to be “pay-per-click” links including links for various types of rental services, including a renter background check and insurance quotes.
The Respondent’s website also contains the statement “This domain is listed at Mark.com” with large green buttons displaying the words “BUY IT” and “RENT IT”. The Respondent’s Website does not refer to the Complainant in any way.
“The Panel notes that the system of domain name registration is, in general terms, a “first come, first served system” and, absent pre-existing rights which may be applicable to impugn a registration, the first person in time to register a domain name would normally be entitled to use the domain name for any legitimate purpose it wishes.
There is no evidence at all before the Panel to suggest that at the time the Domain Name was first registered (in March 2003), the Respondent registered it in contemplation of the Complainant.
While the Complainant’s founder may have registered the domain name in 1999, the Complainant itself did not exist and there was no apparent use of the E-RENTER Mark prior to June 2004. Accordingly there is no material before the Panel which would lead to a conclusion that the Respondent lacks a right or legitimate interest in the Domain Name.
During the 12 years the Domain Name has been held by the Respondent, the only evidence of any apparent use of the Domain Name is for a pay-per-click advertising service, not for any business that offers goods or services referable to the Domain Name.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0″), states in response to the question “Do parking and landing pages or pay-per-click links generate rights or legitimate interests in the disputed domain name?” that:
“Panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a ‘bona fide offering of goods or services’ [see also paragraph 3.8 below] or from ‘legitimate noncommercial or fair use’ of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder. As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value (a result that PPC page operators can achieve by suppressing PPC advertising related to the trademark value of the word or phrase). By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion.”
The Panel notes that the links displayed on the Respondent’s Website appear to relate primarily to renting and rental background checks.
While this is the business of the Complainant, the links do not refer to the Complainant generally and appear to be related to the generic meaning of the Domain Name (namely “e” + “renter”.
By reason of the lack of obvious reference to the Complainant in the Respondent’s Website, and the fact that the Domain Name was registered and has been used for the same purpose since prior to the Complainant’s acquisition of rights, the Panel finds that the Complainant has not established that the Respondent lacks rights and legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
The Domain Name was registered in March 2003. The Complainant was incorporated in July 2003 and started using the E-RENTER Mark in 2004. The Complainant registered the E-RENTER Mark in 2011. While the founder of the Complainant had registered the domain name in 1999 there is no evidence of use of this domain name prior to March 2003. Even taking the Complainant’s evidence at its highest, there is no possibility that the Respondent, when it registered the Domain Name in 2003, could have been aware of the Complainant or its rights in the E-RENTER Mark: The Complainant simply did not exist. For this reason, the Domain Name was not registered in bad faith.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0″), states in response to the question “Can bad faith be found if the disputed domain name was registered before the trademark was registered or before unregistered trademark rights were acquired?” that:
“Consensus view: Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date [see further paragraph 1.4 above], when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right.”
While there have been cases where bad faith has been found when the registration took place prior to the acquisition of trademark rights, such cases involve situations where, at the time of registration the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights. This is not such a matter. The Complainant did not exist at the time the Respondent acquired the Domain Name and there is no evidence that the Complainant’s founder was operating a website from , indeed Complainant’s own evidence suggests that any use of E-RENTER as a trade mark commenced in 2004.
In certain cases UDRP panels have inferred that a domain name was registered in bad faith if there is no explanation, or other logical reason for the registration of the domain name other than to take account of any confusion with the complainant. Such cases often arise if the complainant’s trademark is a coined word. This is not such a case. The Respondent has given evidence of its reason for registering the Domain Name, namely because of its inherent value as a common dictionary word with the letter “e” added as a prefix. The Respondent’s evidence is supported by the fact that the Respondent has registered other similar domain names.
The Complainant has argued that bad faith registration and use can be found by the fact that the Respondent is seeking to sell the Domain Name. This argument is unpersuasive to this Panel. The Complainant’s submission that an offer to sell a domain name for valuable consideration in excess of the documented out-of-pocket costs is evidence that the domain name was registered and used in bad faith is an incorrect reading of the Policy.
Paragraph 4(b)(i) of the Policy specifically refers to the Respondent acquiring the Domain Name primarily for the purpose of selling the Domain Name to the Complainant or a competitor of the Complainant for valuable consideration.
The Complainant fails to explain how the Respondent could acquire the Domain Name for this purpose when the Complainant did not exist at the time of the acquisition and had no mark rights.
The mere fact that the Respondent has chosen offer to sell the Domain Name for valuable consideration is not by itself evidence that the Respondent acquired the Domain Name for the purpose of selling the Domain Name to the Complainant or a competitor of the Complainant for valuable consideration.
As such the Complainant has not satisfied its burden of showing that circumstances that bring the case within the provisions of paragraph 4(b) of the Policy exist, or other facts showing that the Respondent registered the Domain Name in bad faith.
D. Laches
The Respondent, in its Response also raises the question of laches. The Panel notes that the Domain Name has been registered for 12 years and for 11 of those years the Complainant has been an active business.
This Panel’s view is that delay in filing a complaint is not an automatic bar to a complaint, but nor can it be ignored, for all the facts must be taken into account in all UDRP proceedings and a decision made in the light of all the circumstances of the individual case.
In the present case, the Panel has found that the Respondent has not registered the Domain Name in bad faith and the Complainant therefore cannot succeed on the merits. In these circumstances it is not necessary to make a finding as to whether the Complainant is barred from commencing or succeeding in the proceeding under the ground of Laches.
E. Reverse Domain Name Hijacking
In the view of the Panel this is a Complaint which should never have been launched.
The Complainant knew that the Domain Name was registered before the Complainant came into existence and close to 8 years before it acquired any registered rights in the E-RENTER Mark.
The Complainant made no attempt to demonstrate the existence of any rights prior to the registration of the Domain Name, nor any basis on which the Respondent could have been aware of the Complainant at the time of registration of the Domain Name.
Given the nature of the Policy and previously decided cases that the requirement of proving registration and use in bad faith is conjunctive the Complainant’s submissions that the Respondent registered the Domain Name in bad faith were arguments that had no reasonable prospects of success.
The Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
7. Decision
For the foregoing reasons, the Complaint is denied.
By Michael Berkens - TheDomains.com
Here is a shocker for you, Latin American Telecom LLC (LTC) has beaten Google to the new gTLD .Tube Donuts was the other applicant for the new domain extension .Tube, has now also withdrawn its application.
LTC is represented by Esqwire.com and is run by Rami Schwartz which also owns and operates Mexico.com.
It’s pretty shocking (at least to me) that Google would have let .Tube go to another party who will immediately be a competitor to Google’s YouTube.com and Google’s new gTLD .YouTube.
We have previously questioned whether Google has lost a lot of interest in the whole new gTLD program, and with the exception of .App, Google has lost all new gTLD contention sets since we wrote that post back a month ago.
Last week its was reported that Google said it would not “compete aggressively” with Godaddy on the registrar front.
There is a new gTLD for .video which is owned by Rightside which is in Sunrise..Webcam is a new gTLD owned by Famous Four which has already launched.
There will also be a .Cam but its still in contention.
The ccTLD .TV which has become ranked by Google as a gTLD, would seem to be the other extension most at risk by .Tube.
.Tube was scheduled to go to an ICANN Last Resort Auction later this month
Here is what LTC had to say about its plans for .Tube according to its ICANN application.
“The purpose of the .TUBE gTLD is to:
• Provide all those interested, world-wide, in disseminating or seeking information, whether non-commercial or commercial, about current issues, news, culture, lifestyle, entertainment, sports or any other topic with a convenient and recognizable domain name that associates them and⁄or their information with particular topics presented primarily through a video format.
• Provide all those interested, world-wide, in selling or purchasing goods or services of any kind, or providing information, with a convenient and recognizable domain name that associates them and⁄or their goods or services with particular topics or products of interest presented primarily through a video format.
• Provide a top-level domain name that provides an identifiable means of communicating with people, organizations, businesses, and likeminded individuals that associate or affiliate with particular topics of interest through an video and electronic format.
• Provide the world-wide Internet-using public with an additional choice of available descriptive domain names at competitive prices.
We have witnessed how the sharing of texts and pictures in real time has changed the world by altering and improving the flow of information.
We see the potential for .TUBE to participate by offering a gTLD that is highly intuitive and indicative of the sharing of content in video and visual formats so events around the world can not only be written and portrayed, but also captured and viewed as they happen.
.TUBE can play a significant role in providing individuals, communities, businesses and organizations with a dedicated domain name and platform to disseminate and receive visual and textual content and information.
At present, no specific .TUBE domain name, or useful top-level alternative domain name, exists for the people, organizations and businesses that seek to associate themselves or identify with a topics of interest and online communities through electronic and video format, or people, organizations and business that want to communicate with them.
Those wanting a domain name that indicates some level of association with or recognition of video contents could seek a second level domain name such as “***contentsinvideoformat.com,” or “***tube.com” or “***video.net,” but such domain (or similar names) are not readily available under the limited number of existing gTLDs, and more importantly only provide a secondary (at best) or weak (at worst) relationship between the domain name and contents in video format, which we believe is the primary goal of the registrant of particular topical video format -related names.
From a competitive perspective, registrants that want a domain name that effectively and efficiently shows an association with a particular topic, or registrants that want a domain name that allows them to identifiably communicate with people who associate or identify with particular topic through a video format face a domain name marketplace that provides them with few if any options for their purposes.
The .TUBE top-level domain will resolve this problem by providing registrants with an efficient, effective, prominent, instantly understood way of showing their association with the promotion of video format and channels, and provide those registrants who desire it a domain that that can effectively communicate information to such Internet users in an identifiable way, while at the same time providing competition with the existing TLDs and new gTLDs that will be approved by ICANN, thereby increasing consumer choice.
The goal of the .TUBE top-level domain is to establish itself as the recognized choice for registrants who want to market and promote themselves and their websites to, and reach, the Internet-using public, for business, political, personal or any other purpose, through an association with specialized topics or communities of interest promoted in video format; and, as the recognized top level domain name for Internet consumers to look for to know which people, businesses, information sources or other online resource associate themselves with particular topics or communities of interest.
We believe that the .TUBE top-level domain will add significantly to competition and differentiation in the top-level domain space, both for registrants and Internet consumers.
With respect to competition, registrants are presently extremely limited in their choice of domain names that allow them to efficiently and effectively associate themselves with particular topical video related sites and communities.
The availability of useful, effective, straight-forward domain names on existing top-level domains, such as .com, .net and .org, are few and far between, or may be for sale at prices that are out of reach for most. .TUBE will allow registrants to obtain useful, effective, straight-forward domain names rather than be forced to purchase, for example, their fifth, sixth or even later choice .com or .net name, which may well barely relate to the registrant’s purpose or use of the domain name and⁄or may be confusingly similar with numerous other .com or .net domain names.””
The Asian Domain Name Dispute Resolution Centre (Kuala Lumpur Office) has returned what we believe is that providers first Reverse Domain Name Hijacking ruling on the domain name AsiaCharts.com, and its on the exact type of case that we have been complaining about, one in which the complainant did not have a trademark.
Even worse the domain name was registered 4 years before the Complainant was even formed.
The three member Panel of Mr.D.Saravanan, Mr.Michael Soo and Honorable Neil Brown QC found that ASIA Charts Pte. Ltd., of Singapore, having an address at 111, North Bridge Road, # 13-04, Peninsula Plaza, Singapore 179098, represented by its Lim Chee Leong was guilty of Reverse Domain Hijacking.
The domain holder Neuronet Systems Pte. Ltd., was represented by ESQwire.com, P.C., Ari Goldberger and Jason Schaeffer.
The opinion has some of the best and strongest Reverse Domain Name Hijacking language that we have ever read, which is why we titled our post the way we did.
Great job by the team at ESQwire.com and the three member panel who took a lot of time to issue a very lengthy opinion that you should all read
The domain name asiacharts.com was registered in 2002.
The Complaintant was first incorporated in June 1, 2006.
Here are the relevant facts and findings by the three member panel”
Respondent’s predecessor, Neuronet Systems was incorporated in Singapore on October 13, 1997 as a sole-proprietorship and superseded by Neuronet Systems Pte Ltd. on 31st May 2004.
Since 1997 Respondent has provided “end-of-Day” data services (“EOD Services”) to end users and companies worldwide. Since May, 1999 Respondent has operated online at , and continues to be a bona fide provider of data and charting to the present.
Respondent registered the domain name on April 9, 2002 and has continually maintained ownership until the present.
Between 2002 and 2006 Respondent used the Disputed Domain name in connection with Neuronet Systems to promote its “end-of-day” data services.
Complainant was formed on June 1st, 2006.
In June, 2006 Complainant approached Respondent with an interest in using the Disputed Domain.
One of the Complainant’s founders, Benny Yeo entered into an agreement where Respondent would be the exclusive EOD Services Provider to Complainant. In exchange for access to the Domain, Complainant agreed to allow Respondent to be its exclusive EOD Services provider and the parties used the Disputed Domain to promote their mutual business interests.
During the parties’ agreement, Respondent also passed through the nine (9) year registration cost of $73.13, which was paid by Complainant.
Between June 1, 2006 and November 15, 2013, the parties worked together with Complainant honoring its deal to utilize Respondent as the exclusive EOD provider of market data and Respondent pointing the DNS as instructed by Complainant.
Complainant’s last request for a DNS change was made of December 18, 2013.
On or around November 15, 2013, Benny Yeo left Complainant, and as a result of failed negotiations Complainant announced they would no longer be using Respondent as the exclusive EOD provider.
After Complainant announced its change in status, between December 2013 and February 2014, the parties exchanged correspondence regarding a potential change in service terms. Complainant finally ceased using Respondent as its EOD Services provider.
On 4 Nov, 2013 Respondent advised Complainant that it was in breach of the agreement and received a negative reply.
On 1 Jun, 2014, after Complainant failed to remedy its breach of the agreement, Respondent repointed the URL to neuronetsys.com.
At no time did Respondent agree to sell the Disputed Domain to Complainant, and Complainant did not offer to purchase the Disputed Domain from Respondent.
At no time did Complainant ever have any ownership of the Disputed Domain. Respondent did not register the Disputed Domain with Complainant’s trademark in mind and had no knowledge of Complainant, its web site, its business name or trademark when it registered the Disputed Domain.
Complainant did not exist and its trademark did not exist when Respondent registered the Disputed Domain in 2002.
Indeed, Complainant was not formed until four (4) years after Respondent registered and began using the Disputed Domain.
At all times Respondent has used and will continue to use the Disputed Domain in good faith and in connection with its common descriptive meaning.
The Complainant has no enforceable rights to a Trademark identical or confusingly similar to the Disputed Domain:
(Complainant’s purported rights rest on its corporate formation documents, a logo design that incorporates the words “Asia Charts,” and a breached “limited lease agreement” between the parties wherein Respondent pointed the DNS to Complainant while the parties worked together using Respondent as the exclusive EOD Services Provider.
Complainant does not hold a registered Trademark and its purported trademark rights in a generic or descriptive term is tenuous at best.
Accordingly, there is simply no evidence that Complainant has any rights to satisfy this Prong of the Policy. Therefore, Complainant’s must fail.
Respondent’s registration and use of a common word Domain establishes Respondent’s rights and a legitimate interest in the disputed Domain Name:
The registration of domain names, like AsiaCharts.com, that incorporate common descriptive dictionary words, subject to third party use, ipso facto establishes the Respondent’s legitimate interest, provided there is no evidence the respondent targeted the complainant’s trademark.
Indeed, it is settled that the registration of domain names that contain common words are permissible on a first- come, first served basis, and such registration establishes the Respondent’s legitimate interest, provided the domain was not registered with a trademark in mind
The principle of “first come first served” still applies to adjudicate the conflict between a domain name and a later registered trademark and there is simply no evidence here that would provide Complainant with superior rights to the Disputed Domain.
In the instant matter, there is no evidence that the Disputed Domain was registered with Complainant’s trademark in mind because of three (3) undisputed facts, inter-alia,
1)Complainant did not exist in 2002 when Respondent registered the disputed Domain
2)Complainant has never owned or had ownership rights to the disputed Domain;
3)Complainant holds no trademark for generic ASIA CHARTS.
Accordingly, there is no evidence that respondent targeted Complainant in any manner. To the contrary, it is simple implausible that respondent targeted Complainant rather than consciously decided to profit off of a combination of common words used in the English language.
Reverse Domain Name Hijacking
(a) There is absolutely no basis for this claim and Complainant should have known that before filing its Complaint.
It certainly had an obligation to understand the rules and present a valid claim.
Complainant and its counsel are sophisticated and certainly understand the importance of knowing the law and facts before proceeding.
The Complaint is woefully devoid of any facts or information.
Indeed, Complainant has not presented any trademark registration because none exists.
Under the first prong of the Policy, the Complainant cannot show trademark rights just because its corporate name includes “Asia Charts.”
Moreover, the fact that the parties once had an “agreement” to partner on the use of the disputed Domain and for Respondent to point the DNS in exchange for Complainant’s use of Respondent as the exclusive EOD Services provider hardly establishes Complainant’s “rights” to the disputed Domain.
Absent agreement to transfer ownership of the disputed Domain, there is simply no merit to this claim.
On the second two prongs of the Policy the Complainant is also completely devoid of merit on its face, and warrants a finding of reverse domain name hijacking to deter future claims and abuses of the system.
Complainant knew when it filed the Complaint that it could not prove at least 2, if not all 3 of the elements to prevail.
Complainant undoubtedly filed this UDRP to hijack the disputed Domain from its rightful owner and gain exclusive use of an inherently valuable common term and combination of two English words. Even a cursory review of the UDRP and UDRP decisions would have alerted Complainant that is case was devoid of merit. The fact that the Complaint shows no evidence of wrongdoing is itself proof of bad faith of Complainant in filing this action.
(Reverse Domain Name Hijacking is defined under the UDRP Rules as ‘using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name’ … WIPO panels have found Reverse Domain Name Hijacking in circumstances including where: the complainant in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP.” Jvier Zetter Casillas v. Vertical Axis, Inc. D2014-0400 (WIPO Jun. 6, 2014). Under these circumstances, this is an abuse of the Policy and warrants a finding of reverse domain hijacking. See Planate Management Group LLC v. Vertical Axis, Inc. D2011-1535 (Dec. 6, 2011) (stating, [i]n the circumstances, the Complainant clearly knew or should have known at the time it filed the Complaint that it could not prove one of the essential elements required by the Policy, i.e. bad faith registration); Vortal Group, Inc. v. Digital Transp., FA 222968 (NAF Mar. 9, 2004) (The claim for reverse domain name hijacking is granted, because filing a Complaint which one knows or should have known would fail based upon the admissions of Complainant can be interpreted as harassing per se and should be discouraged.’). The Realty Alliance v. Vertical Axis, Inc., No. 296997 (NAF Feb. 12, 2010), CNRV, Inc. v. Vertical Axis, Inc. No. 1300901 (NAF May 3, 2010) (“Complainant must have known it could not demonstrate bad faith registration and use”).
Complainant or its counsel should have known before it filed this case that the basic elements that must be proved were missing from this claim and it should not have been filed. Instead, an extremely valuable generic domain name that was originally registered in 2002 by respondent is subject to a dubious claim because the parties have ceased their relationship. This action placed respondent’s valuable asset at risk, required respondent to incur legal fees and is waste of the Panel and the Forum’s valuable resources.
Source: TheDomains.com - Michael Berkens
By Michael Berkens - TheDomains.com
TeleSign Corporation, of California was just found guilty of Reverse Domain Name Hijacking (RDNH) on the domain name PhoneId.com which is owned by Vertical Axis Inc, which was represented as usual by Esqwire.com
According to my records its the 11th win in row for Esqwire.com and the 5th finding of Reverse Domain Name Hijacking.
The three member panel of Paul M. DeCicco, Esq., Diane Thilly Cabell, Esq., and the Honorable Charles K. McCotter, Jr. (Ret.)
found while the complainant owned the very recently registered trademark for the term Phone ID registered in the USPTO on Feb. 19, 2013, such registration had no effect on the domain holder Vertical Axis, which registered the domain name 7 years ago on September 7, 2005.
As to the issue of RDNH the panel said:
“Complainant has engaged in reverse domain name hijacking by initiating this dispute.
Complainant is attempting to deprive Respondent, the registered holder of the phoneid.com domain name, of its rights to use the disputed domain name. Complainant knew or should have known that it would be unable to prove at least two of the elements needed to prevail. Thus, the Panel finds that reverse domain name hijacking has occurred.”
““The registration of domain names that contain common words are permissible on a first-come, first served basis, and such registration establishes the Respondent’s legitimate interest, provided the domain was not registered with a trademark in mind.”
“Respondent’s use of the phoneid.com domain name in connection with its descriptive meaning is a legitimate interest. Respondent’s legitimate interest is bolstered by the fact that it uses the disputed domain name to display descriptive advertising links to items related to “phones.” Respondent’s use of the disputed domain name in connection with posting of descriptive links is a bona fide offering of goods or services.”
The Complainant has not shown that the disputed domain name was registered and is being used in bad faith.
The fact that Complainant’s trademark post-dates Respondent’s registration of the disputed domain name by seven (7) years precludes a finding of bad faith registration.
It is not bad faith to offer a descriptive domain name for sale where the domain name is registered for its inherent value as a common word and not for the purpose of targeting a trademark.
Congrats to the team at Esqwire.com you are rocking
By Michael Berkens - TheDomains.com
The domain holder P.A. Gordon represented by Ari Goldberger of Esqwire.com, New Jersey, USA.The three member panel of Paul M. DeCicco, Esq., The Honourable Neil Anthony Brown, QC, James A. Carmody, Esq found that LML which had a trademark since 2008 attempt to grab the domain name that was registered 7 years earlier was a clear case of RDNH.
Here are the highlights:
Complainant, LML Investments LLC, has been using the COUNTRY GIRL mark in commerce since 2004 in connection with the sale of clothing, accessories, paper goods etc, and has a valid registration with the United States Patent and Trademark Office (“USPTO”) for the COUNTRY GIRL mark (Reg. No. 3,443,872, registered June 10, 2008).
Respondent’s registration of the disputed domain name predates Complainant’s registration of the Country Girl mark by 7 years.
Respondent has used the disputed domain name in connection with email services, search services, dating services, music, and country themed items. Respondent’s use of the disputed domain name in connection with its descriptive meaning establishes Respondent’s rights and interests in the disputed domain name.
The disputed domain name has been listed as for sale by auction and that the starting bid for the disputed domain name is $100,000.00.
Complainant asserts that this bid amount is wildly in excess of Respondent’s out-of-pocket costs associated with registering the domain.
However, since the Panel finds that Respondent has rights in the domain name at issue which far predate and are superior in some respects to those of Complainant, it is clear that Respondent is legally free to offer the domain for sale at any price it wishes.
Complainant’s argument in this regard is completely frivolous and clearly offered in bad faith.
Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii).
Respondent has rights or legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Respondent could not have registered the domain name to target Complainant’s mark as Complainant did not register the Country Girl mark for 7 years after Respondent registered the disputed domain name.
As such, the Panel finds no evidence of bad faith under Policy
Respondent’s registration of the disputed domain name in 1998 predates Complainant’s registration of the Country Girl mark by seven years.
This predation precludes any serious claim of registering the disputed domain name in bad faith as Complainant’s rights in the Country Girl mark did not even exist when Respondent registered the disputed domain name.
Therefore, there is no evidence of bad faith under Policy ¶ 4(a)(iii).
Laches
Respondent asserts that Complainant should be barred by the Doctrine of Laches as the disputed domain name was registered 16 years ago, and Complainant gave no explanation for why it waited so long to initiate this Complaint.
Respondent contends that the delay of 16 years to take action rises to the level of prejudicial and unreasonable delay.
Therefore, the Panel may consider the doctrine of laches as evidence for Respondent in its considerations of the elements of the Policy.
However, the Panel unanimously determined that it was not necessary to consider laches as a potential defense in this case despite the extreme length of time that has expired since the institution of these proceedings. Other profound defects in Complainant’s case, as noted above, have made that unnecessary.
Reverse Domain Name Hijacking
The Panel finds that Complainant and its counsel have acted inappropriately and in reverse domain name hijacking by initiating this dispute and continuing with it following the delivery of the Response by Respondent. Complainant is attempting to deprive Respondent, the rightful, registered holder of the disputed domain name, of its rights to use the disputed domain name.
Complainant and its counsel should have known that they would be unable to prove at least two of the elements needed to prevail.
Even a cursory review of the URDP and UDRP decisions would have alerted Complainant and its counsel to the fact that its case was devoid of merit.
Thus, the Panel holds that reverse domain name hijacking has occurred.
Source: Michael Berkens, TheDomains.com
By Michael Berkens - TheDomains.com
The Asian Domain Name Dispute Resolution Centre (Kuala Lumpur Office) has returned what we believe is that providers first Reverse Domain Name Hijacking ruling on the domain name AsiaCharts.com, and its on the exact type of case that we have been complaining about, one in which the complainant did not have a trademark.
Even worse the domain name was registered 4 years before the Complainant was even formed.
The three member Panel of Mr.D.Saravanan, Mr.Michael Soo and Honorable Neil Brown QC found that ASIA Charts Pte. Ltd., of Singapore, having an address at 111, North Bridge Road, # 13-04, Peninsula Plaza, Singapore 179098, represented by its Lim Chee Leong was guilty of Reverse Domain Hijacking.
The domain holder Neuronet Systems Pte. Ltd., was represented by ESQwire.com, P.C., Ari Goldberger and Jason Schaeffer.
The opinion has some of the best and strongest Reverse Domain Name Hijacking language that we have ever read, which is why we titled our post the way we did.
Great job by the team at ESQwire.com and the three member panel who took a lot of time to issue a very lengthy opinion that you should all read
The domain name asiacharts.com was registered in 2002.
The Complaintant was first incorporated in June 1, 2006.
Here are the relevant facts and findings by the three member panel”
Respondent’s predecessor, Neuronet Systems was incorporated in Singapore on October 13, 1997 as a sole-proprietorship and superseded by Neuronet Systems Pte Ltd. on 31st May 2004.
Since 1997 Respondent has provided “end-of-Day” data services (“EOD Services”) to end users and companies worldwide. Since May, 1999 Respondent has operated online at , and continues to be a bona fide provider of data and charting to the present.
Respondent registered the domain name on April 9, 2002 and has continually maintained ownership until the present.
Between 2002 and 2006 Respondent used the Disputed Domain name in connection with Neuronet Systems to promote its “end-of-day” data services.
Complainant was formed on June 1st, 2006.
In June, 2006 Complainant approached Respondent with an interest in using the Disputed Domain.
