Morning Folks!!
If you pick a one member WIPO panel you are BRAIN-DEAD and CHEAP and the chances are you will lose your domain. It's that simple. Why even send the $1200? Just lay down!
So Berkens reported that a domain (canary.com) that should have been an EASY RDNH was actually lost because the domainer used a 1 member panel and I am not sure even with that how his attorney could lose, but they did. 1 member panels are the KISS OF DEATH and I have said it for years. You may as well just give them the domain and save a few grand.
So the valuable name Canary.com was transferred to the complainant because why?? Because the domain owner was Cheap or stupid or both? Pick your flavor.
Rick Schwartz
Dinho Santana www.portfolio2000.com
In Brazilian dictionary says: miser, avarice and stingy.
Domenclature.com
It appears that the king is right, 1 member panels are the kiss of death, we’ve seen some outliers recently, where the panelists applied decent jurisprudence; it should not be like this; these settings are not courtrooms; these panelists make ICANN, WIPO, the core, and all of it’s peripherals, look bad; if one doesn’t put up a vigorous defense, it should not be fatal; if one does, it should help; a 12 year old could adjudicate whether a 12 year old generic word, Canary.com, belongs to its Registrant or not! It shouldn’t take 3 adults to do the right thing. I urge those responsible to admonish this Australian panelist.
M.G.
Okay, paying extra for 3 member panel makes sense. That part is easy. But how to pick a lawyer for response? To make a right decision for a budget the respondent has, it is hard part. How much cost good UDRP lawyer? I don’t know and probably most of domainers don’t know either. It would be nice to show other domainers what expense they can expect if they pick one of well known UDRP lawyers, such as John Berryhill.
james
Rick,
The domain owner did not pay $1200 to lay down, in fact he paid $0, he is the respondent in a case with only one panelist. Get it?
Jonathan
Whatever, the domain registrant choice was, you have no right to blame the registrant. okay he is not Rick Schwartz and maybe he could not afford the best attorney but what kind of bone picking vulture looks up dictionary to condemn the registrant and not the judge.
sem
Hey Rick,
How about a post about AGL Australian Energy Limited filing a UDRP for AGL.com? AGL.com has been registered with the same guy since 1999. That energy company has billions yet they want to get the domain for nothing. Really nothing other than the piddly fee for UDRP filing. It’s just unbelievable. It’s quintessential greed, IMO.
Pat W
Also making this “one guy’ ( 1 member panel ) the Judge The Jury & The Executioner and Mixing Temptation into the Picture with this “one guy” and receiving envelope from the RDNH Theif with $5k or $10K or $20K in it and — Bingo — the RDNH Theif wins the $300K Canary.com by this “one guy’s” so called official “dumb” decision.
UFO
Why doesn’t someone with legal standing contact the losing registrant and take the case to court on a no win no fee. The fee for winning being x% of the domain sold on the open market.
Thats a joint venture isn’t it?
The panelist should be sued.
Domenclature.com
I’m sorry,it has to be said. This decision smacks of racism! So according to this Australian Panelist, this ‘little’ Chinese guy has no right to his own domain name, he had to lose his property. For what? That is not the future we want, WIPO!
UFO
Actually reading it again, you can see why he lost. Council for the complainant was quite good. They basically showed that he’d registered numerous names with no intent to develop and simply onward sell for commercial gain, 1 or more being trademarked domains.
Note:
‘ b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct;
In effect if you have a porfolio of names then the whole undertaking can be assessed against any specific name in a case. I had been aware of that quite a while ago and there is a certain wholesaler of domains that appears to have scraped the USPTO at some earlier point for commercially relevant names, or unwittingly bought 1 or more portfolios of names that have undertaken that process.
Domenclature.comDomenclature.com
@UFO,
I did not find what you found that they found.
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name;”
The name in question is generic Canary.com, which could be a bird, a proverb, an island, and so on… how do did you determine that he registered it for some trademark holder? Did the trademark include a dot and a com? And all the sundry right of the dot that is available as well?
Observer
If the domain community is to survive, they need to take some action against unreasonable decisions. They should help the owner for the next legal proceedings. It shouldn’t be regarded as his own personal issue, but the issue for all legitimate domain industry. Otherwise, similar things will repeatedly happen.
UFO
Ok, take a look at all the facts (as far as I can see).
1) He registers a whole bunch of names, one or more are trademarked names and after those trademarks.
2) He has a ‘for sale’ sign on the landing pages of his domains.
3) None of his domains have been developed.
4) When approached to buy the domain makes an outrageous claim.
See, while a domain is worth what it is worth to a buyer, it cannot be your intent to solely purchase domains for that purpose. The purpose of domains is for use. ICANN issued .com’s domains ‘at cost’ and thus takes the view that any domain owner should not unfairly taking advantage of that fact.
If you contrast domains to trademark law, you do actually have to use trademarks to keep them current. You cannot register trademarks with no intent to use and not for the purpose of frustrating a competitor.
