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Company blames competitor’s use of domain name for 40% drop in business

October 17, 2012Domaining, Domainnamewire, Policy & LawComments Off on Company blames competitor’s use of domain name for 40% drop in business

It really should have registered the domain name earlier.

A Boise garage door company blamed a competitor’s use of the domain name for a 40% drop in business.

And it managed to win a UDRP for — although the decision didn’t hinge on this drop in business.

The case pitted a company called Boise Garage Door LLC against competitor Sunrise Garage Door Co. The complainant has been in business for decades but finally got a trademark on “Boise Garage Door” this year.

Back in 2009 Sunrise said it hired a consultant to help it get more business on the web. The consultant researched SEO terms people use when they need a garage door in the respondent’s service area. This consultant, not surprisingly, found that “boise garage door” was a common term. It also found other terms, such as “nampa garage door” and “garage door” were commonly searched.

So Sunrise Garage Door hand registered to get some search engine traffic.

Panelist Harrie R. Samaras found against Sunrise. In doing so, she showed she has little grasp on internet marketing. Consider this:

Relying on an IT expert does not carry the day here for Respondent. Respondent has admitted that there were other phrases (that were not the Mark of a long-standing local competitor) such as “garage door” and “nampa garage door” that were in the IT expert’s list and which Respondent could have used. Indeed, Respondent admits that it registered the same day it registered the Domain Name “even though there is no company named Nampa Garage Door.” Nonetheless Respondent chose to register a domain name that incorporates the entirety of a long-term local competitor’s trademark clearly with intent for commercial gain – to increase a growing source of customers from the Internet. Internet users who know Complainant and logically use the Domain Name (encompassing the Mark) expect that they will arrive at Complainant’s website, but they are actually taken to Respondent’s website. From there, they may or may not bother to find their way to Complainant’s website or business. But further, when using the search terms (as opposed to the Domain Name) “boise garage door” in the Google search engine, the Panel learned that Respondent’s search optimization strategy is working for it because the first result is Respondent’s website, not Complainant’s website. Even more problematic is the fact that the title of that first result in the search reads: “Boise Garage Door Experts | Sunrise”. So Internet users searching for Complainant by name, not only are taken to Respondent’s competing website, but also see the title (“Boise Garage Door Experts | Sunrise”) which suggests a misleading association between the two competitors.

Samaras is confusing marketing based on a descriptive term versus a brand term. The fact that the search result says “Boise Garage Door Experts” shows that Sunrise is trying to capitalize on a natural term people in Boise are searching when looking for a garage door, not necessarily the brand name.

This misunderstanding is also evident here:

Respondent argues that it “only uses the domain page [Domain Name] as a forwarding domain to its primary web page at . . . Any confusion by potential customers should be resolved the minute the webpage is loaded, because if any consumer attempts to find Boise Garage Door’s webpage, they would immediately realize they were not on that page once Sunrise Garage Door has loaded.” The fact that Respondent “only” uses the Domain Name so that customers or potential customers will end up at its competitive website is not an exculpatory explanation but, rather, an incriminating admission.

No, it’s not incriminating. It would be incriminating if the term was a company name only, but in this case it’s also a descriptive name. If you buy the argument that the domain was to take advantage of the descriptive term, then this isn’t incriminating at all.

Here again:

And Respondent permitted a misleading use of the Domain Name (as discussed above) in conjunction with the presentation of the search results to suggest some affiliation between the parties.

Now, all this said, if these were the only details I’d say it looks like Sunrise just got screwed. But there’s one item that bothers me.

Sunrise’s consultant told it about other keywords that could be registered as domains to drive web traffic. Those include some that would be very expensive, including But was on that list. According to the panelist’s write up, Sunrise said it registered when it registered This would jive with Sunrise’s claim that it was targeting it just for SEO purposes as a descriptive term.

But the whois record for shoes it was registered two years later — in 2011.

As for Boise Garage Door LLC’s 40% drop in business? Sunrise points out that it coincided with the overall economic funk.

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WalMart loses web site battle against United Food & Commercial Workers International Union

October 17, 2012Domaining, Domainnamewire, Policy & LawComments Off on WalMart loses web site battle against United Food & Commercial Workers International Union

Arbitration panel rules union can keep domain names used to criticize retailer.