One of the Complainant’s founders, Benny Yeo entered into an agreement where Respondent would be the exclusive EOD Services Provider to Complainant. In exchange for access to the Domain, Complainant agreed to allow Respondent to be its exclusive EOD Services provider and the parties used the Disputed Domain to promote their mutual business interests.
During the parties’ agreement, Respondent also passed through the nine (9) year registration cost of $73.13, which was paid by Complainant.
Between June 1, 2006 and November 15, 2013, the parties worked together with Complainant honoring its deal to utilize Respondent as the exclusive EOD provider of market data and Respondent pointing the DNS as instructed by Complainant.
Complainant’s last request for a DNS change was made of December 18, 2013.
On or around November 15, 2013, Benny Yeo left Complainant, and as a result of failed negotiations Complainant announced they would no longer be using Respondent as the exclusive EOD provider.
After Complainant announced its change in status, between December 2013 and February 2014, the parties exchanged correspondence regarding a potential change in service terms. Complainant finally ceased using Respondent as its EOD Services provider.
On 4 Nov, 2013 Respondent advised Complainant that it was in breach of the agreement and received a negative reply.
On 1 Jun, 2014, after Complainant failed to remedy its breach of the agreement, Respondent repointed the URL to neuronetsys.com.
At no time did Respondent agree to sell the Disputed Domain to Complainant, and Complainant did not offer to purchase the Disputed Domain from Respondent.
At no time did Complainant ever have any ownership of the Disputed Domain. Respondent did not register the Disputed Domain with Complainant’s trademark in mind and had no knowledge of Complainant, its web site, its business name or trademark when it registered the Disputed Domain.
Complainant did not exist and its trademark did not exist when Respondent registered the Disputed Domain in 2002.
Indeed, Complainant was not formed until four (4) years after Respondent registered and began using the Disputed Domain.
At all times Respondent has used and will continue to use the Disputed Domain in good faith and in connection with its common descriptive meaning.
The Complainant has no enforceable rights to a Trademark identical or confusingly similar to the Disputed Domain:
(Complainant’s purported rights rest on its corporate formation documents, a logo design that incorporates the words “Asia Charts,” and a breached “limited lease agreement” between the parties wherein Respondent pointed the DNS to Complainant while the parties worked together using Respondent as the exclusive EOD Services Provider.
Complainant does not hold a registered Trademark and its purported trademark rights in a generic or descriptive term is tenuous at best.
Accordingly, there is simply no evidence that Complainant has any rights to satisfy this Prong of the Policy. Therefore, Complainant’s must fail.
Respondent’s registration and use of a common word Domain establishes Respondent’s rights and a legitimate interest in the disputed Domain Name:
The registration of domain names, like AsiaCharts.com, that incorporate common descriptive dictionary words, subject to third party use, ipso facto establishes the Respondent’s legitimate interest, provided there is no evidence the respondent targeted the complainant’s trademark.
Indeed, it is settled that the registration of domain names that contain common words are permissible on a first- come, first served basis, and such registration establishes the Respondent’s legitimate interest, provided the domain was not registered with a trademark in mind
The principle of “first come first served” still applies to adjudicate the conflict between a domain name and a later registered trademark and there is simply no evidence here that would provide Complainant with superior rights to the Disputed Domain.
In the instant matter, there is no evidence that the Disputed Domain was registered with Complainant’s trademark in mind because of three (3) undisputed facts, inter-alia,
1)Complainant did not exist in 2002 when Respondent registered the disputed Domain
2)Complainant has never owned or had ownership rights to the disputed Domain;
3)Complainant holds no trademark for generic ASIA CHARTS.
Accordingly, there is no evidence that respondent targeted Complainant in any manner. To the contrary, it is simple implausible that respondent targeted Complainant rather than consciously decided to profit off of a combination of common words used in the English language.
Reverse Domain Name Hijacking
(a) There is absolutely no basis for this claim and Complainant should have known that before filing its Complaint.
It certainly had an obligation to understand the rules and present a valid claim.
Complainant and its counsel are sophisticated and certainly understand the importance of knowing the law and facts before proceeding.
The Complaint is woefully devoid of any facts or information.
Indeed, Complainant has not pres
Law firm ESQwire.com has scored yet another Reverse Domain Name Hijacking victory on behalf of a client.Wallace Media Pty Ltd, which operates the cycling website CyclingTips.com.au, filed the case against the owner of CyclingTips.com. Wallace Media complained that people looking for its site often leave off the .au, leading them to the respondent’s domain name.
There were a lot of issues at play in this case, including when the respondent actually registered the domain name. Fundamentally, though, this case came down to a company adopting a highly descriptive domain name and then wanting to get common law trademark protection for it.
Wallace Media threw out a bunch of stats to show that its website is popular among Australian bicyclists. But what does that have to do with a domain name owner in Canada, who could have purchased the domain name for the same descriptive purpose?
The three person panel found that the complainant did not show it had trademark rights in “CyclingTips”:
In the case at hand, the Panel notes that the name CYCLINGTIPS is not inherently distinctive as it is composed of the two generic words “cycling” and “tips” and is descriptive of the contents made available on the Complainant’s blog site “www.cyclingtips.com.au”.
The Panel has reviewed the material submitted by the Complainant and finds that it is not sufficient to demonstrate that consumers identify the name with the source of the Complainant’s services and not merely a phrase describing those services.
The panel also determined that the domain name wasn’t registered in bad faith. Although the whois information for the domain has changed, the respondent said he registered the domain name in 2005 — several years before the complainant’s site existed.
In finding reverse domain name hijacking, the panel wrote:
…the Panel finds that the Complainant should have known that it would not be successful in the present UDRP proceeding, due to the Complainant’s lack of any registered trademark corresponding to the disputed domain name, the descriptiveness of the name CYCLINGTIPS and the paucity of evidence establishing that the name CYCLINGTIPS has become distinctive of the Complainant’s services. These fundamental flaws in the Complainant’s case are exacerbated by the facts, which should have been known to the Complainant and its authorised representative, that the registration date of the disputed domain name predated the Complainant’s existence by several years and that there was an absence of any evidence of the Respondent’s intention to target the Complainant.
Source: Andrew Allemann Domainnamewire.com
By Michael Berkens - thedomains.com
TV Sundram Iyengar and Sons Limited of Madurai of India represented by DePenning & DePenning, just lost its attempt to grab the 17 year old domain name TVS.com
The domain owner P.A. Gordon was represented by ESQwire.com which won its second UDRP of the day, Congrats to Ari and Jason.
The panel had a very good discussion of latches and while the decision did not rest on latches the delay in 17 years was not something the panel could ignore.
The panel spent quite a bit of time discussing the issue of Reverse Domain Name Hijacking and while the ultimately did not make such a finding, the panel did criticize quite harshly the Complainant for the “repeated assertions in the Complaint, seemingly without any evidentiary basis, that the Respondent is engaging in illegal behaviour or attempting to commit fraud. This language is unnecessary and not condoned by the Panel.”
In other words the Complainant make statements about the domain holder which were simply untrue.
On that basis, I’m going to recommend to Mr. Rick Schwartz that he add this case the Complainants and their counsel to the Domain Hall of Shame.
Here are the highlights of the 3 member panel decision of Nicholas Smith, Harini Narayanswamy and Neil Brown Q.C.
“The Complainant is the holding company of the TVS group and is an automotive dealership and distributorship company in India.
The Complainant was established in 1911 and is named after its founder Thirukkurungudi Vengadam Sundram Iyengar.
The Complainant has more than 150 outlets and sells approximately 6,000 vehicles and services around 600,000 vehicles per annum. Furthermore the Complainant also distributes spare parts in India. The TVS group employs more than 40,000 people worldwide and has an annual turnover in excess of $4 billion.
The Complainant owns the registered trademark no. 109706 for a figurative mark consisting of the letters “TVS” inside a rhombus (the “TVS Mark”).
The TVS Mark was first registered on April 25, 1945 in India for goods in class 11, including the marketing and providing of goods and services for others via websites and apps. The Complainant has also registered other variants of the TVS Mark including registrations in the United Kingdom of Great Britain and Northern Ireland in 2012 and 2013.
The Domain Name was created on June 5, 1997.
It currently resolves to a website (the “Respondent’s Website”), which is a parking page with a number of what appear to be “pay-per-click” links including links for various types of televisions, such as “flat-screen televisions” and “plasma screen televisions”.
The Respondent’s website also contains the statement “BUY THIS DOMAIN This domain may be for sale. For more information please contact…”.
The Respondent’s Website does not refer to the Complainant in any way.
The Panel notes that the system of domain name registration is, in general terms, a “first come, first served system” and, absent pre-existing rights which may be applicable to impugn a registration, the first person in time to register a domain name would normally be entitled to use the domain name for any legitimate purpose it wishes.
There is no evidence at all before the Panel to suggest that at the time the Domain Name was first registered (in 1997) the Respondent registered it in contemplation of the Complainant.
There is no evidence that at the time of registration the reputation of the TVS Mark extended beyond India, or that the Respondent, who appears to have engaged in a pattern of registering 3-letter marks, registered it in contemplation of the Complainant. The evidence before the Panel strongly suggests that the Respondent has not used the Domain Name to target the Complainant or in contemplation of the Complainant; rather the advertisements on the Respondent’s Website almost exclusively relate to televisions, an abbreviation of which is “TVs”.
To the extent that the Respondent’s Website has made reference to the Complainant’s products the Panel accepts that such use is not significant compared to the considerable evidence that the Respondent’s website primarily contains advertisements relating to televisions.
Accordingly there is no material before the Panel which would lead to a conclusion that the Respondent lacks a right or legitimate interest in the Domain Name.
However, during the 17 years the Domain Name has been held by the Respondent, the only evidence of any apparent use of the Domain Name is for a pay-per-click advertising service, not for any business that offers goods or services referable to the Domain Name.
Given the Panel’s finding that the Respondent has not registered and used the Domain Name in bad faith (see below), the Panel concludes that in these circumstances it is not necessary to make a finding under this element of the Policy.
The Domain Name has been registered for 17 years.
“The longer the time a disputed domain name has been registered, the more difficult it is for a complainant to prove bad faith registration”. AVN Media Network, Inc. v. Hossam Shaltout, WIPO Case No. D2007-1011.
The only explanation for the Complainant’s delay in filing a complaint about the Domain Name appeared to be the fact that Indian companies have only paid attention to domain name issues in the past 5 years, a fact that conflicts with its repeated assertions that the Respondent knew of the Complainant in 1997.
Although the Panel’s decision in this case does not rest simply on the passage of time between registration of the Domain Name and the Complainant’s assertion of its rights, it is a fact that the Panel cannot ignore.
There is no evidence that the Respondent has engaged in a pattern of conduct of registering domain names (including the Domain Name) to prevent trademark owners from registering a corresponding domain name.
Rather, it appears that the Respondent has registered a number of domain names that correspond to 3-letter acronyms in the early days of the Internet. Such conduct does not imply that the Respondent was registering domain names to prevent trademark owners from registering corresponding domain names, rather the Panel accepts the Respondent’s evidence that he registered them for the inherent value in the short domain names. Nor is there any evidence that the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor as the Complainant and the Respondent are not competitors.
The Panel finds that the Complainant has not satisfied the burden of proof to show that either:
a) the Respondent registered the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website; or
b) that the Respondent has registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant.
Firstly, the Domain Name has been registered for more than 17 years, and there is no evidence that the Respondent has ever attempted to sell the Domain Name to the Complainant (as opposed to a general offer to sell the Domain Name).
An offer to sell a Domain Name, by itself, is not evidence of bad faith, rather it has to be accompanied by evidence that the Domain Name was registered or acquired primarily for the purpose of selling to the Complainant or a competitor of the Complainant.
The Panel finds that the Complainant has not established that the Respondent was aware of it at the time it registered the Domain Name.
There is no evidence before the Panel that the Respondent was aware of the Complainant in 1997, such as extracts from the Respondent’s Website close to the time of registration that refer to the Complainant or communications from the Respondent. Nor has the Complainant established that the TVS Mark was so well known that the Respondent must have been aware of it and registered the Domain Name in contemplation of it.
In fact there is no evidence that the Complainant had any presence outside India in 1997, or indeed any time prior to 2012.
There is no other evidence suggesting that the Complainant should have been aware of the Respondent.
The Panel accepts the Respondent’s argument that in 1997, it would not have been possible for the Respondent to have searched the Indian Trademark database (or indeed any trademark database) online, or search for the Complainant on the Internet:
It is unclear if the Complainant had an Internet presence in 1997 and in any event search engines, such as Google, did not exist then. In short, absent a particular connection with India, or the Complainant’s industry (neither of which is in evidence), it is not clear how the Respondent could possibly be aware of the Complainant at the time he registered the Domain Name.
In certain cases UDRP panels have inferred that a domain name was registered in bad faith if there is no explanation, or other logical reason for the registration of the domain name other than to take account of any confusion with the complainant. Such cases often arise if the complainant’s trademark is a coined word. This is not such a case. The Respondent has given evidence of his reason for registering the Domain Name, namely because of its inherent value as a three-letter .com domain name and because it is commonly understood to be the short form for “televisions” or “T.V.s”. This evidence is supported by the fact that in 1997 the Respondent registered other three-letter domain names and because the Domain Name has been used to host advertisements for televisions. The Panel finds this evidence more persuasive than the submission by the Complainant that the Respondent, who is based in the United States, registered the Domain Name to target the Complainant, despite the fact that, by its own admission, the Complainant had no interest in the Domain Name until 2013.
In this case, there is insufficient evidence for the Panel to reach a conclusion that the Complainant had such a reputation in its TVS Mark in 1997 that the registration of the Domain Name was in contemplation of the Complainant, rather than for the inherent qualities of the Domain Name.
Furthermore, given the fact that the Domain Name consists of a three-letter word commonly used as an abbreviation for “television”, it is highly likely that the Respondent registered the Domain Name for a purpose other than to take advantage of the confusion between the TVS Mark and the Domain Name.
As such the Complainant has not satisfied its burden of showing that circumstances that bring the case within the provisions of paragraph 4(b) of the Policy exist, or other facts showing that the Respondent registered the Domain Name in bad faith.
D. Laches
The Respondent, in its Response also raises the question of laches.
The Panel notes that the Domain Name has been registered for 17 years, during that time the Complainant has been an active business.
This Panel’s view is that delay in filing a complaint is not an automatic bar to a complaint, but nor can it be ignored, for all the facts must be taken into account in all UDRP proceedings and a decision made in the light of all the circumstances of the individual case.
In the present proceeding the Panel does not make a finding as to whether the Complainant is barred from commencing or succeeding in the proceeding under the ground of Laches.
This is for two reasons.
Firstly as the Panel has found that the Respondent has not registered and used the Domain Name in bad faith and the Complainant therefore cannot succeed on the merits it is not necessary to make finding. Secondly the Panel finds the Complainant’s explanation that it has only been aware of the existence of the Domain Name since 2013 as it was when the Complainant became interested in acquiring the Domain Name plausible. However the Panel notes the contradictory nature of the Complainant’s submissions, namely that the Respondent registered the Domain Name in 1997 in bad faith to cash in on the reputation of the Complainant, yet the Complainant itself did not even consider it necessary to obtain a domain name that reflected the TVS Mark until 2013 or shortly beforehand.
E. Reverse Domain Name Hijacking
In the view of the Panel this is a Complaint which has a number of significant issues.
The Domain Name in question was registered in 1997.
There is very little evidence presented in the Complaint that suggests the Domain Name was ever targeted at the Complainant.
Rather the content of the Respondent’s Website suggests that the Domain Name resolved to a generic pay-per-click website, with most advertisements relating to televisions or “TVs” which reflect the Domain Name.
The Complainant is a well-established company and no doubt has a significant reputation, but it appears, on the evidence before the Panel, that that reputation is limited to the Indian subcontinent. In particular, it is unclear if the Complainant had any reputation outside India in 1997, at the time of the registration of the Domain Name, let alone that the TVS Mark was so well-known that the Respondent’s registration must have been made with the TVS Mark in mind.
Despite the weaknesses in its position, the Complaint is replete with numerous assertions that the Respondent engaged in illegal or fraudulent behaviour.
Examples of such assertions include:
“The respondent wrongfully and fraudulently adopted and registered the impugned domain name www.tvs.com to utilize the name and reputation attached to the well-known mark ‘TVS’ without having any rights thereto and in spite of having knowledge about the complainant and the reputation associated with ‘TVS’.”
“The facts and circumstances in the present case prove beyond doubt that the Registration of the impugned Domain name by the Respondent amounts to “passing off” with a manifest intention to commit fraud to mislead innocent and gullible customers by resorting to unfair and dishonest trade practices.
“The conduct of the respondent leaves no doubt as to its unscrupulous motive and illegal intentions and the Complainant is apprehensive that the respondent is in active search of an assignee of the impugned domain name and would sell the same and make illegal profit.”
While acknowledging that a party in a UDRP proceeding has the right to present its case in any manner it sees fit, the Panel is concerned by the repeated assertions in the Complaint, seemingly without any evidentiary basis, that the Respondent is engaging in illegal behaviour or attempting to commit fraud. This language is unnecessary and not condoned by the Panel.
While noting that the Complainant’s case has significant weaknesses and that its conduct in making numerous unsupported assertions of fraud and illegal behaviour is not condoned by the Panel, the Panel does not make a formal finding of Reverse Domain Name Hijacking.
This is not a case where the complainant’s mark post-dates the registration of the domain name, or where it is immediately obvious that the respondent used the at-issue domain name as part of a bona fide business (in particular the Panel acknowledges that the Respondent’s Website has referred to the Complainant’s products).
The Panel does not find that the Complaint was brought in bad faith.
Nevertheless the Panel remains concerned at the decision to commence proceedings in such circumstances and the unsupported assertions contained in the Complaint.
By Michael Berkens - thedomains.com
Vertical Axis Inc. represented by Ari and Jason at ESQwire.com, just beat back a UDRP on the domain name Ritchey.com
The complaint was brought by Ritchey Design, Inc. of Nevada which is a “company specializing in bicycle components established in 1974 which has registrations for RITCHEY in the US, Canada and the European Community for bicycle components and distributes in over 40 countries, through more than 200 distributors and has a worldwide revenue of $22.5 million
The domain has been owned by Vertical Axis since 2007 when they acquired it along with a domain portfolio and has been parked with a very generic page since.
Prior to the acquisition of Vertical Axis the domain was parked by the previous owner to links with” numerous references to bicycles, bicycle accessories and the bicycle industry in general in these links, including the Complainant’s competitors”
In all a Good case illustrating good faith domain purchase and no bad faith use.
Here are the highlights from the three member panel decision of Dawn Osborne, Flip Jan Claude Petillion and Neil Brown Q.C:
The Complainant argued that the doctrine of laches is not applicable under the Policy because the Respondent has not been prejudiced by the delay, but has rather benefited from the PPC advertisement revenue for a long time.
It is agreed between the parties that under the Policy if there is an assignment of a domain name the date of registration for the purposes of any domain name dispute involving the new owner is the date of purchase of the name.
The Respondent acquired the Domain Name in 2007 as part of a large portfolio containing many domain names which are almost exclusively generic or descriptive.
Before that date the parties agree that the website attached to the Domain Name contained a lot of links to third party sites involved with the bicycle industry. Since 2007 the parties agree that the links have been general links to third party businesses and not related to bicycles or ancillary goods and services.
The Respondent says that “Ritchey” is a common surname and that it acquired it to sell in that capacity unaware of the Complainant or its business at the time of purchase.
In a case where the domain name unequivocally indicated the complainant, such as , the link would be obvious and by purchasing the domain name even as part of a large portfolio the respondent must have intended to target the complainant. However, if the domain name was any business using the name “Brown” would be unlikely to bring a complaint as it would be unclear which “Brown” amongst the many uses of the common surname Brown was meant.
There are other businesses out there using the “Ritchey” name and many people called “Ritchey” who might be interested in purchasing ritchey.com if they started a business.
Upon examining the evidence in this case, unfortunately, the Complainant has failed to show that on the balance of probabilities that it was a Ritchey business in the contemplation of the Respondent at the time of the registration or that the Respondent has any link with the bad faith use made of the Domain Name showing knowledge of the RITCHEY trade mark for bicycles before it was acquired by the Respondent.
Further, the Panel agrees with the Respondent that sale of domain names containing common surnames without proof of targeting of a trade mark and use of privacy services are normal business practices and since there has been no suggestion of the Respondent giving false contact details or not participating in these proceedings this is not evidence of bad faith in itself.
Finally, the list of other domain names purchased at the same time as the Domain Name are predominately generic and descriptive suggesting, as the Respondent suggests, good faith purchase of a descriptive portfolio.
The Panel declines to apply the doctrine of laches in this case, however agrees that delay can affect the outcome of cases if it makes it harder to determine on the evidence the intentions of a party some time ago.
There is no evidence across the seven years that the Respondent has been using the Domain Name that it has been targeting the Complainant.
In that sense the delay benefits the Respondent as on the balance of probabilities there is no evidence that bad faith use was intended.
As such the Panel finds that that there is no evidence of the Respondent registering and using the Domain Name in bad faith under the Policy.
By Michael Berkens - thedomains.com
Electronic Transaction Systems Corporation just lost its attempt to grab the domain name eMoney.com which was registered back in January 2000.
The domain owner was represented by Ari Goldberger and Jason Schaeffer of Esqwire.com
The panel found, unlike other panels have found that they $300K price tag was not outrageous.
Here are the facts and finding of three member panel of Debrett G. Lyons, Dianne Cabell, Ho-Hyun Nahm:
Complainant provides a system to facilitate monetary payments under the name EMONEY.
Complainant references two United States Patent and Trademark Office (“USPTO”) registrations for the trademark EMONEY but neither nominates Complainant as its proprietor.
Respondent is a domain name reseller.
The disputed domain name was registered on January 11, 2000.
The domain name was not in use at the time the complaint was filed but has, in past times, been used to advertise various financial services.
Complainant approached Respondent to purchase the domain name in response to which Respondent asked for USD300,000 in exchange.
The USPTO registrations on which Complainant relies stand in the name of “Edward Vaughan” and there is no proof of a connection between that owner and Complainant.
Accordingly there is no clear evidence that Complainant has registered trademark rights.
Neither is there adequate proof of common law trademark rights.
Whilst Complainant states it has used the trademark since 1999, the only corroborating evidence of that claim is the 1999 first use in commerce date from the USPTO registrations which, as noted, do not belong to Complainant. In any event there is none of the usual indicia of secondary meaning which a panel would expect to see.
The Respondent first had notice of the dispute on June 16, 2014, the date on which the Forum served the complaint on Respondent.
Nothing turns on that date since all relevant events took place more than a decade earlier.
Respondent states that he is a generic domain name reseller and that he registered the domain name during the ecommerce boom when there was a rush of interest in “e-” prefixed names.
Respondent submits that the sale of domain names comprising generic terms is a bona fide offering of goods or services. The domain name is generic in the sense that it is apt to describe any electronic monetary matters or monetary dealings.
Panel is of the view that Respondent made bona fide use of the domain name either as part of a business which resells generic domain names and this was one such domain name, or as the host site for links to third parties offering goods or services linked in some way with electronic monetary matters.
That said, Panel also accepts the consensus viewpoint of those applying this Policy that good faith use of that kind requires vigilant avoidance of the registration or use of domain names which might be confusingly similar to third party trademarks.
The mere descriptiveness of a domain name does not create a legitimate interest in that domain name if it corresponds with
the prior trademark of another. Put another way, the issue is not simply the legitimacy of Respondent’s business model, but whether it has a legitimate interest in the disputed domain name itself.
In this case, there is no cogent evidence that Respondent has shown a “willful blindness” of third-party rights, nor that constructive knowledge of such rights should attach to Respondent.
. Even if it is accepted that Complainant is somehow the beneficial owner or licensed user of the USPTO trademark registrations, Reg. No. 4,462,300 was only filed May 23, 2013 and Reg. No. 2841887 was filed on January 4, 2002, both postdating registration of the domain name. Moreover, whilst the domain name registration postdates the claim to first use in commerce of the trademark by some few months, the only “proof” of first use in 1999 is the USPTO record. There is no evidence of a common law reputation in 2000 or indeed at any later point.
Accordingly, at the time of registration Respondent could not have done any meaningful due diligence on the term EMONEY and it would not have discovered Complainant’s USPTO filings.
Finally, Panel notes that the offer to sell the domain name to Complainant was only in response to Complainant approach and the $300,000 is consistent with what must be a very desirable name.
The only evidence that might point away from Respondent’s bona fides is its involvement in two earlier UDRP proceedings, both resulting in findings adverse to Respondent.
Respondent registered those names more than a decade ago and although that fact of itself might not excuse bad faith action, Panel takes the view that on the totality of the evidence before it in this case and having regard to the manifestly generic character of the term EMONEY, those earlier contested registrations already arbitrated should not cause this Panel to prejudge Respondent’s intentions.
In the result, Panel finds that Respondent has discharged the onus of proof that fell to it by showing that its actions came under Policy 4(c)(i).
Accordingly, Complainant has also failed to establish the second limb of the Policy.
Registration and Use in Bad Faith
For the sake of a more complete understanding of this decision, Panel has gone on to undertake the Policy 4(a)(iii) analysis.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it was used in bad faith.
Even if Respondent was an astute cybersquatter who spotted the (unproven) public use of the Complainant’s trademark in 1999, fourteen years has since elapsed.
In the absence of any compelling physical evidence, this passage of time makes the meaningful assessment of Respondent’s state of mind in 2000 difficult
Panel accepts as more likely than not to be true Respondent’s claim that, at the time it registered the disputed domain name, it had no knowledge of Complainant or of its trademark.
Panel disagrees.
The use is all linked to the dictionary meaning of the word “money” and to the natural connotation of the term, “emoney”. By definition, the use of the domain name can be said to conflict with Complainant’s interests.
However, Panel finds that Respondent did not intend “emoney” to refer to any particular good or service, still less to Complainant’s services. Panel considers that the use does not tell anything meaningful about bad faith.
Complainant has failed to establish the third element under the Policy.
Reverse Domain Name Hijacking
Panel takes the view that a claim of reverse domain name hijacking is not to be taken lightly.
A complainant’s failure to satisfy the Policy is a necessary but not sufficient condition to render a finding of reverse domain name hijacking.
Nonetheless, in the present case, Complainant has not only failed in its complaint, but it has failed to show each and every element of its case.
Complainant’s assertion that Respondent is a “recalcitrant, serial cybersquatter” is, on the evidence, overstated.
There is nothing to indicate Respondent has been recalcitrant (indeed, its reasonably argued Response in these proceedings is evidence otherwise) and the evidence of cybersquatting is limited to the two former UDRP proceedings already discussed, both concerned with domain names registered over a decade ago. Given that Respondent appears to continue to do business as a domain name reseller more than ten years afterwards, one view is that those were the mistakes of an immature business.
