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Persona.com survives second UDRP from different complainant

October 9, 2012Domaining, Domainnamewire, persona.com, Policy & Law, udrpComments Off on Persona.com survives second UDRP from different complainant

Persona.com 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?

Persona.com 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 MetaTrader.com.

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 DataServ.com

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

Company files UDRP after $20,000 offer rejected.

Frank Schilling’s Name Administration has successfully defended the domain name DataServ.com 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 DataServOnDemand.com.


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L.A. company denied chance to use dot.com bust Kozmo.com’s domain name

October 4, 2012Domaining, Domainnamewire, kozmo.com, Policy & Law, udrp, world intellectual property organizationComments Off on L.A. company denied chance to use dot.com bust Kozmo.com’s domain name

Kozmo.com may be defunct but it’s domain registration lives on.

KozmoIn July I wrote about how Los Angeles company Yummy Foods, LLC wanted to relaunch the Kozmo.com delivery brand.

Kozmo.com was one of the biggest dot.com busts. It raised around $250 million in order to deliver a pack of gum to your house with no delivery fee.

Yummy Foods has two trademarks for “kozmo” for delivery of food and other goods. But despite Kozmo.com going out of business over a decade ago, the domain name remains registered in the defunct company’s name.

Yummy Foods’ lawyers got creative to try to convince a World Intellectual Property Organization panel that the domain should be transferred. For example, it argued that since Kozmo.com is defunct it is in violation of United States law and the Network Solutions’ Terms of Service by owning the Disputed Domain Name.

Here’s what the panel had to say about that:

…Complainant’s contention that Respondent does not exist raises difficult questions as to the validity of the present proceedings, since both parties must have a legal existence…While this Panel acknowledges the inherent difficulty of securing a domain name from a non-existent entity, and the possible validity of the contention that a non-existent entity cannot in good faith maintain a domain name, the Policy was not designed as a tool for obtaining domain names from defunct corporations.

The bigger problem with Yummy Foods’ case was that it couldn’t prove that the domain name was registered and used in bad faith. After all, in the words of the panel:

Respondent could not have known of Complainant’s mark when it registered the Disputed Domain Name. In fact, as Complainant has repeatedly emphasized, Respondent ceased to exist almost ten years before Complainant began operations under the KOZMO mark.


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Kate Spade files complaints over .co and .xxx domains

September 27, 2012Domaining, Domainnamewire, kate spade, Policy & Law, udrpComments Off on Kate Spade files complaints over .co and .xxx domains

Company upset over Kate Spade domain names.

Kate SpadeFashion brand Kate Spade, LLC has filed UDRP complaints at World Intellectual Property Organization against the owners of two domain names: KateSpade.co and KateSpade.xxx.

KateSpade.co resolves to a page announcing that the domain name is for sale; the .xxx domain goes to a domain name registrar “coming soon” page.

Kate Spade has filed UDRP complaints before — but these are the first two since 2008. That makes me think the company just became aware of “new” domain extensions such as .co and .xxx.

Both top level domain names offered sunrise periods during which the company could have acquired (or blocked, in the case of .xxx) the domains for a fraction of the cost of a UDRP filing.

The company was successful in its previous four UDRP cases filed between 2002 and 2008.


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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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CrossFit Blows (and CrossFit isn’t happy about that)

September 24, 2012crossfit, Domaining, Domainnamewire, Policy & Law, udrpComments Off on CrossFit Blows (and CrossFit isn’t happy about that)

Florida training center upsets CrossFit.

CrossFit may be good at kicking peoples’ butts into shape at the gym, but now it’s doing burpees in front of an arbitration panel.

A UDRP case was just filed at National Arbitration Froum for the domain name CrossfitBlows.com.

What’s interesting is that the domain name is owned by an apparent rival to the CrossFit program called Monsters Training Center in Florida.

If you go to CrossFitBlows.com you’ll see an unfriendly message: #FYF #Monsters

Companies frequently register “blows” and “sucks” versions of their names. This is especially important for an exercise movement that’s sure to have its detractors.

CrossFitBlows.com was registered in January of this year.

CrossFitSucks.com was registered to someone at Amherst College back in 2008.


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WallStreet.com: panel rules reverse domain name hijacking

September 17, 2012Domaining, Domainnamewire, Policy & Law, reverse domain name hijacking, udrp, wall-street.com, wallstreet.comComments Off on WallStreet.com: panel rules reverse domain name hijacking

Wall-Street.com blasted for its attempt to hijack WallStreet.com domain name.

A three person World Intellectual Property Organization panel has found Wall-Street.com, LLC guilty of reverse domain name hijacking over the domain name WallStreet.com.

Wall-Street.com based much of its UDRP case against WallStreet.com on some relatively recent transfers of the domain name, which it said were new registrations. However, it turns out the domain name has essentially been held by the same party since 2001.