Wal-Mart has failed to take down a United Food & Commercial Workers International Union (UFCW) web site critical of Walmart.

A single member World Intellectual Property Organization arbitration panel has ruled that the UFCW can retain its domain names,, and is a web site that seeks to give the union’s take on WalMart:

As Walmart celebrates its 50th anniversary this year, the company is telling customers and communities a one-sided story about its business and values. Walmart wants us to think their history reflects the promise of America –if you work hard, anything is possible.

The site was created after Walmart created its own web site to commemorate 50 years in business,

The panel ruled that the domain names weren’t registered and used in bad faith.

I’m a bit surprised by the decision. Although gripe sites can be protected in WIPO UDRP decisions, typically they use domain names that are clearly distinguishable from the trademark holder’s (e.g. “sucks”. In this case you have to visit the site to realize it’s not owned by Walmart. As the panelist points out, it’s not even entirely clear until you poke around the UFCW site a bit.

I’m also surprised that the panelist agreed that the UFCW is “not using the Disputed Domain Names to its own commercial advantage; there is neither advertising nor requests for financial support on Respondent’s website.” The site provides a clear business advantage to the union, and even has a lead generation petition form. Just because the site doesn’t have paid advertising or direct requests for contributions doesn’t mean it’s not being used for financial gain.

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CitizenHawk patents its typo recovery business model

October 16, 2012citizenhawk, Domaining, Domainnamewire, Policy & LawComments Off on CitizenHawk patents its typo recovery business model

An in-depth look at CitizenHawk’s business model.

Brand protection company CitizenHawk has been granted a patent that broadly covers its business model of recovering typo domain names on behalf of clients and then monetizing them.

The U.S. patent basically explains the company’s entire business model from start to end; at least what the model was at the time it filed its patent.

If you want to know exactly how it goes about discovery, categorizing, and recovering domain names, you should read the entire patent (pdf). But here’s a summary.

First, CitizenHawk signs up a web brand as a customer. (CitizenHawk submitted a copy of its contract with Lillian Vernon as an example.)

Then its software goes to work, identifying possible typos of the client’s domain names. It then analyzes each typo including who owns it, how they are monetizing it (it even grabs affiliate IDs if the domains are monetized through affiliate programs), etc. It collects as much evidence and information about the domains as possible including their IP addresses, screenshots, etc.

Next, the system determines which typos might get a high volume of traffic. It checks this data against information about the domain owner to determine which domains to go after and how to do it.

For example, the system might determine that 10 Lillian Vernon typo’s are high traffic and are owned by the same person. It might piece this information together even if the whois information on each domain is different.

Then there’s a process to determine the best way to recover the domains. If the owner has cooperated with Citizenhawk in the past then they might just request the domains. The system could also determine that filing a UDRP is a good route.

If a UDRP is in order, the system automatically collects much of the evidence and arguments needed for the UDRP and puts in in a template (which can sometimes go awry).

Once a domain is recovered, Citizenhawk monetizes the domain name and takes a cut of the earnings. This is one reason they are keen to get clients who have affiliate programs; once they recover a domain they can monetize the traffic through the affiliate program for a period of time and earn revenue. The patent also mentions that the company can be paid based on the traffic the domain receives (e.g. CPC or CPV).

Here’s how the patent describes this post-recovery monetization. (Customer’s representative refers to CitizenHawk in this case.)

For instance, suppose the customer’s representative recovers the typo domain aeroopostale (a typo derivation of the trademarked term Aeropostale). Upon transfer of the domain by the cybersquatter to customer’s representative’s chosen registrar, such as, GoDaddy, Inc., the WhoIs record for the domain can be updated to reflect Aeropostale-approved data. Additionally, the DNS information for aeroopostale may be updated to reflect customer’s representative’s names servers. Subsequent or following the name server change to reflect customer’s representative’s name servers, customer database 140 may be updated to reflect that the domain has been recovered (See FIG. 4; stage classification drop down) and a new redirect URL can be added.