Panel observes that the disputed domain name is clearly the name of choice for Complainant’s business and it would defy common sense if Complainant were to deny that it had not followed that path of the domain name over the course of fourteen years, looking for the time and opportunity to acquire it.
But does the bringing of these proceedings alone after failure to agree a price for the domain name constitute harassment? Probably not, unless it could also be said that Complainant uncontrovertibly knew either that it had no rights or that Respondent had rights.
Neither issue is plain.
Given time and opportunity it is possible that Complainant could show trademark rights under Policy 4(a)(i).
In any case Panel would be reluctant to say that Complainant had no trademark rights and was unable to show trademark rights.
Additionally, the activity of a domain name reseller is a precarious one as already noted. Complainant’s polemic regarding the business of speculation in domain names would suggest that it has a legitimate belief Respondent had no rights, a position no doubt underscored by Respondent’s earlier transgressions.
On balance, Panel finds that although Complainant might have better tempered its submissions there has been no attempt at reverse domain name hijacking. Contrary to Respondent’s submission, there is no evidence of overtly misleading, incorrect, and inaccurate information in the complaint.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the domain name REMAIN WITH Respondent.
Panel finds that Complainant has not engaged in Reverse Domain Name Hijacking.
By Michael Berkens - thedomains.com
A three member UDRP panel has found Dealhunter A/S of Frederiksberg, Denmark, represented by Aumento, Denmark guilty of Reverse Domain Name Hijacking (RDNH) on the domain name DealHunter.com
The domain holder was represented by Ari Goldberger and Jason Schaeffer of ESQwire.com
The domain name was registered in 1998.
The Complainant was incorporated in 2007 and first registered its domain name dealhunter.dk domain name in 2010.
The company didn’t even file for the trademark DEALHUNTER until 2013.
The Complainant offered a whopping $5K and then $7K for the domain which offers were rejected.
The panel that consisted of Nicholas Smith, Daniel Kraus and The Hon Neil Brown Q.C. found:
“In the view of the Panel this is a Complaint which should never have been launched.”
“The Complainant knew that the Domain Name was registered nearly 9 years before the Complainant came into existence and close to 15 years before it acquired any registered rights in the DEALHUNTER Mark.
It made two offers to purchase the Domain Name, and following the rejection of those offers and the registration of the DEALHUNTER Mark, chose to bring this Complaint.
The Complainant made no attempt to demonstrate the existence of any earlier rights.
Furthermore, it its entirely unclear, given the Respondent is based in the United States and was not using the Domain Name to provide a service similar to the services for which the Complainant registered the DEALHUNTER Mark, which of the Complainant’s trade mark rights the Respondent was allegedly violating.
Given the nature of the Policy and previously decided cases on this issue, this, along with any other arguments that the Respondent registered the Domain Name in bad faith, were arguments that had no reasonable prospects of success.
The Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
The panel also had some very good language which supports the first come first served nature of domain registrations and that quoting a price does not amount to bad faith.
“The Domain Name was registered in 1998. The Complainant was incorporated in 2007, it registered its domain name in 2010 and the DEALHUNTER Mark was registered in 2013. Even taking the Complainant’s evidence at its highest, there is no possibility that the Respondent, when it registered the Domain Name in 1998, could have been aware of the Complainant or its rights in the DEALHUNTER Mark: The Complainant simply did not exist. For this reason, the Domain Name was not registered in bad faith.”
“The Complainant has argued that bad faith registration and use can be found by the fact that the Respondent is seeking to sell the Domain Name, received offers from the Complainant and rejected them.”
“These arguments are unpersuasive to this Panel.”
“The Complainant’s submission that an offer to sell a domain name for valuable consideration in excess of the documented out-of-pocket costs conclusively establishes that the domain name was registered and used in bad faith is an incorrect reading of the Policy.”
By Michael Berkens
MR was represented by in-house council.
The domain holder offered to sell the domain for $45,000 to MR who then filed this UDRP.
The domain was purchased by the domain holder on October 3, 2012 from a third party, and domain name was going to a parked page as it was by the previous owner
Basically the three member panel found that News Republic was a generic term and the it seems the counsel for the trademarkholder did a pretty poor job of representing the case not even alledging bad faith of the domain holder much less proving it.
Here are relevant the facts and findings by the three member panel:
The Complaint whose website is at mobilesrepublic.com/newsrepublic-fr/ developes “news applications for smartphones, tables and other mobile devices. One of our major application is ‘News Republic’, which trademark has already been registered in several countries.
‘News Republic’ has been registered in UK, USA, Benelux, Germany, Spain, Italy, France and is ongoing in Canada.
“The domain name is identical to the trademark ‘News Republic’ in which Mobile’s Republic has rights. We would like to create a website “www.newsrepublic.com” so as to enhance the communication for our application ‘News Republic’ and develop the usage of our application.”
“It seems that the domain name was registered for the purpose of selling it. There is apparently no website, no product . . .
And the respondent asked for at least 45,000 USD to sell us the domain name. Please refer to annex 2.”
Respondent says that it purchased the disputed domain name at auction, and that it owns hundreds of domain names.
“There is simply no basis for transferring the disputed domain name, (the ‘Disputed Domain’) to Complainant. Respondent has a legitimate interest in the Disputed Domain and there is absolutely no evidence of bad faith registration or use.
“In fact, Respondent purchased the Disputed Domain from its prior owner in October 2012, and it has continually used the Domain Name in good faith in connection with its common, descriptive meaning with links related to ‘news.’
“The Panel does not agree, however, that Respondent has no rights or legitimate interests in the disputed domain name”.
In respect of rights or legitimate interests, the Complaint alleges only that Respondent has not acquired trademark rights relating to the disputed domain name.
The Complaint is devoid of any other allegations or evidence respecting rights or legitimate interests.
The Panel accepts the Complaint’s uncontroverted allegation that Respondent has no trademark rights.
This does not, however, end the inquiry, since paragraph 4(c) of the Policy indicates that a respondent can establish rights or legitimate interests in several other ways.
On the record before it, the Panel is of the view that having failed to consider any of those other ways, the Complainant fails even to make a prima facie case showing that Respondent lacks rights or legitimate interests, as required under the Policy.
Even assuming, however, that the Panel were to accept that the Complaint establishes a prima facie case, the Panel concludes that Respondent’s evidence is sufficient to rebut the prima facie case, as elaborated below.
The Panel accepts generally that a respondent may have a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive term, even when the domain name is confusingly similar or identical to a complainant’s registered mark.
However, that domain name must have been registered because of its attraction as a dictionary word or combination of descriptive terms, and not because of any value corresponding to a trademark; the use of the domain name must also be consistent with its attraction as dictionary words or descriptive terms.
Respondent avers that it purchased the disputed domain name on October 3, 2012 from a party that used it for several years to route to a website displaying news articles and links to other news services.
Annexes to the pleadings show that Respondent displays a website using the disputed domain name in a manner consistent with its prior use (however, instead of posting news articles directly, Respondent’s site only displays links to other news services).
Turning to the descriptive meanings of the terms “news” and “republic,” it is obvious that the use of the website to refer to current events or news stories is consistent with a principal dictionary meaning of the word “news” in common use. Also, the term “republic” has commonly come to mean more than its technical political definition; “republic” has also come to refer to a specific gathering or body of persons, or a meeting place, when associated with another word. The prior and current uses of the website are in line with the descriptive meaning of the disputed domain name as a combination of dictionary terms, the words “news” and “republic.”
The Panel finds that the use of the website to gather in one place links to news sites is consistent with the ordinary meanings of the terms combined to form the disputed domain name. In the Panel’s view, these uses of the disputed domain name are bona fide offerings of goods or services under the Policy, confirming a right or legitimate interest on Respondent’s behalf.
Complainant makes no allegations respecting how well known its trademark is, although the Panel accepts that as of mid- to late 2010, the mark was registered in the USA and a handful of European markets. The Complaint provides no evidence from which it could be inferred that Respondent, in Korea, was even aware of the trademark.
As Respondent points out, the disputed domain name was already in use for a similar website even before Complainant registered its trademark and launched its product. Having also registered a number of other domain names that include the word “news,” the Panel finds that Respondent has established, by a preponderance of the evidence, that it chose the disputed domain name as a dictionary or descriptive term – not because of its trademark value.
The Panel concludes, therefore, that the Complaint fails to make a prima facie showing; even so, Respondent’s evidence is sufficient to rebut any showing that Respondent lacks rights or legitimate interests to the disputed domain name under the Policy, paragraph 4(c)(i) (“before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services”).
C. Registered and Used in Bad Faith
Having concluded that Respondent has rights or legitimate interests in the disputed domain name, it is not, strictly speaking, necessary to address the requirements of Policy, paragraph 4(a)(iii) in detail.
First, however, the Panel notes that Complainant erroneously avers that “There is apparently no website.” The Panel is presently able to view the website on-line.
Second, the Panel finds that Respondent acquired the disputed domain name to use in a fashion similar to the use made by the prior registrant. That use, as elaborated above, is consistent with the disputed domain name’s dictionary or common meanings and is bona fide under the Policy. It is hard to understand how Respondent’s purchase to continue making bona fide use of the disputed domain name can amount to bad faith registration.
There is no evidence that Respondent approached Complainant to propose a sale of the disputed domain name; in fact, Complainant solicited Respondent. In light of the conclusion that Respondent has rights or legitimate interests, the Panel finds that Respondent’s offer to sell the disputed domain name in response to Complainant’s unsolicited inquiry is of no significance under Policy paragraph 4(b)(i).
Also, the Complaint does not even address the issue of use in bad faith, an element required by the Policy.
In summary, the Panel finds that the Complaint also fails to establish bad faith under the Policy.
7. Decision
Nasser A. Khasawneh
Presiding Panelist
Assen Alexiev
Panelist
The Hon Neil Brown Q.C.
Panelist
By Andrew Allemann
A World Intellectual Property Organization panel has ruled against Spanish company Mapfre in a UDRP case the company brought against MapFree.com.
The domain name belongs to Vertical Axis (Kevin Ham’s company). Vertical Axis argued that it registered the domain name for its generic meaning. It pointed out that is has registered many other domains that start with Map.
The majority of the panel found in Vertical Axis’ favor on all three parts of the UDRP. This is despite a limited number of links showing up on the parked domain that relate to Mapfre’s industry of insurance. The majority ruled that those links were incidental to the overall case.
One panelist dissented and said the domain should be transferred.
It’s kind of hard to believe that two panelists would find against the complainant on all three prongs of the UDRP while another would find in favor of the complainant on all three.
Vertical Axis was represented by ESQwire.com.
By Michael Berkens
The government of Quebec just lost its bid to grab the domain name Quebec.com, but the domain owner failed to get a Reverse Domain Name Hijacking Ruling.
If you’re in to extremely long proper names, the complainant in the UDRP is “Ministre des Relations internationales, de la Francophonie et du Commerce extérieur (Minister of International Relations, La Francophonie and External Trade), acting in this proceeding for and on behalf of the Government of Québec, Québec, Canada”
The domain owner is Anything.com, Ltd who was represented by Esqwire.com.
I think in such a case its important for everyone to read including the allegations of the parties and the responses.
While you may dismiss this case as a failed attempt to grab a Geographic domain, the panel gave a lot of consideration to the claim and some pretty good guidance of what is the acceptable use for a Geo domain and what might lose you a Geo domain in a UDRP.
Here are the relevant allegations, defenses, facts and findings by the three member panel:
5. Parties’ Contentions
A. Complainant
1. The Disputed Domain Name is identical or confusingly similar to the Canadian trademarks as it is almost identical to the marks.
2. Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, as:
(a) The Respondent has never used it to offer goods or services in good faith;
(b) It is used only as a link to a parking page containing links to businesses in Quebec and other links unrelated to Quebec;
(c) Complainant has never authorized Respondent to use its trademarks;
(d) Respondent does not hold a registered trademark for QUEBEC;
(e) Respondent is not commonly known by the Disputed Domain Name; and
(f) Respondent registered the Disputed Domain Name for profit by creating confusion regarding and tarnishing the image of Complainant’s trademarks.
Respondent registered and used the Disputed Domain Name in bad faith as:
(a) It registered and used the Disputed Domain Name with the objective of taking advantage of Internet users attempting to visit Complainant’s website;
(b) Respondent intended to benefit from hits generated by Complainant’s notoriety and official marks;
(c) Respondent intended to make illicit use of Complainant’s trademarks by creating confusion for Internet users, tarnishing Complainant’s official marks and notoriety, preventing Complainant from registering its official marks in a domain name and creating confusion with Complainant’s marks regarding the source, sponsor, affiliation and approval of the products and services offered on the website quebec.com.
B. Respondent
Respondent made the following contentions:
1. Complainant does not have trademark protection for QUEBEC because it is a descriptive term not subject to trademark protection as a stand-alone word mark.
2. The Disputed Domain Name solely incorporates the geographically descriptive term “Quebec” which is the common name of a Canadian province.
3. The Government of Quebec has also disclaimed any right to the word “Quebec” in connection with the following United States trademarks:
BONJOUR QUEBEC (Registration No. 2,923,549); and
QUEBEC ORIGINAL (Registration Nos. 4483348 and 4483347).
4. Respondent registered the Disputed Domain Name in good faith on July 10, 1998, when it was available for registration. Respondent selected the Disputed Domain solely because it is a common geographic word and it believed that anyone was entitled to register a geographic word domain name like “Quebec.”
5. The Complaint should be barred by the doctrine of laches because Complainant waited 15 years to initiate this proceeding.
6. The Disputed Domain Name is not confusingly similar to Complainant’s trademarks.
7. Respondent has rights and legitimate interests In the Disputed Domain Name because registration and use of a common geographic word domain name in connection with its descriptive meaning is a legitimate interest.
8. Complainant has not demonstrated that the Disputed Domain Name was registered and is being used in bad faith.
9. Registration of a geographic term or common word domain name is not bad faith.
10. Complainant’s inaction for 15 years supports a finding that Respondent did not act in bad faith.
11. There should be a finding of Reverse Domain Name Hijacking.
Discussion and Findings
Complainant’s case is that there is no right or legitimate interest as Complainant has never authorized Respondent to use its official marks, Respondent has never obtained a registered trademark itself for QUEBEC, Respondent is not known as “Quebec” or by the Disputed Domain
Name and, finally, that: “the Respondent registered the domain name with the intention of diverting, for profit, Web users attempting to visit the website of the Government of Quebec, by creating confusion regarding and tarnishing the image of the Complainant’s official marks. The Respondent has made illicit and unfair use of the domain name ”.
Respondent relies on its submission that it has a right or legitimate interest in the domain name because it consists of a “geographic common word”, namely “Quebec” which is both a province and major city in Canada.
It may be said first of all that there is no evidence that Respondent has a registered trademark for QUEBEC or that it is or has been commonly known by the Disputed Domain Name and it has not been alleged that Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name.
Moreover, Respondent is not affiliated with Complainant and has not been authorized by the Complainant to use its trademark in a domain name or anywhere else. Those factors are often factors going to show that a complainant has made out a prima facie case, and they are present in this case.
However, in the present case, it is the geographic indicator which is the determining factor.
On that issue, the Panel accepts the general proposition coming from Junta de Andalucia Consejeria de Turismo, Comercio y Deporte, Turismo Andaluz, S.A. v. Andalucía.Com Limited, supra although of course each case must be decided on its particular facts.
In the present case, Respondent has adopted a geographic indicator as its domain name and has sought to put it to good use in providing links to various information and commercial sites offering goods and services in or related to Quebec.
Respondent’s current website carried links to information services such as maps, directions and driving instructions and also links to sites offering hotel and flight bookings, other travel related businesses and a few other services such as immigration visas. It is true as Complainant says that some of the links do not relate specifically or exclusively to Quebec, but a fair reading of the website leaves no doubt that it is a site for goods and services offered in Quebec and in Montreal in particular.
The Panel’s overall assessment of the way that Respondent is using the Disputed Domain Name is that it is using the Disputed Domain Name in its geographic sense, i.e. that it deals with goods and services available in and specifically related to the region.
If Respondent were pretending to be Complainant itself, if its website purported to offer governmental services, if it laid some claim to speak on behalf of the region or to be an authoritative voice on governmental or municipal matters, or if it sought to mislead Internet users as to the true nature of the site, the outcome may well have been different. But one can examine Respondent’s website closely and yet not find any such matters. The website is what it presents itself to be, namely a site for people minded to find goods and services in Quebec through commercial links and for businesses in Quebec to advertise and promote their wares. An examination of the record of the website at “www.archive.org” reveals the same use over the years.
Accordingly, the Panel finds that the use to which Respondent is putting the Disputed Domain Name is the legitimate one of using a word for its value as a word, analogous to the use of a generic, descriptive or common dictionary word and not as an attempt to transgress by using it as a trademark.
In particular, the Panel does not accept the argument of Complainant that Respondent registered the Disputed Domain Name with the intention of diverting Internet users looking for the Government of Quebec, by creating confusion regarding and tarnishing the image of Complainant’s official marks.
There is no evidence at all to support that proposition and, given the contents of the website it is unlikely that the proposition reflects Respondent’s intention, although the passage of such a long period of time since Respondent registered the Disputed Domain Name makes it difficult to discern this one way or the other, making it more difficult for Complainant to satisfy its burden proof.
It is far more likely, judging from the contents of the site, that it was established to attract users wanting information on subjects such as travel and accommodation to, from and in Quebec and the other services referred to above, being precisely the use that has been made of it.
For all of those reasons, the Panel finds that Complainant has not made out its case that Respondent does not have a right or legitimate interest in the Disputed Domain Name.
E. Registered and Used in Bad Faith
Complainant submits that the Disputed Domain Name in the present case was registered and used in bad faith and that that is so for several reasons.
The first and principal reason advanced is the argument used with respect to rights and legitimate interests and now renewed under bad faith, the argument that Respondent registered the Disputed Domain Name “with the ultimate objective of taking advantage of Web users attempting to visit the Complainant’s website.”
That is essentially a submission that Respondent formed such an objective or intention. But Complainant also argues that the same conclusion can also be drawn by inference from the fact that Respondent intended to benefit from hits generated by Complainant’s notoriety and official marks and that Respondent intended to make illicit use of Complainant’s trademarks by creating confusion for Internet users, tarnishing Complainant’s official marks and notoriety, preventing Complainant from registering its official marks in a domain name and creating confusion with Complainant’s marks regarding the source, sponsorship, affiliation and approval of the products and services offered on the website “quebec.com”.
Respondent has replied to these allegations to the effect that registration of a geographic term or common word as a domain name is not bad faith and it adds correctly that this is in the absence of evidence to the contrary.
Respondent also submits that Complainant has been inactive in the 15 years since Respondent registered the Disputed Domain Name and that such a delay supports its view that it acted in good faith.
Turning first to paragraph 4(b) of the Policy, the Panel finds that there is no evidence bringing the case within sub-paragraph (i), that relating to an intention to sell or rent the Disputed Domain Name. That is so because acquiring a domain name, holding it for 15 years and using it solely for what appears to be a legitimate purpose and apparently not attempting in 15 years to sell or rent, seems to be to the contrary and to evince an intention at the time of registration to keep the domain name and use it to produce income from advertising rather than an intention to sell or rent it.
It must also be remembered that to rely on sub-paragraph (i), it must be shown that the intention to sell or rent was not just an idea at the back of a registrant’s mind, but that the registrant was “primarily” motivated by that fact and that its intention was to sell the domain name to Complainant or a competitor. There is no evidence that such was the intention of Respondent or that it was its primary intention and the fact that Respondent kept the Disputed Domain Name for 15 years without selling or renting or even attempting to do so, militates against the conclusion that it was ever the intention of Respondent to sell or rent the Disputed Domain Name.
It is also difficult to conclude that there has been a breach of paragraph 4(b)(ii) as Respondent has not prevented Complainant from reflecting its Q UEBEC trademarks in a corresponding domain name; there are numerous domain names available consisting solely of the word “Quebec”, alone and in combination with other words.
Likewise, the facts of the case do not bring it easily within sub-paragraph 4(b)(iii) of the Policy. Again, the fact that Respondent registered and used the Disputed Domain Name for an apparently legitimate purpose and retained it for 15 years, continuing to do the same thing with it during that period does not fit comfortably with the notion of Respondent wanting to disrupt Complainant’s business. Again it must be remembered that this intention must be shown to be the registrant’s primary intention. There is no evidence that Respondent had any such intention or evidence of any facts from which such an inference could be drawn.
Accordingly, the only real chance of Complainant succeeding on bad faith comes from sub-paragraph 4(b)(iv) of the Policy and the general notion of bad faith which of course is available to it as well as the specific criteria in sub-paragraph 4(b)(iv).
The Panel has already indicated in the section of the Decision dealing with rights and legitimate interests that it is difficult to conclude that Respondent had the intention to create confusion with the Canadian marks as to Respondent’s website. If this were its intention it has had 15 years to get up a website to suggest that it was the website of the Government of Quebec, but it has not done so. Its website makes no suggestion that it is the Government of Quebec, that it is modeling itself on the government, that it has any authority in governmental affairs or that it is in any other way trying to induce in a visitor the false notion that it is anything other than the commercial site that it plainly is.
Again, the Panel must also ask whether, if there is no direct evidence, are there nevertheless other matters from which it may be inferred that this was the intention of Respondent. The fact that Respondent appears to have kept strictly to promoting its own interests, namely commercial links, suggests that there are no such matters from which such an inference may be drawn.
The situation in this regard is summed by the remark of the three-member panel in Consejo de Promoción Turística de México, S.A. de C.V. v. Latin America Telecom Inc., WIPO Case No. D2004 0242 in which the trademark at issue was MEXICO and the domain name and where the panel observed:
“In this regard, Complainant has not persuaded the Panel that Internet users, typing the word MEXICO into their browsers, expect to find the goods or services of Complainant, as distinct from goods, services or information about the country Mexico.”
Likewise, in the present case, there is nothing either expressly or by inference to suggest that Internet users would think that by typing into their browsers, they would find the governmental services of the Province of Quebec, rather than goods, services or information about Quebec, which was clearly Respondent’s intention, judging from the available evidence.
There are two other considerations in this regard to which the Panel also draws attention.
The first is that bad faith, in general, means there has been a malicious or recklessly indifferent intention to do harm, which is not present on the facts in this case.
Indeed, there are no facts that are inconsistent with the intention of Respondent being solely to promote its own interests in a lawful manner.
Moreover, Respondent’s website seems to be promoting Quebec and enhancing the goods and services available there; if anything, such conduct is more akin to good faith than to bad faith. In that regard the Panel notes that the website under the Disputed Domain Name yields advertisements related to the geographic application of the term such as “Things to do (in) Quebec”, “250 Hotels in Quebec”, “Cheap flights” and “Montreal to Quebec City” as stated by the Respondent in its Response.
There is nothing related to/or capable of being branded as bad faith in such advertisements which in fact promote, in fairness or good faith, the province or City of Quebec.
Secondly, although the argument on laches in UDRP proceedings can be a sterile one, the present case is a classic example of the problems facing complainants who do not pursue their remedies in a timely manner.
The Panel is not prepared to say that laches is available as a defence in all UDRP proceedings, but it is also not prepared to say that the delay in bringing proceedings may never be considered.
In the present case, if it is assumed that Complainant has been performing its governmental duties properly, it must have been aware or should have made itself aware of the Disputed Domain Name and the way it was being used, not briefly, but for 15 years.
Yet is has brought this claim very late in the piece and has not volunteered a reason for the delay or explained it, although Respondent raised the issue of delay in the Response and it is a very live issue in this case.
The long delay means that with the limited forensic tools available to a UDRP panel, it is difficult to ascertain the intention of a registrant 15 years previously and in the time that has elapsed since then.
That state of affairs can only weaken Complainant’s case; if it cannot prove its case on the balance of probabilities because of delay for which it is responsible and for which the registrant is apparently blameless, Complainant fails on one of its most important proofs.
For these reasons, the Panel finds that the Disputed Domain Name was not registered or used in bad faith.
F. Reverse Domain Name Hijacking
The Panel finds that Complainant’s motivation in filing the Complaint was more likely than not to protect its trademarks and to stop for the future what it saw as a violation of its rights, rather than an attempt to intimidate or harass Respondent.
To bring a claim that does not succeed, which has difficulties because of the passage of time or where there turns out to be a lack of conclusive evidence does not amount to Reverse Domain Name Hijacking where it essentially must be shown that the complainant has tried to harass the respondent, which is not so in the present case.
In any event, the Panel has discretion on this matter and after considering all of the evidence and the submissions the Panel declines to make a finding of Reverse Domain Name Hijacking.
By Michael Berkens
15 Year Old AGL.com Saved In UDRP; But 1 Panelist Wanted To Give It To The TM Holder
AGL Energy Limited of Melbourne, Australia just lost its attempt to grab the 15 year old domain name AGL.com.
ESQwire.com represented the domain owner John M. Van John.
Its a pretty interesting case because one member of the three member panel, Andrew F. Christie seemed to apply a new standard to a generic domains subject to a trademarked and wanted to give the domain to trademark holder, the more interesting of which we highlighted in Bold below.
Moreover the panel outright rejected the doctrine of Latches despite the domain being 15 years old, and our opinion of that appears after the decision
Here are the relevant facts and findings by the three member panel:
“”The Complainant is an Australian company which generates and distributes energy and gas, and operates other businesses related energy production and maintenance. The Complainant has been operating since 1837 under the name The Australian Gas Lighting Company.
In 2006, The Australian Gas Lighting Company merged with Alinta Limited to form AGL Energy Limited.
The Complainant’s business generated earnings of over $1 billion (AUD) in the last financial year. The Complainant is the owner of the trademark AGL, including:
Australian Registration No. 785307 for AGL filed February 11, 1999
Australian Registration No. 285852 for AGL & Design filed March 18, 1975
Australian Registration No. 285853 for AGL & Design filed March 18, 1975
The Complainant also owns 14 New Zealand trademark registrations incorporating the mark AGL and 44 domain names incorporating the mark AGL, including and .
The disputed domain name was first registered on or about September 2, 1999 in the name of the Respondent James M. van Johns.
The disputed domain name was subsequently registered in the name of various other parties, with the Respondent re-acquiring the disputed domain name on August 1, 2011 (according to an admission contained in the Response).
The domain name has historically reverted to a parking site providing links to websites of third parties which are unrelated to the energy industry, but the current version of the parking site displays links to websites, most or all of which appear to be related to the Complainant’s field of business.