From the outset, any attempt to get a descriptive, seven figure domain name like WallStreet.com through UDRP reeks of reverse domain name hijacking.

But in this case it’s particularly bad. After filing the UDRP, Wall-Street.com emailed the owners of WallStreet.com with this message:

“It was a joint decision to file the UDRP on behalf of Wall-Street.com. The reason for the filing is simple, we needed to accelerate the process of coming to a settlement on how we can work together on the Wall Street Package.”

In other words, we’re going to bully you to the table.

That’s certainly not using the UDRP in good faith.


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City of Paris ordered to pay $100k for reverse domain name hijacking

September 17, 2012.paris, Domaining, Domainnamewire, parvi.org, Policy & Law, reverse domain name hijacking, udrp, ville de parisComments Off on City of Paris ordered to pay $100k for reverse domain name hijacking

Paris guilty of reverse domain name hijacking, ordered to pay over $100,000.

A U.S. federal district court has ordered Ville de Paris (City of Paris) to pay $100,000 for reverse domain name hijacking and tortious interference.

Judge Melinda Harmon also ordered the city to pay $26,830 in attorney’s fees and costs.

The judgment stems from a UDRP the city of Paris filed against the owner of Parvi.org in 2009. In that case, panelist Andrew Christie decided to give the domain name to Paris despite determining that the domain name was not originally registered in bad faith.

The domain owner sued to stop the transfer. His lawsuit asked for a determination that he wasn’t cybersquatting and that Paris was attempting reverse domain name hijacking.

When Paris filed the UDRP with World Intellectual Property Organization it agreed to court jurisdiction in the location of the domain registrar, which was Texas. Yet, despite agreeing to this jurisdiction, the city decided not to show up to fight the charges. (This isn’t the first time Paris has run away from U.S. jurisdiction after picking a fight.)

The judge entered a default judgment against Ville de Paris. She issued the final judgment with damages on Friday.

This is the second Texas court I’m aware of that has awarded six figure damages for reverse domain name hijacking.

Will Parvi.org’s owner ever collect the judgment? It won’t be easy. But keep in mind that the defendant here is applying for the .paris top level domain name. It won’t be disqualified from getting the TLD just because it’s guilty of reverse domain name hijacking (the guidebook allows three such rulings before you’re disqualified). But it’s possible .paris will be an asset in the United States, which might give Parvi.org’s owner something to go after.

The plaintiff’s attorneys in the case were Travis Crabtree, Paul Keating, and John Berryhill.


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Did “Netbank” lie, or was it just inept in this UDRP?

September 14, 2012Domaining, Domainnamewire, Policy & Law, udrpComments Off on Did “Netbank” lie, or was it just inept in this UDRP?

A quick look at archives disproves a UDRP complainant’s statement.

UDRP complainants and their lawyers make all sorts of claims when filing UDRPs. Sometimes they make assertions that are false, and sometimes these are honest mistakes. But at what point does it become deliberate? And at what point does not using freely available tools to verify complaints become problematic?

Take the decision just handed down by WIPO against NetBank for the domain name bancanet.com.

(I should note that I’m not sure exactly who the complainant, identified as Netbank Inc, is. You’ll recall that NetBank was an early internet bank that was shut down by regulators in 2007. Netbank.com now forwards to another bank, but that bank is located in San Diego while the complainant in this case is identified as being in Phoenix.)

Here’s what NetBank had to say (as the panel explained it) about Banco Nacional de Mexico and the domain name, which Banco Nacional registered in 1999:

With regard to bad faith, the Complainant argues that the disputed domain name is not used and has apparently never been used since its registration, that the disputed domain name was registered by the Respondent in order to prevent the Complainant from reflecting its marks in a corresponding domain name, that the Respondent has engaged in a pattern of the above-described conduct (continuously renewing the disputed domain name without using it), and that the disputed domain name was registered primarily for the purpose of disrupting the business of the Complainant, who is a direct competitor of the Respondent.

I’m not a lawyer. But in 10 seconds I was able to disprove this initial statement about the domain name never being used. Just go to screenshots.com/bancanet.com and you’ll see this:

Sure looks like the bank used this domain name, right? It clearly calls its online banking BancaNet. It has since shut down the URL due to security issues.

Maybe they hadn’t heard of Screenshots.com. But everyone knows about Archive.org, and you’ll find plenty of similar archives of the site there.

In the end the panel didn’t even consider this issue because the complainant didn’t show rights to the term NETBANK and Banknet, despite claiming registered and common law rights.

The only live U.S. trademark application I can find for Netbank is an intent-to-use filing from Bank of Internet USA, which is where Netbank.com currently forwards. The only live U.S. registered mark for Banknet is registered to Mastercard.


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