One example of monetization by the customer’s representative could be CPA fees. Should a visitor purchase an item using a redirect link, customer’s representative may be entitled to a commission on the value of the items purchased. The commission-value could be designated in the customer’s representative’s contract with the customer (Aeropostale). Assuming the commission value is 5% and a visitor who uses a redirect link with a customer’s representative’s ID purchases a garment at Aeropostale for $100, customer’s representative would be entitled to a commission fee of $5 for that transaction (5% commission multiplied by $100 shopping cart value). The customer, Aeropostale, is responsible for all commission payments due. Because of the association with the monetization network, the customer can first pay the monetization network all commission fees due (including the monetization networks service fees). The monetization network then can pay the customer’s representative fees owed once all payments have been received from the customer. For those customers who do not have a monetization network affiliation, payment from the customer can occur directly.

Another feature is that the system can scan auctions to see if typos can be recovered by bidding for less than the cost of a UDRP. Of course, CitizenHawk has even hand registered domains in the past (especially expired ones) as part of its efforts.

Other companies, including Microsoft, have received patents related to discovering typosquatted domains and figuring out who owns them. Microsoft’s patent is reference with the application.

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Circa domain hack could cause problems

October 15, domains,, cira, Domaining, Domainnamewire, Policy & LawComments Off on Circa domain hack could cause problems

Startup’s domain name may violate .ca rules.

Startup Circa made a big splash today with the release of its news app for the iPhone. The hoopla has a lot to do with the company’s notable co-founders including Cheezburger Network CEO Ben Huh.

While Circa has a lot going for it, what it doesn’t have is the domain name It settled for the Canadian domain hack

A .ca domain hack doesn’t come with the political risk that you get with domains such as .ly (Libya). But it is a heavily restricted domain name and has pretty strong presence requirements.

It looks like Circa’s use of the domain name runs afoul of these presence requirements.

While the domain is registered to a Canadian man, .Ca registry CIRA’s forbids registrants to “…lend, lease, license or otherwise grant rights…” to any entity that wouldn’t otherwise qualify to register the domain.

The domain is currently registered to a Circa advisor. That’s not enough to qualify under presence requirements rules.

I suspect Circa could fix the issue fairly quickly with a Canadian subsidiary. But companies should be aware that these “cute domain hacks” come with strings attached — be they political or otherwise.

[Hat tip to .CA Member Forums]

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Battle of the bad names: eevzDrop sues evzDrop

October 15, 2012Domaining, Domainnamewire, eevzdrop, evzdrop, Policy & Law, trademark lawsuitComments Off on Battle of the bad names: eevzDrop sues evzDrop

Two social apps based on audio have very similar names — but both are pretty bad.

Two companies based in Illinois are duking it out over a really bad name for a social networking app.

Eevzdrop, LLC (two e’s at beginning) has sued EvzDrop, Inc. (one e), saying the latter is infringing its Eevzdrop mark.

Both names are a play on “eavesdrop”, as both companies offer social apps that involve audio.

And both of the names miserably fail the “radio test”, meaning that someone who hears it aloud will have no clue how to spell it.

Last month the defendant allegedly demonstrated its product at an event entitled “Technori Pitch” held in Chicago. Some people in the audience were familiar with the plaintiff and were apparently confused.

It appears that the defendant may have gotten to market faster than the plaintiff, as the plaintiff’s app has not launched yet.

Although both companies are in Illinois, it’s at least possible that the defendant was not aware of the plaintiff when it selected its name. Consider these two lines from the lawsuit (pdf):

67. Plaintiff has at least one hundred eighty five (185) pre-registered consumers for its EEVZDROP App.
68. Defendant intentionally adopted the Plaintiff’s mark EEVZDROP knowing it was a nationally-recognized brand owned by Plaintiff.

Calling yourself nationally recognized when you only have 185 pre-registrations seems like a bit of a stretch.

Eevzdrop also claims that its is identical in sound, appearance, and meaning to Evzdrop’s domain name

I suppose that’s correct — if you can pronounce either of these. What makes it confusing to me is that none of them own

Also confusing is that neither company appears to own the version of their names with an ‘s’ in place of the ‘z’. Multiple times writing this story I wrote the names as “EevsDrop” and “EvsDrop”.

If I were either of these companies I’d drop the dispute and find a better name.

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Say what?? It’s not reverse domain hijacking if you admit it upfront.