“The Respondent has raised substantive arguments to the effect that trademark rights in 3 letter combinations such as “agl” are inherently weak and subject to a narrow ambit of protection. ”
“On the factual record set out in this case, the Respondent has shown that there are many users of the “agl” combination for a wide range of businesses across various countries. ”
There is no reason to disbelieve Respondent John M. van John’s avowed ignorance of the Complainant’s trademark rights in AGL at the time of his initial registration of the disputed domain name, particularly in light of the following factors:
(1) the Australian focus for the Complainant’s business activities;
(2) the Respondent’s U.S. residence;
(3) the Respondent’s business model which involves the registration of hundreds of 3-letter domain names on a large commercial scale.
Panelists Pibus and Cabell have considered the questions raised by the Complainant with respect to the Respondent’s recent website activity involving links to energy-related sites. In this regard, the evidence of Mr. Van Johns is noted, to the effect that
(1) over the prior 14 years, no such energy-related links were used; and
(2) all links over the history of the Respondent’s website were auto-generated in any event.
Accordingly, panelists Pibus and Cabell consider that the evidence supports the conclusion that the Respondent has not targeted the Complainant’s trademark rights or reputation in adopting the domain name, but rather has followed its own business model of registering 3 letter combinations, one of which happened to coincide with the Complainant’s trademark.
In all the circumstances, panelists Pibus and Cabell conclude that the Complainant has not established the absence of rights or legitimate interests on the part of the Respondent.
Panelist Christie considers that the question of whether or not the Respondent targeted the Complainant’s trademark rights or reputation when registering the disputed domain name is simply not relevant to the issue of whether the Respondent has rights or legitimate interests in the disputed domain name (although it is relevant to the question of whether Respondent has acted in bad faith).
Panelist Christie accepts that the Respondent has adopted a business model of registering three-letter combinations, but considers that this alone does not give rise to rights or legitimate interests in the disputed domain name. That fact that a domain is commercially attractive of itself is insufficient to establish rights or legitimate interests in it.
If it were otherwise, then the mere fact of registration of a domain name would give rise to rights or legitimate interests in the domain name because it must be assumed that every registered domain name is commercially attractive to the registrant for some reason.
Panelist Christie considers that the Respondent must show something other than mere commercial attractiveness of the disputed domain name to establish rights or legitimate interests in it.
In particular, the Respondent must establish some bona fide connection between its activities (actual or proposed) and the disputed domain name, such as those specified in paragraph 4(c) of the Policy – that is, such as by using the disputed domain name in connection with a bona fide offering of goods or services, being commonly known by the disputed domain name, or making a legitimate non-commercial or fair use of the disputed domain name.
The Respondent has not and, in Panelist Christie’s view, cannot in this case make out any such connection between the disputed domain name and its business activity – which is to capitalize on the value of the Complainant’s trademark by using the disputed domain name to obtain pay-per-click revenue by linking to third party websites most or all of which are related to the Complainant’s field of business, in the most recent version of the Respondent’s website.
Panelist Christie adopts the consensus view set out in paragraph 2.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) on the issue of whether parking and landing pages or pay-per-click links generate rights or legitimate interests in the disputed domain name: “Panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a ‘bona fide offering of goods or services’…or from ‘legitimate noncommercial or fair use’ of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder.
As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value (a result that PPC page operators can achieve by suppressing PPC advertising related to the trademark value of the word or phrase).
By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion.”
Accordingly, Panelist Christie finds that the Respondent has not established that it has rights or legitimate interests in the disputed domain name.
In reaching their conclusions, all members of the Panel wish to make it clear that they have not accepted the Respondent’s argument with respect to laches.
Although significant time has passed since the original registration of the disputed domain name in 1999, its ownership has changed hands four times, according to the Respondent’s own admission.
The changing of identity of the Registrant (including James M. Van Johns, Damian Macafee, John Smith) over the course of the past 15 years, renders problematic any argument that the 15 year period ought to accrue to the benefit of any one of the owners, and particularly the last one in the sequence, Respondent James M. Van Johns, who, according to his Response, acquired the disputed domain name on August 1, 2011.
Therefore, a majority of the Panel (panelists Pibus and Cabell) finds that the Complainant has not satisfied the requirement under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
In view of the findings under section 6.B., the Panel will not make a finding with respect to bad faith.”"
Its seem to me that on the issue of laches, the panel missed the boat.
They rejected Laches because the domain name changed had 4 times over 14 year (winding back with the original registrant).
In my opinion, the Panel missed the point and an opportunity to explain/apply the doctrine.
Here, Complainant watched a 15 year old domain name change hands 4 times and took no action. That is what Laches is all about, resting on your rights.
If the Complainant had really believed its rights were being trampled it would and should have acted sooner, and Respondent would have never been placed in the position to be able to purchase the domain name for the second time in 2011.
By Michael Berkens
Andtech Corporation just lost its attempt to grab the domain name andtech.com from the domain owner Portmedia Domains/Portmedia Holdings Ltd which was represented by Ari Goldberger of Esqwire.com
Andtech Corporation just lost its attempt to grab the domain name andtech.com from the domain owner Portmedia Domains/Portmedia Holdings Ltd which was represented by Ari Goldberger of Esqwire.com
The Complainant Andtech got its trademark on Christmas Day 2012.
The domain name owner registered the domain September 4, 2003.
The Complaint offered $1,000 for the domain and the domain owner responded with a $20,000 offer to sell.
Instead of buying the domain the complaint decided to spent $5K or more to file this pretty crappy UDRP which the panel threw out however failed to find Reverse Domain Name Hijacking (RDNH) although I don’t know why
Here are the relevant facts and findings by the three member panel:
Complainant states that the term “Andtech” in its ANDTECH trademark is a coined term used since 1990. Furthermore, there is no dictionary meaning for the term “Andtech” according to Complainant.
According to Complainant, Respondent’s rejection of Complainant’s offer to purchase the disputed domain name for $1,000, and subsequent demand of $20,000 in exchange indicates Respondent’s lack of rights or legitimate interests in the disputed domain name.
Complainant adds that Respondent is not using the disputed domain name to make a bona fide offering of goods or services. Andtech Corporation emphasizes that Respondent has used the disputed domain name since 2004 to attract Internet users to its web portal, and as a result collects revenue from Internet users seeking Complainant’s business.
With respect to the issue of “bad faith” registration and use, Complainant contends that Respondent’s request of $20,000 for the disputed domain name constitutes an attempt “to profit from the sale of the Domain Name to Complainant.” Andtech Corporation reports that Respondent’s website features an offer to sell the domain name to anyone wishing to make an offer. Furthermore, according to Complainant, Respondent registered the disputed domain name for the purpose of redirecting Internet users, seeking Complainant’s business, for its own commercial gain from pay-per-click fees.
“The Panel finds that the trademark in which Complainant has rights and the disputed domain name are identical; that Respondent has rights or legitimate interests in the disputed domain name; and that the domain name was not registered and is not being used in bad faith.”
The Panel concludes that Complainant has not sustained its burden of proving that Respondent has no rights or legitimate interests in the disputed domain name.
The Panel is persuaded that Respondent is using the domain name in connection with a bona fide offering of goods and services and is making a fair use of the domain name.
Upon review of all the evidence, the Panel finds that Respondent’s use of a disputed domain name to feature pay-per-click links was a bona fide offering of goods and services.
The Panel concludes that the disputed domain name was not registered and is not being used in bad faith. The Complainant’s reliance on Respondent’s alleged use of a privacy service does not convince the Panel that the domain name was registered in bad faith. Nor does the fact that Respondent presumably earns income from its pay-per-click site.
The evidence indicates that Respondent has not registered or used the andtech.com domain name in bad faith having not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
Furthermore, according to the Panel, Respondent’s offer to sell the disputed domain name does not constitute bad faith use and registration.
The evidence further indicates that Respondent had no intent to sell the domain name to Complainant under Policy ¶ 4(b)(i) when Respondent registered the disputed domain name.
In addition, the standard link “To purchase this domain, click here,” appears on all of Respondent’s hosted websites, and is not used to attract Internet users to the site by creating a likelihood of confusion with the trademark.
Therefore, the Panel agrees that Respondent’s attempt to sell the disputed domain name was not done in bad faith pursuant to Policy 4(b)(i).
As per the evidence, there was no attempt on behalf of Respondent to disrupt or compete with Complainant’s business. Respondent uses the disputed domain name to post auto-generated pay-per-click ads for technology related items and does not target Complainant’s business.
Upon review of all evidence, there is no proof of bad faith registration or use relating to the andtech.com domain name because Respondent had no reason to know about Complainant or its alleged common law trademark.
Previous panels have found that actual knowledge of a complainant and its mark must exist for a finding of bad faith.
Doctrine of laches
Having regard to the evidence and submissions and to the fact that the proceeding can be determined on more substantive issues, the Panel declines to find that the doctrine of laches should operate as a defense in this case.
Respondent claims that Complainant waited over ten years from the date the disputed domain name was registered to initiate this Complaint and that this delay can indicate that Complainant did not believe that Respondent engaged in abusive domain name registration.
However, the elements required to apply the defense of laches have not been met given that no detriment has been shown.
For those reasons the Panel declines to apply the doctrine of laches as a defense.
By Andrew Allemann
Complainant argues that two panelists are biased and should not hear the case. The panel disagrees. Last week a World Intellectual Property Organization panel handed down a decision in a UDRP brought against ParkRoyal.com. The panel found in favor of of respondent Vertical Axis, which was represented by ESQwire. But the decision itself was only a sideshow to a battle over panelists.
In a three person panel, both the complainant and respondent get to suggest three panelists. WIPO then selects one from each list. Each party also plays a role in selecting the presiding panelist.
Naturally, when it comes to the initial suggestions, each party selects panelists that they believe will be more favorable to their position. The complainant is going to name panelists who lean toward complainants or have decided on issues in previous cases relevant to the instant case. The respondent has a similar mindset and looks for panelists that it believes will give it a fair chance, not the other way around.
In the ParkRoyal.com case, the complainant suggested that two of the respondent’s panelist suggestions were inherently biased in favor of the respondent. The panel found otherwise, and it went through a lengthy discussion of the complainant’s challenge.
The panel acknowledged the the three person panel process was designed to allow each party to make a contribution to the selection of one panel member and the third member of the panel. It determined that there could be a challenge to a clear case of bias, but that the complainant had not made a good case that either of the panelists should be dismissed for clear bias. Merely ruling in a certain way in previous cases is not a sign of bias.
In this case, one panelist recused himself rather than have to defend his record. That’s an unfortunate result.
This case will undoubtedly be looked to as precedent in future cases in which complainants try to get panelists dismissed.
By Andrew Allemann
Arbitration panel rules that NC State shouldn’t get Wolfpack.com domain name.
North Carolina State University, whose athletic teams are called the Wolfpack, has lost a domain name arbitration case for the domain Wolfpack.com.
The university filed the case against a company that registered the domain name in 1997. The university argued that the domain name was registered for the purpose of selling it, and used an unsolicited 2007 letter from the domain owner offering to sell the domain name as evidence.
The domain owner said he registered the domain name for a snowshoe project, and provided as evidence that he registered other Wolfpack product domains around the same time. He also argued that wolfpack is a generic term. When he eventually tried to sell it he reached out to multiple parties. Finally, he said the delay in the university bringing this case should be used against it.
The University responded to that last point by saying it sent its first demand letter to the respondent in 2002. This is, in some ways, damning to the university since it suggests it did not really feel like it had enough rights, otherwise it would have followed through in going after the domain.
A three person National Arbitration Forum panel ruled that it’s not clear the domain owner was specifically targeting the university in its registration, that there are many other companies with trademarks for “wolfpack,” and that at the end of the day the domain is a generic term with many plausible uses and reasons for registration.
The respondent was represented by Ari Goldberger of Esqwire.com.
By Michael Berkens
YU.Com Saved In One Of The Strangest & Longest UDRP Rulings Of All Time Source: http://www.thedomains.com
We finally have a decision on the UDRP for the domain YU.com, as the majority of a three member UDRP panel rejected the claim of the Two Way NV/SA of Waregem, Belgium.
We already know the UDRP Panel took what maybe the longest time to ever decide a URDP, nearly six months since it was filed.
Actually its one of the few things the panel may have agreed on as the decision starts off with this wording: “The decision has taken too long”.
In what is certainly one of the strangest UDRP decisions we have ever read, with the Complainant/ trademark holder trying to disqualify one of the panelists, the Honorable Neil Brown and where another panelist Mark Ming-Jen Yang, refused to be “associated with the decision.”
The was no doubt a battle amongst the panelists on what seems to be a slam dunk case, of a generic term, a two letter domain registered years before the trademark was registered seemingly based a position taken by a panelist, Mr. Yang, which I believe should bar the panelist from ever handling another UDRP.
Each of the panelist remaining after Mr. Yang bailed on making a decision even lay out their own arguments on why the domain holder had a legitimate interest int he domain and lack of bad faith.
The domain holder was represented by ESQwire.com PC
Here are the relevant facts and findings:
On August 24, 2011, Complainant filed an application for a European Community trademark for YU, in connection with goods and services relevant to its proposed business; it obtained registration of the trademark on January 25, 2012 as trademark registered number 010214666.
The disputed domain name was registered by Respondent on November 18, 2006 when it acquired it from a previous owner and Respondent has retained the disputed domain name since then.
Respondent uses the disputed domain name for the operation of a website that displays “pay-per-click” advertising links relating to general interest goods and services. The links are automatically generated by a third party provider.
Respondent’s website also invites offers to purchase , but it is said that the owner may not respond to offers of less than USD 1.67 million.
Complainant is a developer of mobile telephone applications, known as apps, and has plans to bring to market an app with the name YU, but has not yet launched it or commenced commercialization.
It wishes to have the domain name yu.com to use as part of its app, by which its customers will be able to participate in public games, buy tickets or products, receive discount coupons and other services, and also to use it to provide, for consumers who do not have a smartphone, the same services via the Internet as it intends to provide via the app.
The word “yu” is the Anglicized rendering of a common last name in China.
Decision by Majority
“This case has taken far too long.”
“The Rules require a three-member Panel decision to be by majority, and make allowance for any dissenting opinion.”
“Following extensive and exhaustive deliberations between the appointed members of this Panel over months, a majority comprising Panelists Brown and Christie has ultimately found it necessary, as the only viable option for bringing the matter to a conclusion, to render a decision by majority.”
“In the closing days of the Panel’s deliberations, Presiding Panelist Yang indicated that he did not wish to be associated with membership of this Panel which is issuing a majority decision, and that he had nothing more to say.”
Each member of this Panel duly accepted to serve a number of months ago. The Rules only provide for possible appointment of a substitute panelist where circumstances disclosed after appointment give rise to justifiable doubt as to the impartiality or independence of an appointed panelist. It is furthermore generally understood that absolute incapacity or unavailability on the part of an appointed panelist may provide a basis for substitution.
Subject to such exceptional scenarios, an appointed panel generally sees the matter through to a decided conclusion.
On this basis, while noting Presiding Panelist Yang’s very recent stated intention to not be associated with membership of this Panel which is issuing this majority decision, Panelists Brown and Christie regard the Panel to be, and to always have been, comprised of its three appointed members.
In all of the circumstances, Panelists Brown and Christie, mindful of the interests of the parties, consider it justified, and indeed necessary, for a decision to be issued on this basis.
The decision must be read in this light, without presumption as to Presiding Panelist Yang’s views on any aspect.
7. Preliminary Issues
A. Complainant’s Application for Disqualification of a Panelist
In this proceeding Complainant applied to the Center to disqualify Panelist Brown from being appointed as a member of the Panel and, that application having been unsuccessful, has renewed it before the Panel and thus in effect has asked for the recusal of the panelist. It is to that application that the Panel now turns.
“On January 14, 2013 counsel for Complainant objected to the Center against the nomination of Panelist Brown and also the nomination of Respondent’s second nominee. ”
“The ground of the objection was that neither nominee could “credibly declare that they are impartial and independent to adjudicate this case”.
“The reason advanced for this assertion was that because of the nominees’ nomination in other UDRP cases by counsel for Respondent, they both had “a financial interest in as much as possible finding in favour” of counsel for Respondent and its clients. An additional ground of objection to the second nominee was that the second nominee “… and … (counsel for Respondent) have the same nationality. In addition … (the second nominee)… is an American citizen, and (counsel for Respondent) is an American law firm”.
“The Center replied to counsel for Complainant on January 22, 2013, stating inter alia that the Rules “include no provision for either party challenging the nominated co-panelist of the other party” and also that “we see no evidence of material conflict as such and accordingly we will proceed to invite party nominated co-panelist candidates as provided under the Rules”.
“On January 23, 2013 Panelist Brown submitted his Declaration of Impartiality and Independence to the Center, declaring his impartiality and independence. However, Complainant persisted with its objection.
“First, it took issue with the Center’s decision to disallow the objection and claimed that this decision was “unduly motivated, or even not motivated at all”. It then renewed its objection to the Panel. The challenge having been made, the Panel has naturally examined the Policy and the Rules to ascertain what, if any, powers it has to entertain it. Taking the view that neither the Panel as a whole nor any combination of Panelists has jurisdiction to decide Complainant’s challenge, the Panel notes the following”
The Panel has been able to locate only two previous decisions that touch on this issue.
They are Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505 and the later decision of Kathleen Kennedy Townsend v. B. G. Birt, WIPO Case No. D2002-0030. In the Britannia case, the distinguished sole panelist decided that there was jurisdiction in the panel to decide the challenge.
He said:
“Neither the Policy nor the Rules explicitly creates a procedure through which a party can raise concerns about the suitability of a designated panelist. Rule 8 does, however, contemplate that a party may seek to communicate with a panel through the provider or with the provider itself. More importantly, it is critical that a mechanism be provided to ensure compliance with Rule 7, and also with the prescription of Rule 10(b) that all parties be treated with equality and be given a fair opportunity to present their case. Accordingly, this Panel finds it appropriate for a party with concerns about a panelist’s impartiality to communicate with the provider in order to raise any such concerns and to seek a prompt and fair resolution. In the event the provider declines to disqualify the panelist, it is equally appropriate for the party to move for the panelist’s recusal.”
The decision in the Kennedy Townsend case was, in effect, to the contrary. In that case the panel was a three-member panel and the presiding panelist was called on to decide the challenge. In an interim order, he decided that “[n]othing in the [Rules or Supplemental Rules cited by the Respondent] empowers the Presiding Panelist, or indeed a majority of the Panel, to rule on a Request for Recusal of a fellow Panelist. The presiding Panelist therefore has no jurisdiction to deal with this request […]. Accordingly, the Presiding Panelist declines to rule on the Request for Recusal or to consider it for any purpose”.
This Panel notes the fact that neither the Policy, the Rules nor the Supplemental Rules expressly provide a legal basis for one party to challenge the impartiality and independence of a panelist, in a three-member panel case, who was appointed by the Center from the list of candidates nominated by the other party.
It must further be recognized that in the case of a three-member panel, the UDRP process empowers each party to take an active role in the composition of the panel. Each party submits its list of three candidates (in order of preference) to be a panelist and the Center appoints one of them if it can, respecting the party’s preferences to the extent practical. As for the selection of the presiding panelist, each party is entitled to state its preferences from a list of five candidates assembled by the Center, and the Center will take each party’s preferences into consideration; specifically, the Center will balance their respective preferences. Accordingly, neither party “chooses” the presiding panelist, but both parties contribute to his or her appointment.
It is therefore clear from this analysis that the selection process for a three-member panel is deliberately designed to ensure that each party may make a significant contribution to the selection of one panel member and to the decision by the provider on the third member of the panel.
In these circumstances, it is not surprising that there is no express provision in the Policy or the Rules for one party to challenge the appointment of the other party’s panelist or the appointment of the presiding panelist.
For the same reason it is difficult to imply such a right when the whole structure of the system is to give an unchallenged right to parties in three-member panel cases to nominate one panelist and influence, to some extent, the choice of the third panelist.
The Panel also notes that, while it respects the strength of the reasons for decision in the Britannia case, that decision concerned a single-member panel, whereas the Kennedy Townsend case and the present case concern a three-member panel and in those cases each party has by design the ability to influence the appointment of one member of the panel, a dynamic that inherently is not in play in a single-member panel.
Accordingly, the Panel concludes that it has no jurisdiction to entertain Complainant’s challenge to the appointment of Panelist Brown.
8. Discussion and Findings
A. Identical or Confusingly Similar
Complainant must show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights (paragraph 4(a)(i) of the Policy).
Complainant argues that it is identical to the trademark it relies on, namely its European Community mark registration for YU. It also submits that for the purpose of this comparison, the suffix “.com” which is a generic Top Level Domain should be ignored. The Panel agrees with these submissions.
It is true that the trademark in question was applied for on August 24, 2011 and registered on January 25, 2012, and that both of those events occurred well after the disputed domain name was registered on November 18, 2006.
However, it is now generally accepted that the consequences of such a series of events is not relevant to paragraph 4(a)(i) of the Policy, where the issue is whether Complainant has a trademark, not whether it had one at the time of registration of the disputed domain name; the latter consideration is left to the analysis of paragraph 4(a)(ii) and (iii) of the Policy.
The Panel therefore finds that Complainant has met the requirements of the first of the three elements that it must establish.
B. Rights or Legitimate Interests
Complainant must show that Respondent has no rights or legitimate interests in the disputed domain name (paragraph 4(a)(ii) of the Policy).
Panelist Christie considers that Respondent has no rights or legitimate interests in the disputed domain name. Panelist Brown is of the contrary view. The reasons of the Panelists for their respective views are set out below.
Panelist Christie
Respondent asserted that it did not register (or did not purchase and renew) yu.com with Complainant’s trademark in mind because it did so in 2006, well before Complainant filed its YU trademark application that became registration and notes that Complainant had not yet begun commercialization with the trademark YU.
Respondent says that it has registered “…thousands of generic dictionary common word domain names, three and four letter domain names, and common surnames as domain names…” and gives examples such as , , <chavin.com”>, , all in a commercial venture to monetize valuable but “underdeveloped” words; and that “yu” is a “common family name subject to extensive third party use entirely unrelated to Complainant”.
Respondent explained its intentions and hopes about yu.com: “It was purchased (and renewed) because of its inherent value as a widely known surname. Therefore, any party with the last name “Yu” is likely to be attracted to the site and can use the links to find valuable information. Moreover, the Disputed Domain is offered for lease or sale (likely to a person that has the last name Yu)…” (Respondent’s Reply [22]).
Panelist Christie can arguendo accept the preceding assertions as true and still find unresolved the question of whether Respondent’s use of generates rights or legitimate interests therein under the Policy.
Panelist Christie refers to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). Specifically:
2.2 Does a respondent automatically have rights or legitimate interests in a domain name comprised of a dictionary word(s)? The Consensus view is:
“Normally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning (and not, for example, to trade off third-party rights in such word or phrase)”.
2.6 Do parking and landing pages or pay-per-click links generate rights or legitimate interests in the disputed domain name?
“Panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services”…. As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP”.
Mapping the above UDRP jurisprudence requirement of “connection” to the present situation, Panelist Christie cannot find in Respondent’s submissions where it shows or explains how its PPC links are “genuinely related to the meaning” of the (family) name “yu”. He does not consider Respondent’s use of to generate rights or legitimate interests therein. That use is for a PPC site where the links have no connection to the word “yu” (as a family name, personal name, nickname or even as the (English) phonetic equivalent or pun of “you” – Respondent has made no attempt otherwise).
Respondent’s PPC links are unrelated to “yu” and are unrelated by design of Respondent. In fact, the only “connection” asserted by Respondent to “yu” as a last name is that it is a last name to attract “visitors” for links to “valuable information” which have nothing to do with “Yu”.
The preceding notion can be said of any name and of almost any website – simply replace “yu” in the preceding with any other term to arrive at the conclusion that Respondent’s assertion is simply a truism that, if accorded some application to “yu”, would be repugnant to the consensus view of panels reflected in the WIPO Overview 2.0.
Panelist Brown
Respondent put its case on the basic proposition that was chosen because Yu is a common Chinese surname and should thus be seen as analogous to those cases where a domain name is a generic or common word. In cases concerning a generic or common name, a principle and practice has been developed to the effect that this situation gives rise to a right or legitimate interest in the domain name provided that it is not used to target a trademark or its owner or to engage in other inappropriate conduct that is deleterious to the Complainant.
The cases where that principle has been applied are many and Respondent has cited some of them in its submission. The principle is also based on good common sense, as it enables the Internet and the domain name system to operate with reasonable freedom and at the same time protects trademark owners from unjustified attacks on their intellectual property.
In the present case, Respondent says that using a personal name as a domain name is tantamount to using a generic or common word and should be judged according to the same principles. There are clear decisions to the effect that this is a sound argument; indeed, it is accepted as an established principle and practice in domain name arbitration.
Applying the principle to the present case, then, it may be said that Respondent, first, in its evidence established, that “yu” is a common surname in the Chinese language, and, secondly, gave evidence that it was motivated by that fact in registering the domain name and, conversely, it was not motivated by the fact that the domain name was also a trademark. The latter point is pivotal to the present issue, as panelists rightly look to see if the registrant knew of the trademark owner or its trademark or had any other knowledge tending to suggest that it was targeting the trademark owner. That is vital, as the whole purpose of the UDRP is to inquire if the trademark owner is being attacked by the registrant of the domain name.
In the present case, however, it would have been impossible for Respondent or anyone else to have targeted a trademark for YU as none existed at the time or for years after the disputed domain name was registered and, indeed, nor had the eventual trademark owner, Complainant, even commenced the business that it is now keen to start.
It is therefore inconceivable that Respondent targeted Complainant or its trademark and equally inconceivable that it was acting in any way other than in good faith. The absence of any evidence to the contrary makes it more likely than not that Respondent registered the disputed domain name for the reasons it has given in its evidence, namely that it was attracted to the name because it is a common Chinese surname. At least, that explanation is plausible.
However, Respondent has used the website to carry links to generic sites promoting a wide variety of general goods and services. Thus, for example, there are links to insurance, cruises, lawyers, motor vehicles, finance and all of the other blandishments of modern life. They are in fact as general as goods and services could possibly be. Against this, however, it is said that the links are not related to the meaning of the name Yu and are therefore out of order. But that view is contrary to the decided cases. In Altom, the advertisements were for jobs couriers and related areas (and the Complainant was a software company with nothing to do with jobs or couriers); in Lana, the advertisements were for shopping , holidays, machinery, hot rods and other general lines of goods and services. In Rusconi, the site was used for a web mail interface. In Etam, the domain name was linked to an adult website. In all of these cases the domain name was legitimate. In all of them the links were generic, as was the domain name. In none of them was there any material directly linking the domain name to the names “tammy”, ”lana”, ”donna” or anything else; they were legitimate because they were generic goods and serviced hosted on a website to which a generic domain name resolved. There is no difference between these cases and the present case and, consistent with previous decisions and general principle, the generic use of the disputed domain name gives rise to a right or legitimate interest in the disputed domain name.
