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ESQwire.com wins UDRP for client with minority finding of RDNH

September 26, 2012ari goldberger, Domaining, Domainnamewire, esqwire, Policy & Law, reverse domain name, udrpComments Off on ESQwire.com wins UDRP for client with minority finding of RDNH

A RNDH opinion worth reading.

Ari Goldberger’s ESQwire has helped its client PortMedia defend the domain name Altom.com in a UDRP.

One of the panelists determined that the case was reverse domain name hijacking, and his point of view is worth reading.

The domain name was registered in 2002. Although it was protected by whois privacy for much of the time, I have good reason to believe that the current registrant is the one that registered the domain name back in 2002. It underwent a name change in the interim.

The complainant wasn’t formed until 2008.

On that basis alone, the complaint fails.

While the three person panel found in favor of the respondent, it didn’t fully consider if this was reverse domain name hijacking. It appears the respondent didn’t specifically ask for a finding of RDNH.

But panelist Neil Brown, who believes panelists should consider RDNH even when not directly asked, determined that this is an example of RDNH.

Here’s what Brown had to say:

The Complainant’s case was hopeless from the beginning and should not have been brought. It may well be that the Complainant and its lawyers were not familiar with the UDRP. But even if that were the case, a cursory examination of the Policy shows that certain basic elements must be proved and if those preparing the Complaint find, as anyone familiar with the facts of this case must have deduced, that it would be impossible to prove those elements, the claim should not be brought.

There was never any prospect of proving any of the three elements in the Policy as the facts clearly do not exist to prove them and the Complainant seemed to acknowledge this by not even attempting to prove them. It did not submit that it had a registered or common law trademark or adduce any facts that, even on the most charitable interpretation, showed that it had such an entitlement. Its case on the other two elements was a series of formal assertions and reliance on the fact that the disputed domain name was for sale. It also overlooked the main point about this case which is that the disputed domain name was registered 6 years before the Complainant was incorporated, requiring that for the Respondent to be liable, even in a layman’s sense, it must have had what were referred to in Success Bank v. ZootGraphics c/o Ira Zoot, NAF Claim No. 1259918 as “psychic powers” to predict that the Complainant would be incorporated several years later.

All of this might be put down to inexperience rather than bad faith. But what has swayed me is that instead of dealing with the evidence, the Complainant chose to attack the Respondent’s bona fides and to allege, before it saw the Response and the Respondent’s version of events, that it was guilty of bad faith and that it was “predatory and parasitical”, apparently because it had registered a domain name that the Complainant, 10 years later, now wanted, but which is for sale at a price it does not want to pay.

Such allegations can always be made, but they should not be made unless there seem on reasonable grounds to be facts to support them. Moreover, those who make such allegations run the risk of an examination of their own bona fides, for allegations of bad faith made without supporting facts are themselves a form of bad faith and that is the feature that the Rules require to be in evidence before a finding of Reverse Domain Name Hijacking may be made. When it is then seen on such an examination that its own case, complete with accusations of bad faith and of other allegedly improper behaviour, is not only without merit but entirely baseless, a finding of Reverse Domain Name Hijacking is open and should be made in an appropriate case. This case, on the totality of the evidence is such a case and it is by no means a borderline one.


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Ari Goldberger gets another UDRP win for Kevin Ham

August 2, 2012ari goldberger, Domaining, Domainnamewire, esqwire, kevin ham, Policy & Law, udrp, vertical axisComments Off on Ari Goldberger gets another UDRP win for Kevin Ham

Vertical Axis can keep Detur.com domain name.

Kevin Ham’s Vertical Axis has won a UDRP over the domain name Detur.com with the help of domain name attorney Ari Goldberger of ESQwire.com.

The complaint was brought by Detur International B.V., a tourism company that started in Turkey. Among Detur’s complaints: that the domain name linked to travel sites and that it forwarded to snog.com, which it characterized as a site with “sexy photos”.

Vertical Axis claimed the domain name was merely a typo of the common English word “detour”.

The majority of the panel found that there wasn’t proof that the domain name was registered and used in bad faith.

However, panelist Ugur G. Yalçiner disagreed. One of the particularly head-scratching determinations by Yalçiner is that the word “detour” isn’t a generic or descriptive word.

Here’s what he had to say:

Respondent has stated in its response that it has registered and owns hundreds of domain names which solely incorporate typographical variations of English dictionary words, such as: aircondioners.com; airelines.com; alibama.com; … coupoons.com; creidtcards.com … etc.”. Those are really generic or descriptive words. But in the present case the situation is different. “Detur” is not generic or descriptive word.

Uh, yeah, detur is not generic or descriptive. But the word it’s a typo of — detour — is. That’s the point.

The panel ruled 2-1 in Vertical Axis’ favor.


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Prominent UDRP Defense Attorneys Also Opposed to UDRP Reform

May 11, 2011ari goldberger, Domaining, Domainnamewire, John Berryhill, Policy & Law, udrpComments Off on Prominent UDRP Defense Attorneys Also Opposed to UDRP Reform

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.


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Minnesota Company Guilty of Reverse Domain Name Hijacking

December 22, 2010ari goldberger, Domaining, Domainnamewire, National Arbitration Forum, Policy & Law, reverse domain name hijacking, udrpComments Off on Minnesota Company Guilty of Reverse Domain Name Hijacking

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.


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Telepathy Wins Reverse Domain Name Hijacking Charge Against 3-D Company

December 6, 2010ari goldberger, Domaining, Domainnamewire, nat cohen, Policy & Law, reverse domain name hijacking, telepathy, udrpComments Off on Telepathy Wins Reverse Domain Name Hijacking Charge Against 3-D Company

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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