October 12, 2012Domaining, Domainnamewire, Policy & LawComments Off on Say what?? It’s not reverse domain hijacking if you admit it upfront.

When is a case of RDNH not RDNH? You won’t believe this one.

Some UDRP cases should be clear cut cases of reverse domain name hijacking.

Consider the decision just handed down over

The complainant was just formed. It recently applied for a trademark on “Good Universe” on an intent-to-use basis, meaning it hasn’t even used its mark in commerce yet.

The domain owner, a domain investor, has owned the domain name since at least 2004.

The complainant (actually two, True North Media, LLC and Good Universe Media, LLC) filed the case after it failed to negotiate to buy the domain.

The complainant even admits in the complaint that it will be difficult to win its case because the domain was registered well before it came up with its name.

However, it proffers:

…the Complaint advances the novel theory that the Respondent’s public advertisement of the Domain Name for sale, and its subsequent response to the Complainants’ attempts to purchase the Domain Name, demonstrate bad faith because the Respondent must have realized from the outset that the Domain Name was likely to correspond to a trademark that some party would ultimately pursue in the future, and that this unknown party could be induced to pay a high price for the Domain Name. The Complainants expressly seek a ruling to the effect that “registration of a domain name containing meaningful combinations of commonly used words, which would likely have its rights acquired in the future, solely for the purpose of gaining commercially from confusion or from selling it to the future rights holder for a profit constitutes bad faith registration and use.

The panel ruled that the complainant didn’t prove any of the three points necessary to win it case.

Slam dunk RDNH, right?

Amazingly, panelist W. Scott Blackmer declined to find RDNH. His rationale is simply amazing: because the complainant admitted upfront that it was a long shot, and offered a new (but ridiculous) idea of why it thought this was cybersquatting, he’s going to let them off the hook:

The Complaint concedes that UDRP complaints rarely succeed when a disputed domain name was registered prior to the establishment of a mark. The exceptions cited in the Complaint, as discussed above, do not stand for such a broad proposition as the Complainants urge, that it is bad faith to register domain names based on any “meaningful combinations of words” that might become trademarks in the future. Such an interpretation of the UDRP would effectively eliminate, in most cases, the Policy’s requirement for bad faith registration. The Complaint is forthright, however, in presenting the factual chronology and arguing for an extension of existing interpretations of the Policy. Therefore, the Panel does not conclude on this record that the Complaint was brought in bad faith or primarily to harass the Respondent.

Um, OK. So I can place a burden on you by filing a bogus UDRP. But if I state up front that I know it’s a long shot, that’s not abuse of the policy.

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Google and Yahoo .ie domain nameservers temporarily hijacked

October 10, 2012Domaining, Domainnamewire, Policy & LawComments Off on Google and Yahoo .ie domain nameservers temporarily hijacked

Visitors to and yesterday didn’t get what they were looking for.

Yesterday the whois record for was temporarily changed, along with its nameservers. Michele Neylon of Blacknight was first to write about the hijacking.

The nameservers for were also temporarily changed.

Who’s to blame? The registry for .ie, IEDR, issued a statement that insinuated that the problem was at the registrar for the domains, Mark Monitor. But Mark Monitor blamed lax security standards at IEDR.

It is certainly interesting that IEDR took its own systems offline to investigate.

You can follow more about this story here.

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No related posts. survives second UDRP from different complainant

October 9, 2012Domaining, Domainnamewire,, Policy & Law, udrpComments Off on survives second UDRP from different complainant successfully defended — for the second time.

If two completely different complainants file a UDRP against the same domain name, doesn’t that kind of show that it’s a common generic domain? was first hit with a UDRP back in 2006 by The Eye Academy of America Ltd. and Total Vision Eye Care Group, P.C. It won the case as the panel determined:

The Panel finds that common generic words are open for registration, and thus, Respondent has rights and legitimate interests in a domain name comprised of a generic term.

That determination did not stop a new complainant, Max Mara Fashion Group, S.r.l., from filing a case for the domain this year. In the decision just handed down, the new panel decided:

Lastly, Respondent argues that a prior UDRP panel has decided that Respondent’s use of the domain name was legitimate. See Eye Acad. of Am. Ltd. v. Ashantiplc Ltd., FA 644205 (Nat. Arb. Forum Apr. 6, 2006). The present Panel agrees with Respondent and finds that the use of the domain name for dating and personal advertisements can indeed be a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).