C. Registered and Used in Bad Faith
Complainant must show that the disputed domain name has been registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).
Panelists Brown and Christie find that Complainant has failed to establish that the disputed domain name has been registered and is being used in bad faith for the purposes of paragraph 4(a)(iii) of the Policy. Thus, Complainant has not met the requirements of paragraph 4(a)(iii) of the Policy, and the Complaint fails.
The reasons of the Panelists for their respective conclusions are set out below.
Panelist Christie
Complainant has not established the existence in this case of any of the circumstances enumerated in paragraph 4(b) of the Policy as being evidence of registration and use of the disputed domain name in bad faith.
However, the paragraph 4(b) circumstances are not exclusive of the circumstances that evidence bad faith, as the words “in particular but without limitation” make clear. Thus, circumstances other than those specified in paragraph 4(b) can establish the existence of bad faith action sufficient to justify the award of a remedy under the Policy.
Complainant has asserted that Respondent’s failure to correctly identify itself in the disputed domain name registration information and thereafter constitutes other circumstances that evidence bad faith for the purposes of paragraph 4(a)(iii) of the Policy.
In this Panelist’s view, for “other circumstances” to justify the award of a remedy they must be of a level of gravity proximate to the level of gravity of the circumstances specified in paragraph 4(b).
Put another way, to determine when “other circumstances” of bad faith are sufficient to justify the award of a remedy, requires an approach similar to the approach embodied in the ejusdem generis principle of interpretation of legal instruments. (In simple terms, the ejusdem generis principle of interpretation holds that where an enumeration of specific items is stated to be inclusive, only non-enumerated items of the same genera as the enumerated items are included.)
An ejusdem generis-like approach to determining which “other circumstances” are evidence of bad faith for the purposes of paragraph 4(a)(iii) requires consideration of whether the seriousness of the consequences of those circumstances are on a par with the seriousness of the consequences of the paragraph 4(b) circumstances. The seriousness of the consequences of a registrant’s self-misidentification here is not on a par with the seriousness of the consequences of the circumstances enumerated in paragraph 4(b). Unlike the paragraph 4(b) circumstances, a registrant’s self-misidentification does not, of itself, inevitably cause damage (as distinct from mere inconvenience) to the complainant. That this is so is evident from the fact that an inability to correctly identify the registrant did not preclude Complainant from bringing this proceeding under the Policy. As published decisions under the Policy attest, innumerable complainants have succeeded in proceedings where the true identity of the respondent is never established.
Panelist Brown
Panelist Brown agrees with the reasons given by Panelist Christie and adds the following further reasons.
Essential to this issue is whether bad faith of any sort has been demonstrated, within the generally accepted meaning of that expression. Bad faith necessarily carries a connotation of ill-will or bad motives towards a target. But there has been none of that in the present case, as Respondent has not done anything to harm Complainant, inconvenience it, deceive it or engage in any other untoward conduct towards it. Certainly there is no evidence or probability that could bring the case within paragraph 4 (b) (i) – (iv) of the Policy, as Panelist Christie has explained. Accordingly, if bad faith is to be established at all, it will not be found within the provisions of paragraph 4 (b) of the Policy but will have to be found under the general heading of bad faith or circumstances not specified in paragraph 4(b) (i)-(iv). It is here that the case of Complainant fails for there is no such bad faith that has been shown.
Complainant’s case is that it does not yet have a business using the expression “yu” on its app, but that it is minded to establish one and that, to that end, it has registered the trademark YU.
But Respondent acquired the disputed domain name several years before, on November 18, 2006 and for practical purposes is taken to have registered it on that date.
However, the trademark was not applied for until 5 years later, on August 24, 2011 and registered on January 25, 2012.
Accordingly, the trademark was not registered or even applied for until several years after the disputed domain name was registered.
It is therefore impossible to see how Respondent could have been motivated by bad faith towards Complainant or its trademark or anything else relating to the Complainant when, at the time of registration of the disputed domain name, Complainant’s trademark did not exist, had not even been applied for and Complainant had no business that could have been harmed by the use of the disputed domain name.
The principle on which those conclusions are based has been articulated in many decisions. Common to those decisions is the principle that bad faith cannot be shown unless the trademark relied on was registered before registration of the domain name.
In any event, the worst that can be said of Respondent is that its registration of the domain name was not “complete and accurate” or within similar expressions used in the Policy. There is, however, insufficient evidence to show that the registration was not “complete and accurate”. At best, the evidence relied on in the present case to show such incomplete information amounts to no more than minor inconsistencies.
Even if there were such evidence, correct identification of the registrant is not, as a general rule, something that is regarded by itself as of such significance that it can constitute bad faith and result in the transfer of a domain name. This is especially so given the existence of the UDRP – which is designed so that a remedy can be obtained (where warranted) whether or not the identity of the Respondent is known.
If a Complaint is filed against the registrant of record, the Complaint may proceed and succeed even if the true owner is not described completely and fully. If an order is made for transfer of a domain name, it is carried out even if the registrant is described inaccurately; any practitioner in the UDRP field has seen many cases where the domain name registrant is clearly a fictitious name and yet that does not prevent a Complaint from proceeding or an order for transfer being made and carried out.
In fact, although a UDRP action is nominally brought against the domain name registrant, in practice it is brought against the domain name – i.e. effectively it is an action in rem, not in personam. The correct description of the registrant is thus not of the significance or importance given to it by those who might say bad faith has been made out in this case. It was certainly not regarded by those who drew the UDRP as a ground of bad faith, as it is not specified as such and nor does it fit easily under the other circumstances category. It may be a breach of the registration agreement and consequences may flow from it if the Registrar takes action against the registrant. But that does not make it a form of bad faith, as the registrant may have had its own reasons, good or bad, for the incomplete description and yet such a shortcoming may not amount to bad faith.
D. Reverse Domain Name Hijacking
On balance, the Panel declines to make a finding of Reverse Domain Name Hijacking.
By Michael Berkens
PortMedia Domains Represented By Ari Goldberger Beats Back UDRP For Arrigo.com
Arrigo Enterprises, Inc. lost it bid to grab the domain name Arrigo.com away from PortMedia Domains who was represented by Ari Goldberger of ESQwire.com.
The term Arrigo is a common Italian surname.
The domain name was owned by the domain holder for 12 years and the Complainants trademark was first registered in 2012.
The panel however declined to make a finding of Reverse Domain Name Hijacking.
Here are the relevant facts and findings by the three member panel:
Complainant has rights to the ARRIGO mark by way of registration of the mark with the USPTO (Reg. No. 4,271,171, filed April 15, 2012, registered on Jan. 8, 2013), in association with automobile dealerships, automobile financing, repair or maintenance of automobiles, and the leasing of automobiles.
Complainant further argues that it has used the mark in commerce since December 1989.
Complainant asserts that the mark is used specifically in furtherance of Complainant’s automobile dealership in Florida.
Complainant avers that its dealership is one of the largest Chrysler/Jeep/Dodge dealerships in the United States.
However, Complainant has not provided evidence to suggest the mark would be known beyond Southern Florida.
Accordingly, the Panel does not consider this account to provide a sufficient basis for secondary meaning in the ARRIGO mark and finds, for the purposes of Policy ¶ 4(a)(i) and the present case, that Complainant’s rights in the mark does not date back to at least December 31, 1989.
“Complainant asserts that Respondent has used the domain name for almost twelve years as merely a landing page where Internet users are solicited through an array of random hyperlinks.
“The Panel notes that Complainant does not provide evidence of the content of the disputed domain name, but the Response includes an image purporting to show that the domain name is used to host hyperlinks.
“The Respondent admits to pay-per-click advertising revenues. Respondent argues that its rights are in fact bolstered by the fact that Respondent receives such revenues. Respondent claims that its advertising services are bona fide, and Respondent is not alone in using hyperlink advertisements on its domain name content pages.”
“The Panel agrees that the hosting of a hyperlink website can, under the right set of circumstances, constitute a Policy ¶ 4(a)(i) bona fide offering of goods and services.”
“Complainant argues that Respondent has made a thinly veiled attempt to sell this domain name.
Complainant contends that the domain name’s content page explicitly tells the Internet user: “To purchase this domain name, click here.”
“Complainant believes that the fact that Respondent is willing to give up ownership to any buyer is evidence that Respondent lacks rights and legitimate interests.
“Respondent states that its offer to sell this specific common/generic term domain name is in itself a bona fide offering of goods. Respondent insists that there is no evidence that Respondent ever intended to register and offer the domain name for sale specifically to extort Complainant and its ARRIGO mark.
“Respondent notes that it owns thousands of generic-term and other brand-potential domain names. Respondent claims that its rights and legitimate interests rest in the fact that it holds onto “brandable” domain names, such as the domain name, because of the value on resale. Respondent states that it is careful to choose possibly brandable names, but makes sure that these names have no existing trademark registrations. Respondent avows that it in no way registered this domain name in an attempt to target Complainant and its ARRIGO mark.
“Previous panels have found that the holding of a domain name for resale can in some circumstances constitute a Policy ¶ 4(c)(i) bona fide offering of goods and services.
“The Panel agrees that Respondent’s Policy ¶ 4(a)(ii) rights and legitimate interests rests on the fact that it registers and sells generic domain names—an arrangement practiced by many business entities.
“The Panel accordingly finds that under the present circumstances, Respondent’s offer to sell this specific common/generic term domain name is in itself a bona fide offering of goods.
“Respondent further argues that Complainant’s mark is not exclusively used in Complainant’s business. Respondent claims that the ARRIGO mark merely embodies a common Italian surname. Respondent states that its decision to register this domain name reflects Respondent’s interest in obtaining generic terms, but not because these generic terms are a particular party’s intellectual property.
“The Panel agrees that when the term “arrigo” has been long used as a mere surname of Italians, the registration of a domain name including that term gives Respondent rights and legitimate interests in the generic value of embodying a generic term in the domain name. See
“The Panel holds that Complainant has failed to make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The Panel finds to the contrary, that Respondent does have rights and legitimate interests in the disputed domain name under policy ¶ 4(a)(ii).”
Because Respondent has rights or legitimate interests in the domain name pursuant to Policy 4(a)(ii), it is axiomatic that Respondent did not register or use the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii).
The Panel finds that while the doctrine of laches does not apply as a defense, and correspondingly chooses to disregard Respondent’s assertions, the absence of any complaint over a long period of time in which domain names are in active use can suggest that such use does not give rise to a serious problem. “
As a matter of course, the Panel chooses to disregard Respondent’s assertions of a defense based on laches.
On the issue of Reverse Domain Name Hijacking, “even though the Panel finds that Complainant has failed to satisfy its burden under the Policy, this does not necessarily render a finding of reverse domain name hijacking on behalf of Complainant in bringing the instant claim. In order for reverse domain hijacking to exist, there must be a showing of bad faith on the part of the Complainant.”
“There is no evidence of bad faith on the part of the Claimant.”
By Michael Berkens
Vertical Axis Represented By Ari Goldberger Beats Back UDRP On Mclarin.com
Vertical Axis Inc. which was represented by Ari Goldberger of Esqwire.com, just beat back a UDRP on the domain name Mclarin.com.
The complaint was filed by McLaren Health Care Corporation which won all 11 previously filed UDRP cases including 10 it won so far in 2013 after getting a registered trademark back in October 2012.
The domain name was registered November 26, 2001.
“”Respondent points out that it registered the disputed domain name, , on November 26, 2001, and contends that it did so because mclarin.com is comprised solely of a common Irish last name, “McLarin.” Respondent indicates that it has registered thousands of generic dictionary and common word domain names, three and four letter domain names, and common surnames as domain names. Respondent hosts underdeveloped domain names with domain name parking services that pay a share of the advertising revenue they generate, which, according to Respondent, is “an industry-wide accepted practice.” Respondent emphasizes that it does not have any links related to Complainant or its business on its website. “The links are auto-generated by Google and are constantly changing based on Google’s keyword advertising inventory and user search behavior.”
“According to the Declaration of Leandra Wilfred-Boyce, the director of finance and operations for Vertical Axis, Inc., Respondent did not register the domain name with Complainant’s trademark in mind and had no knowledge of Complainant when it purchased the domain name at auction 12 years ago. Respondent contends that 12 years represents “a substantial delay by any measure and an eternity in `Internet time’,” and that such delay bars the complaint under the doctrine of laches.
“Respondent asserts that the disputed domain name is neither identical nor confusingly similar to the McLAREN mark. The mark and domain name, it points out, are different common Irish last names and consumers would understand that common last names like McLaren and McLarin are not the same.”
“The Panel concludes that Complainant has not met its burden of establishing that the disputed domain name was registered and is being used in bad faith. Indeed, Complainant seems to have conceded this point by noting, in both its Complaint and Additional Submission, that it has no objection to the registration of the domain name, only its use. However, the Policy requires both bad faith registration and use.”
“Even without this admission, however, the Panel finds the evidence wanting on the issue of bad faith registration and use. The Panel is not convinced that, at the time the domain name was registered, Respondent knew of Complainant or of its McLAREN mark and targeted such in registering the domain name.”
“Based upon its review of the evidence, the Panel concludes that it is more probable than not that Respondent registered the disputed domain name as part of its business model of registering common Irish surnames. The evidence indicates, for example, that, in addition to the domain name, Respondent also registered , , , , , and , as well as many other common Irish surnames.”
There is some evidence that the McLAREN mark was first used as early as 1951.
However, it appears that use of the McLAREN marks has taken place primarily in Michigan.
While there is some evidence of current advertising and promotional expenses, it is not clear that, in November 2001, when the disputed domain name was registered, Complainant’s McLAREN mark, which is comprised of a common Irish surname, had acquired such secondary meaning that we can reasonably assume that Respondent was aware of it at the time the domain name was registered.
Contrary to Complainant’s assertion, terms that are primarily merely surnames are descriptive in character. The fact that the McLAREN mark was registered only upon proof that the mark had acquired distinctiveness supports the finding that surnames are considered descriptive in character.
By Michael Berkens
The California Milk Processor which has a trademark on the term “got milk” lost its bid to get the adult domain name GotMilf.com, as the majority of three member panel found that the domain is not confusingly similar to the trademark.
The California Milk Processor which has a trademark on the term “got milk” lost its bid to get the adult domain name GotMilf.com, as the majority of three member panel found that the domain is not confusingly similar to the trademark.
If you don’t know what the term Milf means, I will go with the definition the panel found:
“A MILF may be defined as a mother – not one’s own, for there does not appear to be any Oedipal connotation – with whom one would fancy a carnal encounter.”
The domain holder was represented by ESQwire.com
Here are the relevant facts and findings by the panel:
Respondent registered the Domain Name on December 15, 2010, acquiring it from a prior owner.
The Domain Name had been registered to several previous parties in succession going back to March 2000.
For a period of time, Respondent’s website accessible via the Domain Name contained sponsored links to various websites. For example, on September 11, 2012, some of the links included: “Meet Gay Men for Sex Now,” “Hot Sex is Here,” “Watch Adult Cams Free 18+,” and “Free Gay Men Videos.”
Complainant sent Respondent an e-mail dated September 11, 2012, in which Complainant alleged that the Domain Name and its use were in violation of Complainant’s trademark rights.
Shortly thereafter, the content of Respondent’s website changed. By the time of Complainant’s October 5, 2012, follow-up letter, the website simply stated: “What’s a M.I.L.F.? – Coming soon!” It does not appear that Respondent communicated with Complainant prior to the filing of the Complaint in this proceeding.
“According to Respondent, there had been communications between the parties a year earlier, in September 2011, during which Respondent disputed Complainant’s contentions and after which a year passed with no further written word from Complainant. The record does not contain these alleged written communications from September 2011. Respondent claims that there were a few telephone conversations after the September 2011 exchanges.”
“There is no doubt that Complainant holds rights, through registration and use, in the mark GOT MILK? It is also beyond doubt that the Domain Name is not identical to the mark.”
“The question at the heart of this dispute is whether the Domain Name is confusingly similar to Complainant’s mark.”
The Panel majority concludes that the Domain Name is not confusingly similar to the mark GOT MILK? While the two are doubtless similar, they are not, in the Panel majority’s view, confusingly so.
First, the Domain Name and the mark GOT MILK? do not sound exactly alike.
Second, and this is a minor point, there is a question mark in Complainant’s mark, which is absent from the Domain Name.
Third, even though there is only one letter’s difference between the Domain Name and the mark (an “f” being substituted for a “k”), the difference is significant.
The substitution of “f” for “k” creates a new word and suggests an entirely different meaning.
Internet users may consult one of a number of sources for the meaning of the acronym “milf,” but in any event it is a rather vulgar slang term in fairly widespread usage.
A MILF may be defined as a mother – not one’s own, for there does not appear to be any Oedipal connotation – with whom one would fancy a carnal encounter.
According to Wikipedia, the term has been in usage since the 1990s, and it achieved a boost in popularity from its appearance in the 1999 movie American Pie.
The fact that the Domain Name has a meaning of its own weighs against a finding of confusing similarity to the mark.
Fourth, the Panel majority does not believe that the Domain Name can fairly be ascribed to typosquatting.
A typographical error typically emerges from one of three sources: (a) the typist is mistaken about, or does not know, the correct spelling of the word he or she is trying to type; or (b) the typist “fat-fingers” the keyboard and strikes a key adjacent to the one intended; or (c) the typist carelessly omits a letter or keys in a letter twice where only once was intended.i None of these circumstances applies here. It is doubtful that anyone actually believes that “milk” is spelled with an “f” instead of a “k.” Moreover, on the QWERTY and AZERTY keyboards, “f” and “k” are separated by several letters, and hence “fat-fingering” can be ruled out. Finally, the Domain Name does not reflect the careless omission of a letter, or the unintended repetition of a letter, from the mark in question.
Under these circumstances, the Panel majority simply cannot conclude that a meaningful number of Internet users would be confused by the Domain Name, nor that Internet users would mistakenly arrive at Respondent’s website by virtue of a typographical error.
Complainant cited two cases in support of its argument that the Domain Name was confusingly similar to its mark, America Online, Inc. v. John Zuccarini also known as Cupcake Message, Cupcake Messenger, The Cupcake Secret, Cupcake Patrol, Cupcake City, and The Cupcake Incident, WIPO Case No. D2000-1495, and Hobsons, Inc. v. Peter Carrington a/k/a Party Knight Inc., WIPO Case No. D2003-0317. The Panel majority believes that both cases are distinguishable. In Hobsons, each of the three domain names was a classic typographical error vis-à-vis the complainant’s mark COLLEGEVIEW. One domain name transposed two letters in a common misspelling (collegeveiw.com), one omitted a letter (colegeview.com), and the third substituted an incorrect vowel for the correct one in another common misspelling (collageview.com). The panel in Hobsons concluded that all three of the subject domain names “are almost identical – visually and phonetically – to Complainant’s mark COLLEGEVIEW. In fact, all three domain names are phonetically identical to Complainant’s mark.”
Similarly, all of the “typosquatting” domain names at issue in the America Online case – with one exception – may be ascribed to the same types of commonplace typographical errors (misspelling, fat-fingering, omission or repetition) as characterized the domain names in the Hobsons case. Only one domain name in the America Online case – – was found to be confusingly similar to the complainant’s mark (WINAMP) for reasons beyond commonplace typographical errors. The panel in America Online supported its finding of confusing similarity on the “demonstrable bad faith” of the respondent in registering the domain name. In so doing, the panel cited a prior decision under the Policy, Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477, which in turn had cited to a number of United States court decisions stating that, in connection with a “likelihood of confusion” analysis in trademark infringement cases under the Lanham Act, a tribunal may consider the alleged infringer’s “intent in selecting the mark.”
Notwithstanding the partial conflation of the bad faith and confusing similarity concepts in the America Online and Wal-Mart decisions, the Panel majority in the instant case is not convinced that it is appropriate to consider Respondent’s alleged bad faith in deciding the “confusing similarity” issue under the Policy. The alleged bad faith of Respondent is a separate element under the Policy. Nothing in the WIPO Overview 2.0 suggests that bad faith is a factor in deciding confusing similarity under the Policy. In any event, the Panel majority here concludes that, even if Respondent’s allegedly bad faith motivations here are brought to bear on the question whether the Domain Name and the mark are confusingly similar, such motivations are only one factor among many, and they do not alter the result.
In sum, the Panel majority’s application of the WIPO Overview 2.0 to the facts of this case, and the Panel majority’s consideration of the authorities cited by Complainant, yield the conclusion in this admittedly difficult case that the Domain Name is not confusingly similar to the mark GOT MILK? The Panel majority concludes that an Internet user confronted with this Domain Name is likely to be grinning, or groaning, or nonplussed – not confused.
Accordingly, the Panel concludes, by a majority, that paragraph 4(a)(i) of the Policy has not been established by Complainant.
Dissenting Opinion
I respectfully dissent with the majority in relation to their finding that the disputed domain name is not confusingly similar to the Complainant’s mark. I consider that it is. This is for the following reasons.
As noted by the majority, the WIPO Overview 2.0 states that the first element of the Policy is essentially a standing requirement. It involves a simple comparison between the mark and the disputed domain name to determine a likelihood of confusion. Prior panels have noted that this test “is effectively to assess whether a complainant has sufficient rights so as to give it standing to bring a complaint.” See, for example, Aubert International SAS and Aubert France SA v. Tucows.com Co., WIPO Case No. D2008-1986. Others have stated that it “is the simple appearance of similarity – to an Internet user – than can make the disputed domain name confusingly similar to the trademark.” Mejeriforeningen Danish Dairy Board v. Cykon Technology Limited, WIPO Case No. D2010-0776.
On these established approaches, I consider that the Complainant’s mark is confusingly similar to the disputed domain name. The Complainant’s GOT MILK? mark is well-known. The California Milk Processor Board v. Justin James, WIPO Case No. D2011-1816. This has been recognised in a previous decisions as a factor in a finding of confusing similarity. (See e.g. National Collegiate Athletic Association and March Madness Athletic Association, LLC v. Cyberoad Corporation, WIPO Case No. D2000-1378).
The Complainant’s rights in that mark arose before registration of the disputed domain name by the Respondent. Phonetically, visually, and in overall impression, the Complainant’s mark and the disputed domain name are closely similar. In my view, Internet users could reasonably be confused about the connection between the two, at least on an initial interest test.
Decisions under the Policy often refer to confusion to “an Internet user”. The Mejeriforeningen case, supra., is one. There is of course no single “Internet user” or a single body of Internet users. Rather, in my view, this term is used in reference to a hypothetical, ”Reasonable Internet user”. In other words, the central question under paragraph 4(a)(i) of the Policy is: Could a reasonable Internet user be confused about the connection between the disputed domain name and the mark?. Issues of, for example, side-by-side comparison, typosquatting, distinctiveness, and overall impression are essentially different forms of reasoning to answer this central question.
In this respect, I disagree with the majority finding that no meaningful number of Internet users could reasonably be confused by the disputed domain name. There is evidence in the case file that at least one portion of Internet users (although not quantifiable) may not be confused. These would be users who would understand the term “milf”. On the majority approach, these users would not reasonably consider there was any connection between the Complainant’s mark and the disputed domain name, which carries a pornographic connotation. However, such an argument, in circumstances also involving sexual-related terms, has been rejected by previous panels: see e.g. Arizona Board of Regents for and on behalf of Arizona State University v. Value Holdings, Inc., WIPO Case No. D2001-0445; General Electric Company v. Basalt Management, WIPO Case No. D2000-0925; and Microsoft Corporation v. S.L., Mediaweb, WIPO Case No. D2003-0538. It is an approach that has also been previously rejected by this Panelist (LEGO Juris A/S v. P N S Enterprises, WIPO Case No. D2009-0170). It is an argument that rests on the whole public being aware of all the associations of the Complainant’s mark.
There is no reason to think that all Internet users would have that level of awareness. The majority view rests substantially on the change of meaning rendered by the substitution of the letter “f” with the letter “k” in the disputed domain name. However, this meaning would be entirely lost on Internet users who did not understand the term “milf”. I think it reasonable to conclude that a meaningful number of Internet users would not understand that term and so would likely be confused about the connection between the disputed domain name and the Complainant’s mark. The term “milf” does not appear in a dictionary (at least, not one owned by this Panelist) and, as such, does not appear to be a common term. It no doubt has currency for one portion of Internet users. But the test of confusing similarity involves consideration of whether a meaningful portion of Internet users could be reasonably confused, rather than in finding some group of Internet users who might not be confused. . Previous panels have taken this approach in considering confusion arising in various contexts, e.g. a particular geographic area. Blue Cross and Blue Shield Association (BCBSA) v. Domain Deluxe, WIPO Case No. D2005-0209; and Skype Limited v. Benjamin Decraene, WIPO Case No. D2005-1112.
While not necessary for the conclusions reached above, this Panelist has also taken into account the Respondent’s likely intention in registering the disputed domain name. It seems unlikely that the Respondent was not aware of the Complainant’s mark and intended to benefit from the association between it and the disputed domain name. (There is, is acknowledged, a division of Panelist opinion on whether a respondent’s intent is relevant to the issue of confusing similarity. See e.g. The Toronto-Dominion Bank v. Boris Karpachev, WIPO Case No. D2000-1571, in which the panel considered that such intention is not relevant. In other cases, panels have found that it is relevant: Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477.)
This Panelist’s conclusion is not affected by considerations of whether this is a case of typosquatting. A negative finding on this point does little to affect this Panelist’s conclusions above. Other matters raised in the majority view are relatively minor (the non-appearance of the “?” which appears in the Complainant’s mark; the finding that the disputed domain name and mark do not sound exactly alike).
Despite this finding the minority of the Panel, like the majority, has found this a difficult case. The term “milf” has no doubt gained a meaning for a portion of Internet users. A Google search for “got milf” does not prominently feature results for the Complainant’s mark. Nevertheless, I consider that the stronger view, for the reasons above, is that the disputed domain name is confusingly similar to the mark.
Because of the majority finding on this issue, I agree it is unnecessary for the Panel to make a finding under paragraphs 4(a)(ii) and (iii) of the Policy.
By Ron Jackson
Another Win for Domain Owner Rights - Italian Company Loses Both UDRP & a 2nd Attempt to Take Name Through a Lawsuit
Source: http://www.dnjournal.com
Less than a week after Rick Schwartz scored an important UDRP win against a Brazilian company that tried to hijack one of his domains, comes word from Ari Goldberger's law fim, ESQwire.com, of a double-pronged victory for one of their clients, Didier Madiba of Wilmington, Delaware based Fenicius LLC, over Mediaset S.P.A., a company owned by Italian media magnate and former Prime Minister Silvio Berlusconi.
This fight over the domain MediaSet.com had more twists and turns than an Agatha Christie novel. Mediaset S.P.A. was a previous owner of the domain after successfully taking it away from the prior owner through an earlier UDRP action. However, MediaSet, in a stranger than fiction oversight, lost the domain when they failed to renew it and let it expire!