What happened in this case, is the domainer committed some silly mistakes and laid himself open to losing the domain.
The moral here, is that if you have parked domains with nothing on them and just ‘this domain might be for sale’ AND have a portfolio of names that show your business is selling domains, AND (even worse) can show you have bad faith with some trademark unfringing domains AND you make onerous financial demands on IP owner inquiring. THEN you could lose the domain and receive ‘out of pocket costs’. (Which incidently also is meant to include any monies you paid to buy the name if you bought it on the secondary market).
UFO
Hence, in some ways you should 1)Never make a financial demand on a prospective buyer and let them raise the bar and just reject offered amounts until you are happy 2) Always ask the buyer if they have a current or previous intellectual property right to that name. 3) Possibly take some defensive measures on your high worth names and put something on the landing page. I’ve always said (and thruthfully) to any prospective purchaser that I have future development ideas for the name. (There is no set requirement for development like use in trademark law) although if you own a portfolio of domains you should have a timeline of some development of those properties. 4) Definitely dump any trademark names as that can be used to show intent across your whole porfolio.
In the case, if the domain owner had not had ‘domain for sale’ and just a picture of a canary with ‘future canary spotters website – come back soon’ and had just said to the prospective approach that he intended to devlop it and not ever demanded in set amount of money and just refused offer amounts…
Then he’d have won. Almost certain.
UFO
Lastly, if he went to court and had some form of advertising on the landing page then he could easily argue that he did have a financial interest as the traffic clicking the ads gave him common law rights in the services classes. ICANN try and make out thats not ‘an interest’ but domain monetization is a valid business thats the whole model of Google.
UFO
@Domenclature.com
‘The name in question is generic Canary.com, which could be a bird, a proverb, an island, and so on… how do did you determine that he registered it for some trademark holder? Did the trademark include a dot and a com? And all the sundry right of the dot that is available as well?’
While the name is generic and COULD have other uses, none of those uses have been put to effect which would have provided adequate defense. In effect the domain holder was a sitting duck the way he acted and any other trademark holder could have potentially rocked up first and lifted it off him the same way.
As for trademark law re .com’s, until recently here at the UK IPO you couldn’t register domains as trademarks. However with the US and EU allowing them they eventually relented. A TLD is only a description that the ‘name’ connects to the internet, it isn’t actually a unique identifier. In theory it should have to always be disclaimed even at the USPTO and no claim against it, otherwise the first claimant of .com in a trademark class could stop all other registrations of .com in that same class. Anyway If it was unique then canary would have no recourse to canary.com under ‘rights’.
Domenclature.com
@UFO,
“Anyway If it was unique then canary would have no recourse to canary.com under ‘rights’”.
It’s astonishing that someone who is granted a trademark on a word that does NOT contain a dot, and/or an extension, lays claim to one that does.
I really don’t believe this has been tested to the fullest extent, beyond inferior courts.
American Broadcasting Corporation (ABC) is different from ABC.com, ABC.de, ABC.fm, ABC.mobi, ABC.travel, and so on.
As a matter of fact, ABC is closer to NBC than ABC.com, because with the former, only an N and an A is dissimilar; and the latter has a dot, and a com! Would an unscrupulous panelist then award NBC to ABC due to similarity in mark? Of course not! The dot counts. When these people applied for their trademarks, they knew nothing about TLDs, therefore could not have given the required description with USPTO. It’s just crazy, the whole thing; WIPO is just making it up, at the seat of their pants, as they move along.
UFO
Domenclature.com
The thing is that ‘domain’ holders are actually an annoyance to real commerce. Trademarks are about real companies engaging in real commerce and having a defence against those passing off or creating confusion against other traders using an indentifier in that they themselves have built goodwill and value in that consumers recognise.
If there was ZERO leakage betweem .com and other TLDs then your case for uniqueness might have more weight but confusion does exist.
Trademarks are not just for the internet, they relate to the physical world as well, imagine your average consumer walking down the high street and seeing one shop called say GUCCI.COM and the other called GUCCI.NET. Would they think these are completely different businesses? Of course not. Take consumers searching for products, do they search for GUCCI.com or GUCCI on SE’s and in telephone books?
In terms of your example, fact is there is significant case law and procedures on all this, basically it works left to right and is about visual and phonetic similarity. ABC.com is always going to be closer to ABC.net that NBC.com.
In the US there’s some bedrock principles highlighted in the DuPont factors and the Sleekcraft cases.
Anyway, all things being equal the domain should not have been lost, but it was because of the actions of the domain holder.
domenclature.com
UFO,
Godaddy.com, Google, Amazon, Sedo, VeriSign, and so on are all domainers, and real businesses. Your definitions are narrow minded.
Try this exercise in your city, looking at street addresses: you will notice that buildings have the same numbers such as 1234 Main Street, or 1234 Broadway, or 1234 Domenclature Street,….only thing different being the street name, there is no confusion. Think!