Max Mara was apparently frustrated that the domain’s owner, Ashantiplc Ltd, would not accept a four figure offer for the domain name.

(It’s also good to know that Sahar is alive and well.)

Ashantiplc was represented by John Berryhill in this most recent case.

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Software company guilty of Reverse Domain Name Hijacking against Frank Schilling

October 9, 2012Domaining, Domainnamewire, Frank Schilling, John Berryhill, Policy & Law, udrpComments Off on Software company guilty of Reverse Domain Name Hijacking against Frank Schilling

WIPO panel rules company filed UDRP “to obtain the disputed domain name at any cost”.

A World Intellectual Property Organization panel has found a software company guilty of reverse domain name hijacking in a UDRP filed against one of Frank Schilling’s domain names.

The UDRP was filed by MetaQuotes Software Corp. for the domain name

Schilling’s company registered the domain prior to MetaQuotes filing for a trademark registration or even copyright registration for its software.

MetaQuotes started corresponding with Schilling about the domain name back in 2009. At the time, Schilling’s company twice pointed out to MetaQuotes that the software company hadn’t filed for trademark registration until after Schilling obtained the domain name.

Nevertheless, when MetaQuotes filed the UDRP it omitted any mention of the prior correspondence between the parties.

Although Schilling and domain attorney John Berryhill didn’t explicitly ask for it, the panel found MetaQuotes guilty of attempting reverse domain name hijacking:

It appears from the Response that when the Complaint in this case was filed (nine years after the registration of the disputed domain name), the Complainant was clearly aware that the Respondent had registered the disputed domain name well before the Complainant had acquired any trademark rights. That fact was expressly drawn to the Complainant’s attention in correspondence between the parties three years ago. Moreover, the Complainant has failed to point to anything that would suggest that any reputation attaching to its mark at the date of registration of the disputed domain name was likely to have been known to the Respondent at that time. It appears to the Panel as if the Complainant persisted in filing these proceedings without regard to these factors, or to its likelihood of success in the case, and in spite of its past interactions with the Respondent. In these circumstances the current Policy proceedings as commenced by the Complainant appear to be little more than a blatant attempt to obtain the disputed domain name at any cost. In addition the Panel notes that the Complainant failed to disclose in the Complaint its pre-Complaint correspondence with the Respondent and did not deny its existence in its supplementary submission, which omission does nothing to reinforce its bona fides.

It appears to the Panel that the Complainant must have known when it filed the Complaint that in these circumstances there was no reasonable chance of success and that it was putting the Respondent to unjustifiable trouble and expense in defending these proceedings.

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Frank Schilling wins UDRP for

October 8, 2012Domaining, Domainnamewire, Frank Schilling, Policy & Law, udrpComments Off on Frank Schilling wins UDRP for

Company files UDRP after $20,000 offer rejected.

Frank Schilling’s Name Administration has successfully defended the domain name in a UDRP filed by St. Louis company DataServ, L.L.C.

DataServ made offers of $10,000, $15,000 and finally of $20,000, but couldn’t get Shilling to sell. After that it decided to try its hand at UDRP.

The offer of $20,000 certainly seems to indicate that DataServ knew it had little basis for filing a UDRP. Here’s how Name Administration explained this:

The Respondent did not initiate contact with the Complainant, but responded to contact from the Complainant concerning the disputed domain name. The fact that the Complainant was willing to offer such an amount, rather than to assert its alleged rights and demand transfer, provided the Respondent with the impression that the Complainant must have believed the disputed domain name was legitimately registered and used by the Respondent. The Complainant is not the only party who has contacted the Respondent, who has also received a similar solicitation from Dataserv Group Limited of Middlesex, UK, the holder of the junior European and UK trademark registrations.

DataServ, LLC tried to the make the argument that Name Administration should have been aware of it when it registered the domain and that it couldn’t “turn a blindeye” to trademark registrations. John Berryhill, attorney for Name Administration, pointed out that there were existing trademarks for DataServ when DataServ, LLC was founded.

It’s not wonder DataServ, LLC wants this domain: its current web address is

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