Ari Goldberger, ESQWire.com
That's where Madiba entered the picture. He picked up the domain on the drop with plans to develop it (plans that were waylaid when Madiba had to switch his focus to a more important battle after he was diagnosed with cancer). Shortly after that, Mediaset S.P.A. popped up again and filed another UDRP - this time against Madiba. Madiba turned to one of the domain industry's top attorneys in Goldberger (founder of ESQwire.com) and this time, thanks to a well-reasoned response from Goldberger, Mediaset S.P.A. lost the decision (.pdf file), allowing Madiba to keep the domain.
MediaSet S.P.A. did not let the matter drop there - instead they moved the ball to their home court - filing a lawsuit against Madiba at the Court of Rome in Italy. ESQwire.com worked with an Italian IP Counsel, Nicoletta Colombo, to defend Madiba and today they announced another victory. While the Italian judges understandably ruled that Mediaset S.P.A.’s Italian trademark entitled them to protection in Italy it did not give them the right to Madiba's domain. They ruled that he could keep MediaSet.com and is free to use the domain outside of Italy.
Speaking for ESQWire.com, Jason Schaeffer said, "Naturally, we are quite pleased by this decision and believe this is a great victory for domain owners. The Italian Court’s
recognition of the domain owner’s rights is encouraging and provides further support for the UDRP and a balanced approach to Trademark law." After years of seeing domain owner's rights repeatedly trampled on, recent decisions have been a most welcome turn of events - a trend we hope will continue in the future.
Congratulations to our client, Latin American Telecom, LLC, on their gTLD Application to ICANN for .TUBE
Latin American Telecom LLC (LATELCO), a Delaware corporation with principal offices in Pittsburgh, Pa. and Mexico City announced today that it has submitted an application to the Internet Corporation for Assigned Names and Numbers (ICANN) for the Top Level Domain (TLD) of “.TUBE”
One of the key objectives of adopting a gTLD is to give people and corporations worldwide the opportunity of registering domain names that are more personalized, easier to brand and more capable of building online presence and enhance user experience.
The term “Tube” has become the most accepted synonym for “video online.” What originated in Britain as slang for television has been adopted by Internet users worldwide, independent of their native language, to identify projects where uploaded videos play a considerable role in the user experience. Sites like YouTube.com, CitizenTube.com, TeachersTube.com, IranTube.com or IViewTube.com have established communities of user generated video content to connect people with shared interests.
With the option of powerful new domain names, the use of a generic, descriptive word, or branded term, combined with the suffix “tube”, developers will easily and immediately convey a site’s mission and purpose to users. There are thousands of ***tube.com sites that currently exist and follow this business method of selecting a clear, common word identifier to capture the power of the “generic brand name” and add to it the suffix TUBE.com. Very soon the owners of ComedyTube.com will be presented with the opportunity to opt for Comedy.Tube.
The market trend indicates that the term “Tube” is being adopted by webmasters, programmers, companies, investors and consumers around the globe, and is widely associated with websites where content in video format play a central role, where consumers and users with a common/shared interest in mainstream contents create communities or affiliate with such sites.
LATELCO wishes to pioneer the development of a gTLD that provides “TUBERS” with the domain infrastructure to launch “TUBE” sites. By doing so, we hope to restore a bit of the Internet’s original intent of having gTLD’s in the first place. We will position the .TUBE gTLD as the choice for sites where visual video content play a central role. We believe the term .TUBE will explode when users begin to feed contents from their mobile phones into the Internet, when they begin to livecast themselves.
We fully understand that gTLD’s are critical pieces of internet infrastructure, we are prepared to operate our gTLD in a manner that supports the security and stability of the world wide web and provides for additional innovation and brand protection.
LATELCO has partnered with ESQwire.com, P.C. for legal and consulting services and Minds + Machines, to provide back-end registry services for .TUBE to ensure a robust and secure user experience.
About LATELCO
Latin American Telecom LLC is a private company with principal offices in Pittsburgh Pennsylvania and Mexico City. It owns and operates the website www.mexico.com. It also provides consulting and web design services for some of Mexico’s largest corporations such as Camino Real and Grupo Diestra. For almost two decades, the professionals and Management of LATELCO are committed to becoming a standard of excellence and reputation on the World Wide Web.
Instrumentation Northwest, Inc. of Seattle, Washington, brought a UDRP on the three letter domain name INW.COM which is owned by Telepathy, Inc. of Washington, and who was represented by ESQwire.com.
(Original article from thedomains.com)
Instrumentation Northwest, Inc. of Seattle, Washington, brought a UDRP on the three letter domain name INW.COM which is owned by Telepathy, Inc. of Washington, and who was represented by ESQwire.com.
Here are the relevant facts and findings by the three member panel:
“Complainant is a supplier of water monitoring and sampling systems in the environmental field. Complainant has used the mark INW since 1986 in connection with its offerings.”
“Complainant registered the mark INW on the Principal Register of the United States Patent and Trademark Office in 1989 for electronic sensors, ground water sampling pumps, and ground water monitoring units.”
“Respondent registered the Domain Name in 2007. ”
“The Domain Name had been registered by another party in May 1997, and it apparently changed hands once before Respondent registered it, along with 70 other “three letter dot domains” Respondent registered that year.”
“Since 1998, Respondent has purchased more than 1,000 domain names comprised of three letters in the second-level domain.”
“In March 2011, Complainant offered to purchase the Domain Name for USD 2,100. Respondent’s alleged agent promptly responded with a counter-offer of USD 120,000.”
The Panel concludes that Respondent has a legitimate interest in the Domain Name under the Policy.
“Complainant did not cite any case authority under the Policy to support its claim that Respondent lacks rights or legitimate interests in respect of the Domain Name. ”
“The Panel unanimously finds that Complainant does not have exclusive rights to the letters INW. ”
“There are many third-party uses of that combination of letters. Accordingly, the first to register a domain name incorporating those letters has a legitimate interest in such domain name, provided that it is not registered or used in bad faith.”
“The Panel finds that Complainant has failed to establish on this record that the Domain Name was registered and is being used in bad faith.”
“This case does not present a clear instance of cybersquatting. ”
“There is absolutely no evidence that Respondent had Complainant or its mark in mind when registering the Domain Name.”
“Rather, on the record before it, the Panel agrees with Respondent that the registration of the three-letter Domain Name here was akin to registering a common word as a domain name.”
“In such an instance, a domain name holder generally acquires rights on a first-come, first-served basis.”
“The Panel does not believe that constructive knowledge of the mark may fairly be imputed to Respondent here particularly since the field in which Complainant operates is a rather narrow one.”
“This Panel does not believe that constructive knowledge, which is a very useful legal incident to trademark registration under U.S. trademark law for purposes of determining trademark infringement, applies across the board under the Policy for purposes of determining bad faith.”
“The Panel also holds that the mere fact of offering to sell this three-letter Domain Name for a steep price (USD 120,000) does not necessarily equate to bad faith under Policy paragraph 4(b)(i). ”
“This offer was made in response to an offer from Complainant. Moreover, for five years, Respondent never reached out to Complainant with an offer to sell the Domain Name. ”
“On this record, it is difficult to conclude that Respondent registered the Domain name “primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant” at a profit.”
“Rather, the Panel concludes that Respondent registered this three-letter Domain Name because of its inherent value, quite like registering a common word. In such a case, Respondent is free to sell it at a profit.”
“The Panel unanimously concludes that Respondent is not in bad faith here.”
“The Panel also declines to rule on Respondent’s laches defense here, since it is unnecessary to do so in view of the Panel’s other rulings. ”
“Having said that, a majority of the Panel would have been prepared to apply the laches defense here, given the fact that Complainant sat on its perceived rights for many years (indeed, 15 years if one goes back to the original registration of the Domain Name). ”
“Because laches requires not only an untoward delay but also prejudice to the party asserting the defense, the Panel majority would also have to conclude that Respondent suffered prejudice as a result of the delay. ”
“In the present case, a majority of the Panel would have found that Complainant’s delay did work prejudice on Respondent. ”
“Finally, the Panel declines to find reverse domain name highjacking on this record, although a finding of RDNH could arguably be supported here. ”
“Be that as it may, after carefully weighing all of the circumstances of the case, the Panel chooses to interpret this Complaint as misguided inasmuch as it was doomed from the start and should not have been brought. ”
“There is no hard evidence, though, that Complainant was ill motivated in lodging the Complaint.”
Robert A. Badgley
Presiding Panelist
Lynda M. Braun
Panelist
The Hon Neil Brown Q.C.
Panelist
It just wasted money filing a frivolous complaint over INW.com. The results are in on Instrumentation Northwest’s case against Nat Cohen’s Telepathy for the domain INW.com. No surprise here. With the help of domain attorney Ari Goldberger, Telepathy won the case.
(Original article from DomainNameWire.com)
It just wasted money filing a frivolous complaint over INW.com.
The results are in on Instrumentation Northwest’s case against Nat Cohen’s Telepathy for the domain INW.com.
No surprise here. With the help of domain attorney Ari Goldberger, Telepathy won the case.
But the complainant should really ask its lawyer to give back whatever he or she charged to represent it. This case was dead from the beginning, and any good lawyer would have told their client this. (Perhaps their lawyer did and the company didn’t listen.)
The panel declined to find reverse domain name hijacking, but concluded:
Finally, the Panel declines to find reverse domain name highjacking on this record, although a finding of RDNH could arguably be supported here. Be that as it may, after carefully weighing all of the circumstances of the case, the Panel chooses to interpret this Complaint as misguided inasmuch as it was doomed from the start and should not have been brought. There is no hard evidence, though, that Complainant was ill motivated in lodging the Complaint.
This is tough to swallow. If a case is doomed from the beginning, a sophisticated company should have been able to determine that before it forced an innocent party to pay a lawyer to defend itself.
We’re talking about a company that offered $2,100 for a three letter .com domain name. When the owner responded back with a much higher price it filed a UDRP.
To me, this case is a good example of RDNH. Its certainly “ill motivated” in what it forced Telepathy to do.
But either way, I really hope the complainant’s lawyer cautioned against filing this case. Not only would it be impossible to win the case, but a quick web search about Telepathy would show that the respondent would fight the case and ultimately win
By Michael H. Berkens
Ari Goldberger beat back a UDRP on the domain name UTV.com brought by UTV Limited of Belfast
UDRP Attorney Ari Goldberger beat back a UDRP on the domain name UTV.com brought by UTV Limited of Belfast
Here are the relevant facts and findings of the three member panel:
The Complainant was formed in November 1958 as Programme Contractor for Northern Ireland and was incorporated as Ulster Television in 1959.
It has been broadcasting television and radio in Northern Ireland since October 1959.
As such the Complainant is the TV arm of UTV Media plc, which is a media company in United Kingdom and Ireland incorporating radio, television, new media and publishing.
The Complainant has a national registered device mark UTV with registration number 2233923A in United Kingdom since May 25, 2001 for goods and services in classes 9, 16, 35, 36, 37, 38, 39, 40, 41 and 42 for, inter alia, computer related goods and service, television and radio broadcasting services and entertainment.
The Respondent registered the disputed domain name on August 19, 2005 after it became available for registration.
The Respondent first relied on the doctrine of laches for the reason that the Complainant waited over seven years before filing its Complaint against the Respondent. Although the Panel cannot rule out that the doctrine of laches could apply to this case for the reason put forward by the Respondent, the Panel rather prefers to decide this matter on the merits as set forth below.
The Panel is of the opinion that the Complainant sufficiently showed that it has rights in the Trademark, which predate the registration of the disputed domain name by the Respondent. Although the registered trademark as referred to in paragraph 4 above is for a device mark, the Panel is of the opinion that this device mark consists of the letters “utv” in a specific graphical form, which can only be represented in a domain name as “utv.” Therefore the Panel finds that the disputed domain name is identical to the Trademark UTV, and the first element is met.
The disputed domain name consists of only three letters. The Respondent submits a declaration of Mr. Kwang Pyo Kim, who claims to have registered the disputed domain name, that he registered the disputed domain name because it is a three-letter combination to which he believed no party could claim exclusive rights and it also an acronym for many different third party uses, and without him having knowledge of the Trademark. The Respondent further claims that “utv” stands for “utility terrain-vehicle” and submits evidence that the Complainant does not exclusively use “utv” in outside the context of television.
The Complainant submits that the different screenshots of the websites for the disputed domain name over the period from March 2001 and further, show that the different owners of the disputed domain name, including the Respondent, have mainly used the disputed domain name for advertised links for different products. But almost none of them compete with the goods and services for which the Complainant registered and uses the Trademark.
The Respondent admits that it has been registering common word domain names and combined letter domain names for investment and development since 1998 and that three or four letter domain names are registered because they best fulfill the purpose of a domain name which is to be easy to remember, and which are, therefore, commercially valuable. The Respondent further claims that the way it hosts its domain names (including the disputed domain name) with “parking” services is an industry-wide practice. It is well established that operating parking services using a trademark in a domain name and providing connection to services competitive with the trademark owner, does not establish rights or legitimate interests (e.g., Get Away Today.Com Inc. v. Warren Gilbert, WIPO Case No. DCO2010-0021, with reference to other cases). The disputed domain name would not be used in connection to a bona fide offering of services or goods if there is evidence (i) that the disputed domain name has been used to compete with the Complainant, or (ii) of the Respondent’s intent to misleadingly divert consumers or to tarnish the Trademark for commercial gain (cf. paragraph 4(a) of the Policy).
In this case, however, the Panel did not find evidence that the landing pages associated to the disputed domain name support a finding of the Respondent attempting to compete with the Complainant or having the intent to misleading consumers.
The Panel endorses the finding of the panel in Trans Continental Records, Inc. v. Compana LLC, WIPO Case No. D2002-0105 (with reference to other relevant cases) that use of “short terms that may be appropriate for a vanity email business, or even for sale, is a legitimate business model.”
The disputed domain name typically is such a short term which may represent many acronyms.
This could have been different if the Complainant’s claim that that the Trademark has a strong reputation and is widely known outside the (Northern) Ireland region, and – as the Complainant implied – more particularly in Republic of Korea where the Respondent is located
The Respondent could therefore have registered and used the disputed domain name. In absence of evidence of use of the disputed domain name to compete with the Complainant, to disrupt the Complainant’s business and/or to mislead consumers into letting them believe that they visited the Complainant’s website, the Panel is of the opinion that the disputed domain name is merely a generic short acronym in which the Respondent has a legitimate interest to use.
The Complainant therefore failed to demonstrate the second element of Paragraph 4(a) of the Policy.
The Tuesday (Oct. 18) panel on how to develop a domain into a business featured (left to right): Warren Royal (Bobbleheads.com), Ari Goldberger (EsqWIRE.com), Sean Sullivan (Tier 1 Development), Richard Swerdlow (Condos.com and Houses.com), plus Joe Melville and Greg Balestrieri (both from Candy.com).
...The awards presentations closed with the announcement of the two new members elected to T.R.A.F.F.I.C.'s Domain Hall of Fame (the top two vote getters each year are added to the Hall).
This year's inductees are DNForum.com owner Adam Dicker and T.R.A.F.F.I.C. Co-Founder Howard Neu. Neu follows his fellow show Co-Founder Rick Schwartz into the Hall.
Others who have previously received the honor were also called to the stage and while there I was given the pleasure of announcing that Adam and Howard had been chosen by their peers as this year's inductees.
After the awards presentations it was time for the day's first panel discussion.
New T.R.A.F.F.I.C. Domain Hall of Fame
members Adam Dicker and Howard Neu.
That wound up being one of the show's best sessions as a panel of experts discussed The Hard Work of Developing a Business Out of a Domain Name. A half dozen men who have done exactly that generously provided the details on the tactics that worked for them.
The Tuesday (Oct. 18) panel on how to develop a domain into a business featured
(left to right): Warren Royal (Bobbleheads.com), Ari Goldberger (EsqWIRE.com),
Sean Sullivan (Tier 1 Development), Richard Swerdlow (Condos.com and
Houses.com), plus Joe Melville and Greg Balestrieri (both from Candy.com).
By Andrew Allemann
Decision includes a lot of good defenses if you’re hit by a UDRP. If you’re looking for ways to defend a domain name that is hit with a UDRP, there’s a good laundry list of rebuttals in a recent dispute handled by domain law firm ESQwire.com. The case was brought by Sweden’s Rusta AB over [...]
(Original article from DomainNameWire.com)
Decision includes a lot of good defenses if you’re hit by a UDRP.
If you’re looking for ways to defend a domain name that is hit with a UDRP, there’s a good laundry list of rebuttals in a recent dispute handled by domain law firm ESQwire.com.
The case was brought by Sweden’s Rusta AB over the domain name Rusta.com.
Rusta actually owned Rusta.com before it let the domain name expire in 2001 and the current registrant picked it up. Now, you tell me: if you believe you have trademark rights in a domain and you accidentally let it expire, are you going to wait over a decade to stake a claim to it?
Also interesting in this case is that Rusta said the domain owner should have known about the company and its mark because Rusta owns Rusta.se. But the panel discovered that Rusta.se wasn’t registered until 2005!
Now back to the lead…
Here are the reasons the panel found that the domain owner had legitimate interests in the domain. It’s a good laundry list of possible defenses:
a) The Respondent registered the Disputed Domain Name as long ago as 2001;
b) The Disputed Domain Name has both a dictionary meaning and refers to a geographic location;
c) “Rusta” appears to be a relatively common word used for descriptive and commercial purposes, as demonstrated by the results delivered by any search engine for this word. It is not associated exclusively with any single party;
d) None of the sponsored links which appear on the website attached to the Disputed Domain Name are in direct competition with the products offered by the Complainant, which would be an important consideration in determining whether the Respondent’s conduct may be considered fair. In this respect, the Panel accepts the Respondent’s explanation that the combination of the word “rusta” with the name of a location for one of the Complainant’s warehouses appeared on the website under discussion as an automated link based on user search behaviour;
e) The Respondent has not made any attempt to sell the Disputed Domain Name to the Complainant over the past eleven years in which it held ownership of it, which may be consistent with the conduct of a domain name owner who has a legitimate interest in its domain name; and
f) The Respondent has registered other descriptive domain names, not only in Swedish, but also in French, Spanish, Chinese, Japanese, Italian and English languages.
g) The Respondent could not be expected to have known of the Complainant when it registered the Disputed Domain Name. At the time, only the one Swedish registration for RUSTA was in place (and did not have the Complainant recorded as its owner) and, on investigation by the Panel, it found that the Complainant’s own domain name rusta.se was only registered in 2005, about four years after the registration of the Disputed Domain Name by the Respondent.
By Andrew Allemann
Godfather of Soul’s domain name can stay with management company. The estate of James Brown has lost a domain arbitration case for the domain name JamesBrown.com. The domain is owned by LAC Management, Inc., which manages “RJ & The James Brown Band”. LAC argued that James Brown gave at least his tacit consent for it [...]
(Original article from DomainNameWire.com)
Godfather of Soul’s domain name can stay with management company.
The estate of James Brown has lost a domain arbitration case for the domain name JamesBrown.com.
The domain is owned by LAC Management, Inc., which manages “RJ & The James Brown Band”. LAC argued that James Brown gave at least his tacit consent for it to register the domain name. In its pleadings, the estate even admitted that Brown may have consented to the domain registration while he was alive.
The estate made a number of legal arguments that aren’t typically considered by a UDRP panel and the panel decided to ignore them.
That makes sense. Even if the estate does have a legal argument to get this domain name, it’s certainly too complex to be handled by the UDRP mechanism.
LAC Management was represented by Ari Goldberger of ESQwire.com.
By Andrew Allemann
Nat Cohen’s Telepathy can keep Libertad.com domain name. Ari Goldberger’s ESQwire.com law firm has successfully defended Nat Cohen’s libertad.com domain name in a UDRP case. “Libertad” means freedom or liberty in Spanish. The case was brought by Libertad Servicios Financieros, S.A., a Mexican financial services company. Playing in Cohen’s favor was the generic nature of [...]
Nat Cohen’s Telepathy can keep Libertad.com domain name.
Ari Goldberger’s ESQwire.com law firm has successfully defended Nat Cohen’s libertad.com domain name in a UDRP case.
“Libertad” means freedom or liberty in Spanish.
The case was brought by Libertad Servicios Financieros, S.A., a Mexican financial services company.
Playing in Cohen’s favor was the generic nature of the domain name, and that he registered 29 other generic Spanish language domain names within 90 days of registering Libertad.com in 1999.
Goldberger argued that the case was barred because of the doctrine of laches given the amount of time between the domain registration and this case. Two of the three panelists agreed that the delay needed to be explained by the complainant, even if laches didn’t automatically disqualify the case.
Laches is a hot topic in UDRPs. John Berryhill just won a case for Marchex for the domain name FreedomBenefits.com. In that case the panelist wrote:
“The Panel finds that the doctrine of laches does not apply as defense, however [....] the Panel considers the doctrine of laches as evidence for Respondent.”
It looks like this issue will continue to be hotly debated.
By Andrew Allemann
Goldberger featured in TV news story about MiamiPolice.com. Domain name attorney Ari Goldberger of ESQwire.com was featured in an NBC Miami story last week about MiamiPolice.com. The Miami Police let the domain name expire a couple years ago and it was picked up by someone who now parks the domain with DomainSponsor. While I’m not [...]
Goldberger featured in TV news story about MiamiPolice.com.
Domain name attorney Ari Goldberger of ESQwire.com was featured in an NBC Miami story last week about MiamiPolice.com.
The Miami Police let the domain name expire a couple years ago and it was picked up by someone who now parks the domain with DomainSponsor. While I’m not sure why NBC Miami just did this story now (slow news week for the holidays?), it’s good to see Goldberger was interviewed for the story.
It turns out the Miami Police only owned the domain for a short time and never really used it, favoring their official web site Miami-Police.org. So they decided it wasn’t worth the $35 to renew the domain name.
The story reads:
Police spokesman Delrish Moss underscored that not having miamipolice.com does not affect police services at all, and that a small purchase here and a small purchase there adds up in times of severe budget crunches.
That’s the government at work.
By Andrew Allemann
Planate Management Group guilty of attempting reverse domain name hijacking. Ari Goldberger’s lawfirm ESQwire has won a reverse domain name hijacking claim on behalf of client Vertical Axis, which is Kevin Ham’s company. The guilty party is Planate Management Group LLC of Alexandria, Virginia. The company owns Planate.net but wanted to get its hands on [...]
Planate Management Group guilty of attempting reverse domain name hijacking.
Ari Goldberger’s lawfirm ESQwire has won a reverse domain name hijacking claim on behalf of client Vertical Axis, which is Kevin Ham’s company.
The guilty party is Planate Management Group LLC of Alexandria, Virginia. The company owns Planate.net but wanted to get its hands on Planate.com in this dispute.
Yet Planate didn’t start using the name “planate” until 2008 according to a filed trademark. That’s three years after Vertical Axis registered the domain name. So this was a losing case from the beginning.
According to the panelists’ decision, Planate argued that subsequent renewals of the domain name were done in bad faith.
It also provided exhibits to the panel showing keywords on the Planate.com parked page that competed with the complainant. However, Vertical Axis believes these search results pages were fabricated by using the search box on the parked page.
In finding reverse domain name hijacking, the three person panel wrote:
…In the present case it is self-evident from the facts that the Respondent did not know and could not have known of the Complainant’s rights in the mark PLANATE because they did not come into being until (at least) three years after registration. This fact would be self-evident to the Complainant itself and indeed is acknowledged in the Complaint where it is stated:
“Even if the Respondent registered the ‘www.planate.com’ domain name prior to the Complainant’s first use of the trademark on November 8, 2007 …”
Even in its fallback for contention of bad faith registration based on paragraph 2 of the Policy i.e. assertions as to what the Respondent should have done on renewal, the Complainant specifically allows for the fact that the Respondent did not know of the Complainant or its trademark:
“These renewals notwithstanding, if the Respondent did not specifically know of the Complainant or if its trademark or [of] its trademark rights when it renewed the disputed domain name multiple times, the finding of bad faith registration should still be confirmed under the circumstances of this case by Vertical Access Inc’s willful blindness.
World Intellectual Property Organization just handed down another win for ESQwire and VerticalAxis today as well for Trucco.com.
By Andrew Allemann
A very short but spot on UDRP decision. I’m often critical of UDRP panelists for shirking their duties. But I’m not going to complain about the decision on a recent case defended by Ari Goldberger.
A very short but spot on UDRP decision.
I’m often critical of UDRP panelists for shirking their duties.
But I’m not going to complain about the decision on a recent case defended by Ari Goldberger.
Goldberger defended the domain name OrganizedPlay.com, which was registered by Blue Sandbox when it expired. The complainant, OrganizedPlay Corporation, said it owned the domain name before it accidentally let it expire.
A three member National Arbitration Forum wrote a very brief decision on the case finding against the complainant. It basically boils down to this:
Complainant has no trademark registration for the words “organized play” and has produced no evidence that, through use, those descriptive words have come to denote Complainant in the public mind, so as to give rise to common law trademark rights.
Accordingly the Complaint must fail. It is unnecessary to consider the other elements.
Some cases are so bogus that it doesn’t take a wordy explanation. This is one of those cases. Although I certainly think the panel should have considered reverse domain name hijacking since the respondent had to pay to defend this fruitless case.
If it ain’t completely broke, don’t risk breaking it.
Yesterday I wrote about how World Intellectual Property Forum and National Arbitration Forum are opposed to initiating a UDRP reform effort at WIPO.
They aren’t the only ones in this camp.
Prominent UDRP defense attorneys John Berryhill and Ari Goldberger also spoke on yesterday’s “State of the UDRP” webinar. And both of them are opposed to an overhaul of UDRP.
This is an interesting dynamic. The UDRP providers think that intellectual property interests won’t be adequately represented in a reform effort while domain attorneys probably think the opposite.
I tend to agree with Berryhill and Goldberger: UDRP will become more lopsided if a reform effort is started. Basically the IP interests would lobby the Governmental Advisory Committee, which would pressure ICANN into giving the IP interests what they want.
Indeed, I’m very afraid of UDRP reform.
Not everyone on the domain owner side is in this camp. Internet Commerce Association is pushing for reform with the backing of some of its large supporters.
Let me be clear: UDRP has many flaws and could use some reform. It’s just interesting that both sides are concerned about the outcome.
3DCafe, Inc. found guilty of reverse domain name hijacking. A three person National Arbitration Forum panel has called out 3DCafe, Inc. for attempted reverse domain name hijacking in a case over 3DCafe.com.
3DCafe, Inc. found guilty of reverse domain name hijacking.
A three person National Arbitration Forum panel has called out 3DCafe, Inc. for attempted reverse domain name hijacking in a case over 3DCafe.com.
The complainant argued that it had rights from its “predecessor in interest” for the term 3DCafe dating back to 1991. But the domain name owner, with the help of attorney Ari Goldberger, poked holes in the complainant’s arguments.
The panel determined that 3DCafe, Inc. and its lawyer Danielle I. Mattessich of Merchant & Gould had provided scant evidence of any sort of common law rights to the mark when the domain name was registered. While not invoking the doctrine of laches, the panel also cited New York Times Co. v. Name Administration Inc. and the significant delay between when the domain was registered and when the case was filed.
In finding reverse domain name hijacking, the panel wrote
In the present circumstances, the lack of a trademark, the delay by the Complainant and the fact that the Complainant itself showed no evidence of any right to any common law rights to a mark, all combine to infer that the Complainant acted in bad faith. The Panel therefore makes a finding of reverse domain name hijacking.
Company goes after domain name registered several years before it created its brand.
Nat Cohen’s Telepathy, Inc. has successfully won a charge of reverse domain name hijacking against X6D Limited, which owns the XPAND brand of 3-D glasses.
X6D filed the complaint over the domain name xpand.com. Telepathy, represented by domain name attorney Ari Goldberger, noted that it’s common to eliminate the ‘e’ in words that start with ‘ex’. The panel agreed, arguing that xpand was a single descriptive word:
The Panel considers the disputed domain name contains at its second level a single descriptive term. Many English words starting with “ex“ are commonly misspelled by omitting the “e” at the beginning, inter alia, “xtreme” (misspelling of “extreme”), “xchange” (misspelling of “xchange”), “xcess” (misspelling of “excess), “xact” (misspelling of “exact”), “xcel” (misspelling of “excel”), and so forth. In the Panel’s assessment, the public readily identifies the misspelled word in these cases.
The panel also agreed that buying descriptive and generic domain names as an investment is a legitimate use of a domain name:
Due to the commercial value of descriptive or generic domain names it has become a business model to register and sell such domain names to the highest potential bidder. Such a practice – including the sale of the domain name – has been found to constitute use of the domain name concerned in connection with a bona fide offering of goods or services provided that the registration of the domain name was not undertaken with intent to profit from or otherwise abuse a complainant’s trademark rights.
All of this is well and good, but the real crux of the case came down to dates. Telepathy registered the domain name in 2003, three years before X6D says it started using the XPAND brand. Thus, it’s impossible that the domain name was registered in bad faith targeting X6D. X6D offered $10,000 to buy the domain name. When that failed, it filed the UDRP.
This helped Telepathy win a charge of reverse domain name hijacking:
In the present case, the Complainant did not provide any explanation as to how the Respondent could possibly have been aware of the Complainant and the Complainant’s mark when registering the disputed domain name, which occurred more than three years before the Complainant started using its XpanD Mark. The Panel therefore accepts the Respondent’s allegation that the Complainant is using the UDRP as an alternative purchase strategy after the acquisition of the disputed domain name failed. Therefore, the Panel finds that the Complaint was brought in bad faith, in an attempt of reverse domain name hijacking: The Complainant knew or should have known at the time it filed the Complaint that it could not prove that the domain name was registered in bad faith.
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If you are among the millions of people who watch HBO's hit comedy Curb Your Enthusiasm on Sunday nights, you may have noticed what looked like a familiar face in a restaurant scene that aired November 8th (Episode #68 - "Officer Krupke").
If you are among the millions of people who watch HBO's hit comedy Curb Your Enthusiasm on Sunday nights, you may have noticed what looked like a familiar face in a restaurant scene that aired November 8th (Episode #68 - "Officer Krupke"). If you said to yourself, "Hey, that guy in the background looks just like Ari Goldberger!" you would have been half right. The guy looked like the noted domain attorney because that's who it was! In the photo from the episode below, with co-stars Larry David and Cheryl Hines in the foreground, you can see Ari immediately to Cheryl's right at the table behind her.
Below is a closer view of Ari Goldberger to the right of series co-star Cheryl Hines.
Ari, who was featured in our June 2006 Cover Story (one that I believe was among our best ever), was not in this scene by accident. As his friends know (and as we reported in our profile about him), Goldberger has been involved in charitable giving and fundraising since he was 8 years old. When he learned that the producers of Curb Your Enthusiasm were trying to raise money for the Alzheimer's Foundation by auctioning off a visit to the show's set (complete with an opportunity to be an extra on the program) he stepped up and placed the highest bid.
That resulted in Ari traveling to Beverly Hills, California where he not only met the Curb Your Enthusiasm cast members but joined them in front of the cameras for the restaurant scene.
Above: Ari Goldberger (left) with Curb Your Enthusiasm star Larry David.
Below (left to right): Cast Members Jeff Garlin, Ari and Larry.
If you missed the episode when it first aired, it is available on Comcast OnDemand and as well as from many other OnDemand-capable cable providers. You can find more details about the "Officer Krupke" episode here. A special thank you goes out to Scott Ross who let me know about Ari's HBO debut and also secured and provided these publicity photos from the show so we could share them with you. Ari told me "It was a lot of fun and they treated us great on the set." That made it a win win for everyone, especially the Alzheimers Foundation, the organization this special event was all about.
Roy Messer, perhaps most famous for selling Vodka.com for $3M, has successfully defended the domain name NationalRentaCar.com through UDRP.
National Car Rental loses case over domain name.
Roy Messer, perhaps most famous for selling Vodka.com for $3M, has successfully defended the domain name NationalRentaCar.com through UDRP.
The majority of the panel found that the domain name was confusingly similar to Vanguard Trademark Holdings’ trademark “National Car Rental”, but that the domain name was not registered in bad faith for several reasons. Among them, Messer provided a sworn declaration under penalty of law stating that the domain was not registered with the trademark in mind. The panel also found no evidence to the complainant’s inference that Messer’s company registered the domain with the trademark in mind.
What makes this case particularly interesting is the timeline. Messer registered the domain name in 2000. In 2003 the complainant sent a cease and desist letter to Messer. He responded, and didn’t hear back until 2004 when the complainant sent the exact same letter. He hadn’t heard from them since then until receiving the UDRP. The majority of the panel wrote:
In reaching this decision this Panel accepts that the doctrine of laches does not apply in the UDRP, but in the present case there appears to be some merit in Respondent’s argument that if Complainant were confident in its allegation of bad faith registration of the domain name it would not have delayed so long in bringing this Complaint.
Panelist The Honourable Neil Anthony Brown QC included additional commentary about the long delay, writing:
Standing by and allowing Respondent to use the domain name in the allegedly improper manner during these lengthy periods of time, without any explanation for how the delays came about, leaves Complainant open to the conclusion that it did not believe the claim and also that it had waived its complaint and induced or allowed Respondent to continue with its use of the domain name in that manner.
Attorney Ari Goldberger of ESQwire.com represented Messer.
According to Compete.com, the domain name receives over 4,000 uniques each month.
SmoothMove.com decision may not be worst, but it should be high on the list.
My blood is boiling. I think I just read one of the worst UDRP arbitration decisions ever.
Michael Berkens got screwed, and I hope he takes action.
In this case, Berkens registered the domain name SmoothMove.com in 2003 and has parked it since then. All of the links have been generic in nature.
Then along came Traditional Medicinals Inc, an herbal medicine company that happens to have a trademark to “Smooth Move”. This isn’t the only generic domain name the company tried to grab; it just lost a case for MothersMilk.com.
Berkens’ attorney, Ari Goldberger, argued a number of reasons why this was not a case of cybersquatting. But the panel picked up on one argument: that in the course mass registration of generic dictionary domain names, you’ll also register some generic terms that are also trademarks.
Goldberger’s argument is correct. If you registered Apple.com back in the day, you would have registered a generic term that a fair number of companies also have trademarks to for various uses (including the computer giant). If you then parked Apple.com and showed pay-per-click links about the fruit, you would not be violating the trademark.
That’s essentially what happened here. But the panel seemed to frown on this business model:
Whether or not Respondent knew for sure at the time of registration that the particular domain name now at-issue was the trademark of another seems insignificant. There is no dispute that Respondent knew that at least some trademarks were being registered as a direct result of its purely self-serving policy…
The Panel notes that this is not a case where an entity inadvertently or even negligently registers the mark of another for its own use to support its own business or vocation without any hint that the domain name contains a trademark. Rather it is a situation where the business method of a sophisticated domain name trafficker consciously and to its own benefit disregards with impunity the admitted certainty that it is registering another’s trademark and is happily disposed to trading in such trademarked domain name nonetheless.
Excuse me, but whether or not the respondent knew about the trademark is of utmost importance. Perhaps it wasn’t argued well, but the panel seems to not understand that Goldberger’s argument was that generic terms can also be part of trademarks and used legitimately. It’s not like he was registering CocaCola.com. That’s not generic.
In fact, there are three other companies with some sort of trademark for “smooth move”.
I could understand the panel’s decision if the parked page had ads for herbal medicine, but this case is bunk.
Berkens, I hope you sue.
Domain attorney helps registrant keep domain name in UDRP.
When you think of “propeller head”, what comes to mind? I think of those beanie hats with a propeller on them. You know, the type that nerds wear. Pilots might think of the plane part.
But a software company thought it should have rights to PropellerHead.com. Unfortunately for Propellerhead Holding AB, it couldn’t convince a three person panel at National Arbitration Forum.
The registrant of PropellerHead.com at one time had the domain parked at Hitfarm with links that may be competitive to the software company. But before receiving the complaint, it had switched the landing page to a generic page with a search box.
The panel decided that the domain was not registered and used in bad faith, giving victory to Goldberger and his team. But I’m surprised at the brevity of the panel’s written decision. Goldberger appears to have asked for a finding of reverse domain name hijacking. Panels usually consider all three elements of a case when reverse domain name hijacking is alleged, yet in this case it only considered the bad faith argument. The panel punted and merely wrote:
“The Panel does not find that Complainant has attempted to engage in reverse domain name hijacking.”
It provided no reasoning whatsoever.
Domain lawyer Ari Goldberger gets another win, but the panel creates a tough hurdle for reverse domain name hijacking.
(Original article from DomainNameWire.com)
Domain lawyer Ari Goldberger gets another win, but the panel creates a tough hurdle for reverse domain name hijacking.
Domain lawyer Ari Goldberger successfully defended FullTerm.com in a UDRP dispute at National Arbitration Forum. The case pitted Hologic Inc, maker of a device to determine if a woman is likely to give birth before full term, against domain owner Vertical Axis Inc.
Hologic didn’t apply for a trademark to the term “FullTerm” until 2006, claiming a first use in commerce date of 2004. Vertical Axis registered the domain back in 2001.
It was essentially a slam dunk case, and Goldberger asked the panel to find Hologic guilty of reverse domain name hijacking. When you read the case for reverse domain name hijacking, as written by the panel, you’d think they would find Hologic guilty:
Complainant fails to proffer convincing evidence that supports its claim that the Respondent has no rights or legitimate interest in the at-issue domain name. Complainant likewise fails to present evidence that Respondent acted in bad faith in registering and using the disputed domain name. Moreover, there is no effort made in the Complaint to provide any relevant explanation of bad faith, beyond a conclusory one-sentence assertion that mirrors the language of Policy 4(b)(iv). Under the circumstances, the Complaint is quite deficient in this respect. Complainant knew or should have known that its trademark FULL TERM was registered well after the Respondent registered its domain name corresponding to the generic term FULL TERM. Perhaps Complainant should have also known that it could not prevail without presenting the Panel with at least some explanation tending to support its bare allegation that the Respondent acted in bad faith in registering and using such domain name.
OK, done deal. Right? Wrong. The panel goes on to write:
Nevertheless, while the Complainant’s case is weak and its pleading leaves much to be desired, it does not rise to the level necessary for a finding of Reverse Domain Name Hijacking. There is no sufficient evidence to show that the Complainant brought the Complaint in bad faith. The Complainant, through one of its divisions, did have a trademark registration for a mark that is identical to the disputed domain name. Complainant also presented a prima facie showing that Respondent lacked rights or interest in the domain name. Finally, Complainant supplied a screen print of the commercial website to which the disputed domain name resolves. Therefore, the Panel finds that the Complainant’s conduct in filing its Complaint did not amount to Reverse Domain Name Hijacking.
Wow. I guess if you take a few minutes to file the case and print out a screenshot of a parked page, this panel won’t find you guilty of reverse domain name hijacking.
By Adam Goldman
Inside a midtown hotel, Larry Fischer is on his cellphone with a financial backer as his partner Ari Goldberger does quick research on a laptop computer.
NEW YORK — Inside a midtown hotel, Larry Fischer is on his cellphone with a financial backer as his partner Ari Goldberger does quick research on a laptop computer.
They are bidding furiously at this auction of Internet domain names, with hopes of snagging megayachts.com. The duo won't be deterred. They want this name.
"$110,000, yes or no? Quick," Fischer barks at Eli, the investor at the end of the phone.
Someone else makes a bid for $120,000. Fischer and Goldberger up the ante, and then again.
Going once, going twice ... sold to Fischer and Goldberger for $150,000.
"You got it," a smiling Fischer tells Eli. Mazel tovs are exchanged.
These are boom times in an estimated $2 billion industry that involves the buying and selling of domain names. When people type the generic names into their Web browser's address field, sites that generate pay-per-click advertising revenue appear. Such "direct navigation" bypasses search engines.
"This industry is like the wild, wild West right now and people have no idea how fast it's growing," said Jerry Nolte, managing partner of Domainer's Magazine, a new trade publication devoted to this little-known world.
Some believe the industry's market value could reach $4 billion by 2010 as people continue to purchase approximately 90,000 names a day and the number of domain registrars swells.
At the end of first quarter 2007, at least 128 million domain names had been registered worldwide, a 31% increase over the previous year, according to VeriSign, which runs some of the core domain name directories for the Internet.
"It's not about words," said Monte Cahn, founder and CEO of Moniker.com, a company that specializes in domain asset management and held the Manhattan auction. "It's like real estate. This industry is only about a decade old. People looked at domain names as a commodity. It's a piece of real estate on the Web that can't be replaced. It's your stake in the ground, your stake in the Internet."
At the Manhattan auction, Fischer and Goldberger snatched up four names for more than $1.2 million and a fifth for a client, representing only a handful of the names sold for a total of $12.4 million during both the live and silent auction.
The auctions were held during a domain conference in June that attracts some of the biggest players in this niche business.
One name — creditcheck.com — went for $3 million but paled in comparison to the sale of sex.com, which sold for $12 million last year, according to Cahn, who knew the site's buyer and seller.
Fischer, 44, of Brooklyn, N.Y., and Goldberger, 46, of Cherry Hill, N.J., figured there was money to be made early.
Goldberger's entry into the business was unorthodox to say the least. In 1996, the Hearst Corp. sued him, alleging trademark infringement after Goldberger registered esqwire.com, which resembles one of the company's magazines.
The two sides eventually settled and Goldberger, a lawyer, was allowed to keep the name. Word got out that Goldberger knew something about the thorny legal issues involving Internet domain names and people began approaching him for advice.
Goldberger's fascination with the burgeoning industry was sealed.
"I was an entrepreneur strapped into this suit-and-tie job," Goldberger said. "Kind of a square peg in a round whole and this lawsuit just kind of changed everything for me."
He eventually left the respected Philadelphia law firm where he worked in 1997 and joined a small start-up in Manhattan called mail.com, which was buying up domain names.
Goldberger began collaborating with Fischer in 2001, building their portfolio of domain names. Together, they became a formidable yet quirky team (imagine George Costanza and Jerry Seinfeld with the pioneering spirit of Lewis and Clark).
Two years later, they created a company called smartname.com, which they sold earlier this year. The company took names and provided content and links for owners, getting a cut of the advertising revenue. At one point, smartname.com represented 150 owners with about 150,000 domain names, generating 50 million unique visitors a month.
Most the sites are lucrative for their advertising dollars. For example, megayachts.com isn't an actual yachting site, but it contains numerous ads and links for real yacht companies, boats and cruises. The owners of the site get paid each time a viewer clicks on one of those links.
Goldberger and Fischer declined to say how much money they make from pay-per-click advertising.
Bob Parsons, CEO and founder of domain registration company GoDaddy.com, says this type of business is fairly straightforward.
"They make their money in two ways," Parsons said. "One way is through the traffic they get and the other is the appreciation of the name."
Parson didn't think there was anything wrong with the practice as long as those involved weren't using names trademarked by others.
"Domain names are becoming 21st century real estate," Parsons said. "Just owning a domain name as an investment, I don't see a problem with that."
Anthony Malutta, a lawyer who specializes in trademark law at a San Francisco law firm, sees fewer trademark infringement cases thanks to improved laws.
"Trademark law involving domain laws is much clearer and much easier to understand," he said. "It's pretty clear that registering a domain name that corresponds to somebody's trademark is actionable. As to generics, they're just hoping to capture traffic. You're just counting on people typing in generic names instead of using a search engine like Google."
Malutta said domainers like Goldberger and Fischer are not "gaming the system" which in his opinion would mean registering domain names and then cybersquatting — driving revenue off somebody else's trademarked name like Coca-Cola.
Over the years, Goldberger and Fischer have sharpened their formula for acquiring domain names and developing the sites using a fairly simple template, relying on research, savvy and plenty of instinct.
"You either know it or don't by hearing the name," Fischer says.
They look for names that hit the "sweet spot" — short words that describe a high-value product or services related to it. Words that allow them to own a category such as bald.com and cardiology.com, two of the domain names they bought at the auction.
To help figure out a word's potential value, they see how many hits it will produce using Google. They also troll lists of names with domain registrations set to expire, enabling them to get a jump on buying it.
They don't bother with dot-nets or the others.
"Dot-com is king," Goldberger said. "Dot-net is worthless."
But there's a big divide between thinking of a good name and getting it. There's usually a chase, with Fischer trying to persuade owners to sell the names after he locates the owners unless it's up for auction.
"He's kind of like a rhinoceros," Goldberger says about Fischer. "He chases them up a tree and waits them out. He has patience and determination. You got to be aggressive. It's a tough game now. It's like the gold rush. The first guys did really well then it became more difficult."
And expensive. Five years ago, the duo could get a good name for $10,000. Now the minimum is more like $100,000 — as the auction proved. The cheapest name they bought at the auction was blogging.com for $135,000. Other names sold for considerably less like irishwhiskey.com ($8,000) and Jewishdeli.com ($9,000).
At the moment, Fischer, Goldberger and Eli are sitting on their names. They've recently turned down million-dollar offers for stocks.com and home.com.
But as white-hot as this business has been, it might not continue to mint millionaires.
"How long will this model last?" Malutta asked. "It's definitely a temporal piece of real estate. As technology evolves, maybe direct navigation will fall off the charts and there goes your property."
Associated Press investigative researcher Randy Herschaft in New York contributed to this report.
Copyright 2007 The Associated Press. All rights reserved. This material may not be published, broadcast, rewritten or redistributed.
By Adam Goldman
NEW YORK — Inside a midtown hotel, Larry Fischer is on his cell phone with a financial backer as his partner Ari Goldberger does quick research on a laptop computer. They are bidding furiously at this auction of Internet domain names, with hopes of snagging megayachts.com. The duo won't be deterred. They want this name.
NEW YORK — Inside a midtown hotel, Larry Fischer is on his cell phone with a financial backer as his partner Ari Goldberger does quick research on a laptop computer. They are bidding furiously at this auction of Internet domain names, with hopes of snagging megayachts.com. The duo won't be deterred. They want this name.
"$110,000, yes or no? Quick," Fischer barks at Eli, the investor at the end of the phone.
Someone else makes a bid for $120,000. Fischer and Goldberger up the ante, and then again. Going once, going twice ... sold to Fischer and Goldberger for $150,000. "You got it," a smiling Fischer tells Eli. Mazel tovs are exchanged.
These are boom times in an estimated $2 billion industry that involves the buying and selling of domain names. When people type the generic names into their Web browser's address field, sites that generate pay-per-click advertising revenue appear. Such "direct navigation" bypasses search engines.
"This industry is like the wild, wild West right now and people have no idea how fast it's growing," said Jerry Nolte, managing partner of Domainer's Magazine, a new trade publication devoted to this little-known world.
Some believe the industry's market value could reach $4 billion by 2010 as people continue to purchase approximately 90,000 names a day and the number of domain registrars swells.
At the end of first quarter 2007, at least 128 million domain names had been registered worldwide, a 31 percent increase over the previous year, according to VeriSign Inc., which runs some of the core domain name directories for the Internet.
"It's not about words," said Monte Cahn, founder and CEO of Moniker.com, a company that specializes in domain asset management and held the Manhattan auction. "It's like real estate. This industry is only about a decade old. People looked at domain names as a commodity. It's a piece of real estate on the Web that can't be replaced. It's your stake in the ground, your stake in the Internet."
Creditcheck and sex.com
At the Manhattan auction, Fischer and Goldberger snatched up four names for more than $1.2 million and a fifth for a client, representing only a handful of the names sold for a total of $12.4 million during both the live and silent auction.
The auctions were held during a domain conference in June that attracts some of the biggest players in this niche business.
One name — creditcheck.com — went for $3 million but paled in comparison to the sale of sex.com, which sold for $12 million last year, according to Cahn, who knew the site's buyer and seller.
Fischer, 44, of Brooklyn, N.Y., and Goldberger, 46, of Cherry Hill, N.J., figured there was money to be made early.
The making of a name-broker
Goldberger's entry into the business was unorthodox to say the least. In 1996, the Hearst Corp. sued him, alleging trademark infringement after Goldberger registered esqwire.com, which resembles one of the company's magazines.
The two sides eventually settled and Goldberger, a lawyer, was allowed to keep the name. Word got out that Goldberger knew something about the thorny legal issues involving Internet domain names, and people began approaching him for advice.
Goldberger's fascination with the burgeoning industry was sealed.
"I was an entrepreneur strapped into this suit-and-tie job," Goldberger said. "Kind of a square peg in a round whole, and this lawsuit just kind of changed everything for me."
He eventually left the respected Philadelphia law firm where he worked in 1997 and joined a small startup in Manhattan called mail.com, which was buying up domain names.
Goldberger began collaborating with Fischer in 2001, building their portfolio of domain names. Together, they became a formidable yet quirky team (imagine George Costanza and Jerry Seinfeld with the pioneering spirit of Lewis and Clark).
Two years later, they created a company called smartname.com, which they sold earlier this year. The company took names and provided content and links for owners, getting a cut of the advertising revenue. At one point, smartname.com represented 150 owners with about 150,000 domain names, generating 50 million unique visitors a month.
By By Ron Jackson
“My original plan in going to law school was to get a degree so I could open up my own office, “hang a shingle” so to speak, and represent little guys that needed help.
“My original plan in going to law school was to get a degree so I could open up my own office, “hang a shingle” so to speak, and represent little guys that needed help. At law school I also started developing this idea for an online network for small solo-practicing lawyers who could work together and share a common infrastructure. I had no desire to work for big corporations. I ended up doing pretty well, however, and got interviews with all the “big firms” that were offering the biggest salaries. This was too enticing for me to pass up and I figured it wouldn’t hurt to get a good job, earn a decent salary, and go out on my own later,” Goldberger said.
“In 1992, I began work for one of Philadelphia’s top firms, Pepper, Hamilton & Scheetz – but the thought of ultimately having the freedom to go out on my own was never far from my mind. In 1994, I had heard of Compuserve and AOL and revisited my idea for the lawyer online network. My idea was to be kind of an AOL just for lawyers. I came up with the name ESQwire and filed a trademark application. The Hearst Corporation that owned Esquire Magazine opposed my trademark but someone said I should get the ESQwire.com domain name. So I did that and used Microsoft Front Page to build my first web site. The site said: ESQwire, Your Firm – away from firm!” and had this introductory note on the site:
ESQ.wire ™ - - pronounced esk-wire - will provide virtual law firm support services, legal information services and products to enable attorneys to practice law anywhere on the planet with the simple click of a mouse. We are in the early stages of development. If you would like to be a part of this revolutionary virtual legal community as either a legal services provider or as a participating attorney, e-mail Ari Goldberger
Clipping from the National Law Journal detailing Goldberger's battle with the Hearst Corporation
Once Hearst learned of this, they filed a lawsuit against me in Federal Court in Manhattan. I knew this was big and was going to be some sort of an opportunity. I was lucky that my law firm allowed me to spend time at work on this case. I was living in Cherry Hill, New Jersey at the time and set-up a web site from my home. Hearst sued me in New York. One of the first things you learn in law school is a concept called “personal jurisdiction.” In order to be hauled into a court, the court must have jurisdiction over the defendant – meaning you must either reside where the court is or have some kind of “minimum contacts” with the state."
"Here, Hearst said there was jurisdiction because they could access the web site from New York. But of course, as I argued, you could access the website anywhere in the world, which means any court in the world could have jurisdiction over any web site in the world – a position which would make the concept of jurisdiction obsolete with respect to the Internet. I prevailed on that argument and Hearst and I ultimately settled the case, enabling me to retain the domain name. The case (which has now been cited in 374 other court cases) ended up getting me a lot of recognition and domain owners began contacting me to help them with their domain disputes,” Goldberger said.
The case also opened up new windows of opportunity in the business world for Goldberger. “I was contacted in the spring of 1997 by an Internet start-up known as iName (which ultimately became Mail.com). They were buying up a lot of great domain names and were looking for a lawyer to help them protect them, as well as someone to help with the overall business. This sounded perfect for me. I could be a lawyer, and also participate in the business end. At the same time, they agreed to allow me to operate ESQwire on the side.”
If this sounds like a marriage made in heaven, Goldberger said that is exactly what it was. “Mail.com was a wonderful experience. As VP of Business Development, I had the opportunity to come up with new business ideas, negotiate deals with huge companies like NBC, CBS, New York Times, NFL, Paramount and Universal Studios. I learned a great deal from this experience and am very thankful to the folks at Mail.com for giving me that opportunity. While I was there, I made contact with and began assisting many of the pioneers in the domain business including ProDomains (now Digimedia), Reflex Publishing, Rick Schwartz and several others."
“One of the great things that came out of Mail.com was becoming associated with the founder of Anything.com, who was referred to me by their Best Domains domain brokerage business. Anything.com has amassed one of the best domain name portfolios in the industry, with names like medicine.com, marketing.com, children.com, ticket.com, design.com, land.com, stocks.com, songs.com and hundreds more. The founder is one of my best friends and one of the most loyal and trustworthy people I know and I owe much of what I have achieved to our relationship,” Goldberger said.
After seeing Mail.com grow from 12 to 600 employees, Ari left in April 2000. “I continued running ESQwire, having built-up a client base of domainers, with my most significant being Anything.com. However, I was concerned that, because of the collapse of the Dotcom bubble, I would not be able to maintain a steady income that had been based in part on representation and handling escrow for domain sales. Later that year, I arranged for one of the earliest parking deals with then Goto.com. Goto put up a basic page on Anything.com’s domains and gave us a small share of the advertising revenue earned. We later allowed other domainers to be a part of the program and I formally founded SmartName in October 2003 as a Yahoo! syndication partner.”
While the ESQwire.com decision was the one that put Goldberger on the map as a domain attorney, it was just the first in what would become a long string of successes. “I made it a point to handle a large number of cases in 2000-2001 at a very low fee in order to get a bunch of winning decisions I could cite, as well as build-up a good body of law. Any victory for a domainer is gratifying but if I had to point to a couple that were especially important they would be NewZealand.com and Mexico.com,” Goldberger said.
“NewZealand.com was the first case of a country trying to claim its domain. The owner’s entire business could have collapsed if this case was lost, so the pressure was on big time. It was a wonderful victory, particularly since the panel found that the Complainant engaged in Reverse Domain Name Hijacking. The funny thing is that the case was in the name of HRM, the Queen of England, so CNN.com had the headline: “British Queen Loses Out on Cyber Name.” Mexico.com was another case where an individual had invested a lot and worked very hard could have lost an entire business if I had not won.”
Lawrence Fisher
VP Business Development
SmartName.com
Goldberger’s venture into domain parking has also been a winner, with SmartName.com drawing high marks for the exceptional degree of landing page customization made available to their clients. “One of the principle things we focused on was giving domainers the ability to make their pages look like real sites. I always believed it harmed the long-term value of a domain if it just had a parking page, which lessened the chance for repeat visits and also discouraged users from sticking around and clicking on ads."
"We have built our reputation by focusing on making sites look nicer and treating domainers as truly the king of their domain. Lawrence Fischer, who was one of the early domainers from the Goto days has helped (as VP Business Development) in our mission to be one of the best PPC companies out there. Lawrence has an amazing sense for what makes a good domain and we operate as a great team. He is a great friend and our families have also become close including our boys,” Goldberger said.
The domain business continues to move at warp speed and new issues continually boil to the top. One in particular has special significance to attorneys like Ari. “The biggest changes in the legal space include an increased focus on typo-squatting of trademark misspelled domains. I was surprised how long the trademark community has tolerated this, with millions of dollars in advertising being spent on ads appearing on trademark domains that the trademark owners could get for free if they owned domains. The increased focus on PPC and recognition of the value of type-in traffic has increased the heat on domainers and PPC companies alike to stay away from trademarks. With my background in law I have always been uncomfortable with trademark typos and we have worked to stay away from that sort of traffic,” Goldberger said.
Ari has come a long way from collecting Coke bottles on the beach for a few pennies. Like many who have gained business success, he has just about everything he could wish for except more spare time. “Like many in this field, I spend a lot of time glued to a desk chair in front of a computer screen. However, I try to get in some bicycling every day and hope to get into some longer rides this summer. I enjoy spending time with my wife and two boys (ages 6 and 9). I like going to flea markets and looking for “old stuff” with my kids. I also enjoy classic movies. As everyone knows, the irony of the Internet and new technology is that it was supposed to give us more leisure time. The punch line is that the technology has just made it easier for work to follow us wherever we go.” Goldberger said.
Goldberger family June 2006 (left to right at back): Ari's father Adam,
sister Leora, Ari, mother Ruth and wife Sharon. Ari & Sharon's two sons are in front.
Earlier this year Ari got some trusted and much needed help when his big sister Leora agreed to come on board as his assistant at ESQwire. “I have worked the past six years with no help. I answered the phones, did the billing, typing, copies, everything. It's been crazy. I've been talking about hiring help for a few years but the problem is that I'm so busy that I can't take the time to train anyone. My sister has been working for attorneys for over 25 years so I always knew she could be a great help. My life is much more relaxed now as I can go on vacation and know someone I trust is back at the shop. Looking back I don't know how I did it without her!" Goldberger said.
Ari reserved special praise for his wife Sharon whom he met at law school where she was the best friend of one of his fellow law students. "It's been an interesting ride for Sharon to say the least. She's had to put up with my long work hours. Our first son was only about 3 months old when I was offered the job at Mail.com. We had just just purchased our first house the year before and had to sell it, pack up everything and move to an apartment in New York."
Sharon & Ari Goldberger
"Sharon was an entrepreneur too, leaving our comfortable, stable life in Cherry Hill behind and supporting me in joining this start-up in the new unknown territory of the online world. Sharon did all the banking for ESQwire, even though she had her hands full raising our first born in the big city in a one-bedroom apartment, and giving birth to our second son before we packed our bags and headed back to Cherry Hill."
"I don't think I could have succeeded in my endeavors without her love and support along the way. We will celebrate our 15th wedding anniversary next month and I hope my gift will be to spend more time with her and the boys. Nothing is more important than that!" Goldberger said.
Of course it is easier to put endless hours into your work when you love what you do and Ari does. There’s only one other profession he thinks he might enjoy as much and that is filmmaking. When Schindler’s List came out, Goldberger got a first hand look at the power of film. “I was very pleased when Spielberg made Schindler's List and told the story of the horrible experience our people suffered, particularly since it was so close to my parents’ experience,” Goldberger said.
“My mom was in that camp and knew a number of people who were saved by Schindler. Their neighbor, Bill Rosner, in Vineland was the youngest of the Rosner brothers, who were depicted in the orchestra in the movie. Bill played the bugle in the camp. The movie really got a lot of people talking about the horrors that were kind of kept under the rug for 50 years, and the movie brought comfort to my parents and other survivors."
When I learned that Steven Spielberg created a foundation to videotape the testimony of survivors I volunteered immediately. The USC Shoah Foundation Institute for Visual History and Education collected some 50,000 professional quality video interviews of survivors. I conducted about a dozen interviews for the foundation, which was a very rewarding experience. People must know about what happened so that this tragedy can never be repeated,” Goldberger said.
By Ron Jackson
In his junior year in high school, Ari stepped his fundraising endeavors up a notch, bringing a live celebrity to town for the first time. “I got comedian Kelly Monteith to agree to come but when I asked the principal of our school to help raise the $3,000 deposit he said no.
In his junior year in high school, Ari stepped his fundraising endeavors up a notch, bringing a live celebrity to town for the first time. “I got comedian Kelly Monteith to agree to come but when I asked the principal of our school to help raise the $3,000 deposit he said no. So, I went over his head to the mayor of our town who got the Board of Education to come up with the money!” Goldberger said. You see what I meant when I mentioned entrepreneurs being tenacious in the first paragraph.
“I gained a lot of business experience from these ventures,” Goldberger noted. “I have always loved creating these events which are like small businesses. I learned in high school, after the Kelly Monteith project, that I did not feel truly fulfilled if I was not planning some sort of an event, or on to some new business idea. I learned then that being an entrepreneur was a central part of my life – and it didn’t matter if I was raising money for myself or for a charity.”
Comedian Kelly Monteith
Ari’s first real job, where he earned a regular paycheck, came when he went to work for a fast food restaurant called Gino’s at age 16. “We sold burgers like McDonalds as well as Kentucky Fried Chicken. I quickly worked my way up to being the Chicken Man. I was proud to be the guy making the chicken and being part of the team making $2.65 an hour plus meals,” Goldberger said.
There were lots of other odd jobs along the way, including stints as a mall security guard, vacuum cleaner salesman and beer vendor at Philadelphia’s Veterans Stadium. There was also a summer job with the city road department where Goldberger one day found himself working side by side with a guy who had done prison time for murdering his wife with an ax. “He had found her in bed with someone else. Hardly said a word to me all day,” Goldberger recalls. A gig as a busboy at the Playboy Hotel and Casino proved more lucrative (and a lot less stressful). “I thought I was rich with $30-40 in tips in my pocket every night!,” Goldberger said.
Ari worked as hard in the classroom as he did out of it and wound up graduating from Vineland High School with honors. That earned him a place at the prestigious University of Pennsylvania in Philadelphia (an Ivy League oasis that U.S. News & World Report ranks as one of the top four colleges in America, along with Harvard, Princeton and Yale). “I was excited when I was accepted to Penn in 1979,” Goldberger recalled. “I started out as a pre-med student, much to pleasure of my Uncle Rudy, who was chief of pathology at Columbia Presbyterian Hospital in New York. He helped pay the tuition which my parents couldn't afford.”
Statue of school founder Benjamin Franklin in front of College Hall at
Goldberger's alma mater - the University of Pennsylvania in Philadelphia.
“College was a shock for me. I came from a small town and Penn was loaded with all these rich kids. One friend’s dad owned a multi-million dollar boating business, the father of another owned AAMCO Transmission. Kids of diplomats, noted authors, you name it. Boy, did Penn warp my sense of reality! I kind of felt inferior because my folks were not of that “upper crust.” Little did I know then how lucky I was and how special my parents’ unique experience was,” Goldberger said.
Pre-med did not work out for Ari. When he got a C in Biology 101 he started having second thoughts about his career choice. He took some business courses and did well enough in those that he was allowed to transfer into Penn’s world famous Wharton School of Business. “When I got that letter after my sophomore year, I was on top of the world, as I felt Wharton was the key to future opportunity,” Goldberger said.
With his move to Wharton, Ari’s entrepreneurial spirit flourished. “I ran an ad in Rolling Stone magazine selling “General Hospital” scrub shirts. I figured that the TV show couldn’t claim exclusive rights to a term like “General.” I received dozens of orders and checks in excess of $3,000, all made out to “General,” which I assumed I would have no problem depositing in a bank account. Boy was I surprised when the bank said I couldn’t open an account and deposit checks based on a DBA (Doing Business As) without formally filing with the state. The bank manager ultimately gave me a break and I fulfilled the orders,” Goldberger added.
“I ran a business with a partner in my junior year at Penn called University Maid Services. We hired maids to clean dorm rooms and made a profit. When the help did not show up, we got down on our hands and knees and scrubbed toilets and bathtubs. I have never minded getting my hands dirty and doing every part of a job of a business I have run. At the end of my senior year, I ran a business called University Movers, which charged a fee to move students to school from their homes in Boston and Philadelphia. I subcontracted movers in Boston and used Federal Express for the first time,” Goldberger said.
“I took a semester off from school my senior year to expand my maid service to serve Center City Philadelphia. I called it “The Maid Brigade, a housecleaning task force to meet all your needs in the fight for cleandom.” I got the phone number 925-MAID. This was in 1984 and I strongly believed then in the importance of a good name and number for a business – much like the importance of domains today.”
1984 flyer for Goldberger's maid service
"It was a big thrill for me that my family had its own store! My dad was his own boss and no longer had to work for the “man.” I called the store Kidz and designed a logo, painted the store, bought nice fixtures, helped them expand and negotiate a new lease. I was so incredibly proud when that new store was complete. I felt that finally my parents could be on their own and not have to worry about finances, and it was very gratifying to me that I had helped with this,” Goldberger said.
When Ari graduated from Penn in December 1984 he didn’t follow the path a lot of his classmates did. “I still preferred running my own business as opposed to working for anyone, including the Big 8 accounting firms and consulting firms that hired Wharton grads. It just wasn’t my scene,” he said.
Ari did take a brief stab at it though, taking a job in the associate buyers program at the Hecht Company, a department store chain in the Washington D.C. area. “I didn’t last long there as I didn’t like working for people. It just brought me no pleasure, and I felt that I should be back with my parents building Kidz into a retail empire. My Dad reluctantly agreed to have me work for them, but kind of gave me a hard time (probably rightfully so) for graduating from arguably the best business school in the world – and working at “the Mart.” He didn’t understand the gratification I derived from being a part of my own thing and helping my parents gain some financial independence. I know it pained him for me to not be working on Wall Street or something. Both my parents are very proud of what I’m doing now and that is extremely gratifying,” Goldberger said with a smile.
Logo Ari designed
for family business
“I helped improve Kidz and convinced my parents to allow me to open up a second location in another farmers market. Boy, was that a failure! I visited the market on a Saturday and it was so crowded I thought it would surely be a success. Later I learned that the only reason it was crowded that day was because they were having a baseball card show. The market was pretty much dead the rest of the time and the venture was very unprofitable. Ultimately, we closed the store.”
This was Goldberger’s first brush with failure but as I noted earlier, failures are often the best learning experiences for entrepreneurs who go on to achieve great success. You have to be resilient, keep plugging away at the ideas you believe in and learn from your mistakes, which is exactly what Goldberger did.
“As store owners, we received free monthly trade magazines touting the latest fashions. I was amazed that the magazines could get $2,000-3,000 for a full-page ad. We also attended trade shows which I knew were profitable. It was 1986 and the VCR had become a staple in everyone’s home. I thought it would be neat if I could come up with a video concept that was an alternative to both the trade magazine and trade show. The Kids Video Fashion Show was born. For the next several months I ate, slept and breathed this idea. I touted it as the first trade show buyers attended from the comfort of their home or office,” Goldberger said.
“I developed a demo and brochure and shipped it to all the major children’s wear manufacturers. While there was some interest, I did not have the funding or infrastructure to take it to the next level. The lesson I learned from this was that good ideas were not enough for a successful business. I decided I did not want to be this guy who just came up with great ideas but had nothing to show for it.”
“Around that time, I was watching the Senate confirmation hearings on President Reagan’s nomination of Robert Bork for the Supreme Court. I was very interested in the Senators’ discussion of constitutional law, and felt that maybe being a lawyer was something I was cut out for. I liked to argue, defend people’s rights, and it was a profession in which I could work for myself. I took the LSAT’s and was accepted to a number of schools, ultimately selecting Rutgers in Camden, New Jersey. I continued to work for Kidz and ultimately took over the business in 1991, doubling the size of the store and renaming it New Kidz at the Mart.”
Goldberger operated the business until 1993 when he finally gave it up to concentrate on his new life as a lawyer. Of course, life has a way of throwing you curves from time to time that take you to places you never expected to go. For Ari, one of those curves brought him into the domain business.
By Ron Jackson
I’ve always been fascinated by entrepreneurs, a special breed of people who have the guts to take great risks and the ability to create something out of nothing. [...]
I’ve always been fascinated by entrepreneurs, a special breed of people who have the guts to take great risks and the ability to create something out of nothing. The great ones have remarkable tenacity and an unwavering will to succeed. Many endure great hardship and experience multiple failures before finally tasting success. The domain business is full of people like this and I think the chance to be around them, more than any other factor, is what drew me into this industry and continues to make it more exciting that any other field I can imagine.
I never tire of hearing and retelling great entrepreneurial stories from people who have become leaders in this business. One of the best I’ve heard involves Ari Goldberger. The New Jersey native was in business before grade school when he started collecting pop bottles on the beach and turning them in for a penny or two in deposit money. From that time on he has always been immersed in one or more busy enterprises.
Ari Goldberger
ESQwire.com - SmartName.com
Most in this industry think of Goldberger as one of the world’s best domain attorneys. He is certainly that, but there's much more to his story. When I entered the business in the spring of 2002 there were plenty of corporate IP attorneys at the big domain companies, but just a handful of lawyers who represented the interests of domainers.
The Three Amigos (left to right): John Berryhill, Howard Neu and Ari Goldberger at the first T.R.A.F.F.I.C. conference in Delray Beach, Florida in October 2004.
In fact, at that time I kept seeing the same three names over and over – Ari Goldberger, John Berryhill and Howard Neu. Though they ran separate successful practices they were so omnipresent in the business that they came to be known as the Three Amigos. For that reason, like most, I only thought “attorney” when I heard Ari’s name.
That’s why it surprised me to learn in 2003 that he had also started a PPC (pay per click) parking company affiliated with Yahoo! (SmartName.com). With all of the legal matters he was handling I didn’t know where he could find the time to run a company at the same time. Of course, that is the hallmark of a true entrepreneur. Burning the candle at both ends is the norm.
I was impressed that he could juggle all of his responsibilities and still be successful with both enterprises. I was more impressed by stories I started hearing privately about Goldberger – about people in trouble that he had helped regardless of whether or not they could pay. Goldberger has always felt compelled to stand up for those no one else would stand up for. He can instantly identify with people in dire straits, those for whom help is nowhere in sight, because of the horror his own parents experienced.
Adam and Ruth Goldberger are both survivors of the Holocaust. Only 5% of the 50,000 Jews who lived in Cracow, Poland before the war managed to survive extermination by the Nazis. Ari exists today only because his parents were among that tiny fraction that made it through the nightmare.
Before the war, Ari's father Adam led a privileged life as the son of a dentist. When the Nazis invaded and herded most of the Jews off to concentration camps, Adam (then just 15 years old) was among 20 Jewish mechanics the Gestapo kept as prisoners who were forced to work on German vehicles. Near the end of the war Adam was driving a jeep that senior Gestapo officers were using to try to escape from advancing Russian forces. When they stopped for the night, Adam managed to drain the radiator while the Germans slept. He then convinced them he had to walk into town to get water for the radiator and used that opportunity to escape. Ari helped his father edit a book about his experiences called Prisoner of the Gestapo: How I Survived the Holocaust.
The Jewish mechanics. Adam Goldberger is standing, 3rd from left with arms folded. Ari Goldberger said "The mechanics were incredibly valuable to the Germans because they were in captured territory and needed working vehicles if they had to get away. My dad was particularly valuable as he was fluent in Polish and German."
When Ari’s mother Ruth was 12 years old her mother, Leonora, was taken away by the Germans and later perished in the Maidonek concentration camp. Ruth herself later went through several concentration camps, including the Plaszow labor camp in Cracow (spelled Krakow in English) that was featured in Steven Spielberg’s movie Schindler’s List (the 1993 Academy Award Winner for Best Picture). Ruth's father, well-known painter Leon Lefkowitz managed to escape to Russia with Ruth’s sister Anna. Leon, whose paintings hang in national museums in Cracow and Warsaw today, rolled up some of his canvases and used them to bribe guards along his escape route to Russia.
Speaking of his grandfather, Ari said, “he painted Jews and Gypsies, seeing a common thread in their homeless existence – never being accepted into the societies where they lived. The faces in his paintings foresaw what was coming. The irony is that when he escaped to the Russian side, the victims he had painted aided him when he became a victim himself.”
In the camps, Ruth was able to draw nighttime kitchen duty and eat the raw skins from the potatoes she had to peel. She reunited with Adam in Cracow after the war and the couple emigrated to Israel in 1946. Ruth did not learn until 1950 that her father had survived the war and was living in Russia, but neither he nor Ruth’s sister Anna were allowed to leave the country. She would never see her father again as he died just a few years later. It would be another 26 years before Ruth was able to travel to Moscow in 1976 and see Anna for the first time in over three decades.
After Anna died, one of her friends brought three of Leon’s paintings to the U.S. in 1990 to give them to the Goldberger family. Inspired by that artwork, Ari and his father traveled to Cracow six years later and cataloged some 50 of Leon’s paintings that hung at various locations in Poland. “I believe that I inherited a lot of my creativity and care for the underdog from my grandfather and parents,” Ari said.
1996 photo of Ari Goldberger (left) with a museum guide and Ari's father Adam at a gallery in Cracow, Poland. They are standing next to a work done by Ari's grandfather, noted Polish painter Leon Lefkovitz.
Ari’s parents moved from Israel to the United States in 1958, following friends and relatives who shared the dream of a better life in America. Ari was born 3 years later in Vineland, New Jersey, making him a first generation American. “My father worked as a truck mechanic and later was a foreman for a trucking company. My mother worked as a lifeguard, ballet instructor, and ran an exercise class she called “slimnastics” at the local YMCA.
“I think my first taste of business was when I was around 3 or 4,” Goldberger recalled. “We used to go to this beach frequented by other Jewish immigrants. I would ask people for their empty Coke bottles so I could get the 1 or 2 cent deposit and buy a pretzel stick, Sugar Daddy, or wax bottle. When I was 5 or 6 a buddy of mine and I had fun doing these “stores” where we would lay stuff out in our front yard. We didn’t care if we sold anything. Just running the store was fun!”
“We even ran a library – as we thought libraries could make money on the late fees! Even though we didn’t make a dime, it was still a blast. I think because I was kind of shy that running a business was a vehicle for me to meet and interact with people. I think it is that combination of the social connection of running a business, along with the gratification from succeeding that has motivated me from age 3 until today. It’s just fun!” Goldberger declared.
“Growing up, I knew at an early age that my parents were different. I knew about the Germans and there was always this sense of the preciousness of life and the importance of being kind to the “little guy.” When I was 8 my mom told me about the Jerry Lewis Telethon. I had always loved Jerry Lewis movies but was so impressed that this guy dedicated his life to helping handicapped children,” Goldberger said.
That motivated him to begin a summer ritual of running carnivals, getting the neighborhood kids to assist. “The first carnival was to benefit the local hospital. We probably raised about $20 but we were proud and it made the paper,” Goldberger said. “The next year I got more sophisticated and got the idea of calling local businesses out of the Yellow Pages for donations of merchandise and services to sell. I really gained a lot of business experience from this and loved organizing all the neighborhood kids and parents who helped out.”
Above - newspaper clipping shows Ari Goldberger (in baseball cap standing to the right of the seated policeman) and friends he called on to help put on a fundraiser for Muscular Dystrophy. Ari arranged for the policemen and patrol car to be at their carnival as one of the attractions.
“When I got a little older I got interested in stamp collecting, helped found a stamp club and organized Stamp Exhibits to benefit Multiple Sclerosis, as our adult advisor’s wife suffered from this disorder. In high school, I was active in a number of clubs and had fun organizing dances to raise money for events. I was shy and probably would have never attended a dance if I hadn't organized some first!” Goldberger said.
A Fascinating interview with Ari Goldberger, renowned Domain Attorney, discussing his recent involvement with Mess.com and various other legal issues. Monte also gets an update from Ron Jackson from DNJournal on the current news in the domain world.
Listen the interview here:
[embed]http://www2.webmasterradio.fm/mp3/domainmasters/05/DM020905.mp3[/embed]
Article Source: TheDomains.com]
The Mexico Tourism Board has lost its attempt to take Mexico.com away from a client of well-known domain attorney Ari Goldberger. In a UDRP decision handed down August 9, the panel ruled that the Tourism Board (majority owned by the government of Mexico) was engaged in a reverse hijacking attempt. This is the third time Goldberger has successfully defended attempts to take country domains away from his clients
A Fascinating interview with Ari Goldberger, renowned Domain Attorney, discussing his recent involvement with Mess.com and various other legal issues. Monte also gets an update from Ron Jackson from DNJournal on the current news in the domain world.
British queen loses out on cyber name: GENEVA, Switzerland (Reuters) -- Queen Elizabeth, acting as trustee for former British colony New Zealand, lost a legal battle to claim the Internet domain name newzealand.com from a U.S. firm, international arbitrators have ruled.
GENEVA, Switzerland (Reuters) --Queen Elizabeth, acting as trustee for former British colony New Zealand, lost a legal battle to claim the Internet domain name newzealand.com from a U.S. firm, international arbitrators have ruled.
The decision, issued by the World Intellectual Property Organization on Friday, is the first alleged cybersquatting case concerning a country domain name brought to the United Nations agency, according to WIPO assistant-director Francis Gurry.
"It is the first country case," Gurry said.
Seattle firm can keep domain
In a unanimous ruling, three neutral arbitrators named by WIPO found that New Zealand had not registered the disputed name as a trademark. They ruled that Virtual Countries, Inc., a company based in Seattle which registered the site in the United States in 1996, had not acted in bad faith.
The site, which calls itself a "window on New Zealand," offers information for tourists, immigrants and students.
New Zealand is a constitutional monarchy which has retained Britain's Queen Elizabeth as its head of state. The case was filed against Virtual by "Her Majesty the Queen, in right of her government in New Zealand, as trustee for the citizens, organizations and state of New Zealand."
The site carries a disclaimer that it is "not affiliated with any government entity associated with a name similar to the site domain name."
Parties to a WIPO dispute have 10 days to appeal a decision.
The Hearst Corporation is trying to force a Philadelphia lawyer to stop operating a Web site with a name similar to Esquire magazine, which Hearst publishes.
The Hearst Corporation is trying to force a Philadelphia lawyer to stop operating a Web site with a name similar to Esquire magazine, which Hearst publishes
In a lawsuit filed in Federal court in New York on May 15, Hearst asserts that ESQ.wire, the name of a legal-issues bulletin board operated by the lawyer, Ari Goldberger, infringes on Hearst's trademark. Among other remedies, Hearst is asking for an injunction to prevent Goldberger from using the Internet domain name esqwire.com.
However, Goldberger, a New Jersey resident and an associate in the law Philadelphia firm of Pepper, Hamilton & Scheetz, is nonplused by the lawsuit.
"I'm going to take it all the way," he said. "I'm very, very confident."
Domain names, the root parts of Internet addresses that end with suffixes like .edu and .com, serve to uniquely identify computers on the global computer network. In its lawsuit, Hearst argues that by using the domain name esqwire.com, Goldberger will deceive people into believing that his service is "authorized" or "sponsored" by the publisher.
The roots of the name are different for the magazine and the bulletin board. The magazine name derives from an archaic reference to an English country gentleman or squire; the bulletin board's name alludes to an honorific -- usually used in the abbreviated form, esq. -- after the name of a lawyer.
One curious aspect to this lawsuit is the fact that Hearst never registered the domain name esquire.com. That name belongs to PageWeavers, a Web design company in Sacramento, Calif. PageWeavers' lawyer, William H. Kochenderfer of the Tellis & Kochenderfer firm, said that Hearst "sent us a nasty letter" demanding that the company relinquish the name and had threatened legal action. Kochenderfer said that InterNIC, the governing body that administers domain names, had put esquire.com "in a deep freeze" -- meaning that no one can use the domain name -- while PageWeavers weighs its response.
Currently the ESQwire Web site is in an early stage of development and primarily contains information about the Hearst lawsuit. Goldberger said he envisioned the site, described on its home page as "Your firm away from firm!" as a service to help solo-practice lawyers network with each other and use resources currently available only to large firms.
"For me, this is an opportunity to practice law in a revolutionary way," Goldberger said. "Nobody's doing it the way I'm doing it."
Officials at the Hearst Corporation and the company's outside counsel declined to comment while the case is being litigated.
Goldberger said that development of ESQ.wire would continue despite the lawsuit and that he was continuing to look for investors and clients.
"I don't believe there's any credibility whatsoever to their infringement claims," Goldberger said, "so they're not stopping me. They don't have a monopoly on a common word in the dictionary."
On Friday, Goldberger filed a motion to dismiss the case. A trial, if the litigation reaches that point, will not take place for several months. Goldberger said he had no plans to settle.
"I really want to use the name to the fullest," he said.
In a separate action, Hearst is attempting to block Goldberger's registration of the name ESQ.wire as a trademark.