Domenclature.com
@UFO,
If ABC.com belongs to American Broadcasting Corporation simply by owning the trademark, and not because they purchased or got a hold of ABC.com somehow, WHY then do they have to pay a registration FEE every year, j(ust like anybody who has no trademarked domain would pay) to continue owning ABC.com? If they fail to renew the registration of ABC.com they lose the name, and if not ‘caught’ by domain catchers, it becomes unregistered, and available again for anybody to register. That is a big hole in the argument that these domain names belongs to the trademark holders simply because the names are similar to left of the dot com. Its bull.
steve
I think UFO was the panelist in this case
UFO
All the business you mention like godaddy.com Google etc all engage in business and their primary motivation isn’t to sit on domains and gain supernormal profits from the goodwill of others. Would Canary.com have a value of $7m from showing pictures of birds? Or would that be because a large oil company is so financially strong and generated so much profit that it can pay $7m?
There is no confusion because those street addresses are NOT important to the fitness quality and attributes of any good or service being sought by a customer, put someone else’s trademark over your door and counterfeit their products then you will confuse a consumer. Anyway, the case isn’t about confusion, it’s about registering holding and looking for unjust financial gain at the expense of someone with substantial businesses activities. Like I say, if they’d registered canary.com to do something real with and have a real use then they’d not have had an issue. Their primary motivation wouldn’t have been to impede others in the course of their business.
As for the subsequent post on ABC.com – American Broadcasting Corporation does not have a predetermined right to the .com but they have more of a claim than most. If they didn’t renew the name and it dropped and some early childcare business bought it whose name was ABC then American Broadcasting Corporation wouldn’t win at any UDRP to get it back. If however some domain holder bought it on the drop and just sat on it, and had a big portfolio of domains and their business model revolved around trying to extort supernormal values from businesses to use domains then they could and probably should lose the name. Its all about intent and evidence.
I’d say to any domain holder, they should definitely develop their best domains because at any point the law could be changed to bring domain ownership back more into alignment with trademarks, especially with .com being the premier name for commerce. I.e. Use it or lose it.
UFO
@ Steve. lol..
The difference between me and a number of people in this industry is I have never bought domains to sell to others. Domains further a business, they are not the business. Domains were never issued on the basis they could be used to extort value from others; they were issued to be used.
I think a number of major domain owners are making quite a large mistake having quality names sitting around with blank landing pages and ‘enquire about this domain’ because a whole bunch of UDRPs could start coming through at a quick pace. Might as well put some crappy mini sites on them to gain some SE traffic and some clicks on ads, effectively then you have a business like Google.
Another defensive mechanism esp for US high end domain owners would be to self file for a trademark on the domain. (Just look up say Google trademarks and file one in an appropriate class and use the same wording if it applies esp. around advert monetization on websites). Nb: The cheapest place in the world to file a protection trademark imho is currently NZ where you can do one for about $80 USD and do it online. Cheap insurance that is. But know what you are doing as it is illegal to file for a mark you have no intent on using.
UFO
Nb: To file for an NZ trademark you’d need an address there. Hence, US people should use their own US address and file a US mark.
Domenclature.com
“All the business you mention like godaddy.com Google etc all engage in business and their primary motivation isn’t to sit on domains and gain supernormal profits from the goodwill of others”. UFO
How can I debate with you after you continue to make careless, and reckless statements such as the above; not only are your premises wrong, they are bad, and worse they are false. And, I am only concerned with the latter.
How many domain names is Google sitting on, undeveloped? How many domains is Godaddy sitting on? How about Amazon? Please answer before we continue.
Domenclature.com
Furthermore, the fact that ICANN is charging folks over $180,000.00 for each right of the dot, and have determined that a singular nGTLD,, and its plural, are unique and distinct entities, and that it will not confuse the public, goes to show that domain names have nothing to do with trademarks. After all, domain names are left of the dot PLUS the dot PLUS the right of the dot, like below.
DN = LOD + D + ROD
D= Dot
DN= Domain Name
LOD= Left Of Dot
ROD= Right Of Dot
The domain name is the whole thing, not just a section of it.
Domenclature.com
Besides, a full URL, which what a domainer purchases with their registration fee, includes the hypertext, and the www, therefore a full equation to a domain name is thus:
DN = http + : + // + www + Dot + LOD + D + ROD
So, a registrant of ABC.com actually owns http://www.ABC.com
Therefore, it is NOT similar to, or confusing with ABC
UFO
““All the business you mention like godaddy.com Google etc all engage in business and their primary motivation isn’t to sit on domains and gain supernormal profits from the goodwill of others”. UFO
How can I debate with you after you continue to make careless, and reckless statements such as the above; not only are your premises wrong, they are bad, and worse they are false. And, I am only concerned with the latter.”
Hmm, not sure how you cannot see the obvious. How much money does Google make from domain sales relative to its trading income? How many of the domains it owns has it developed, more than 1? Yes, they buy domains with an intention to develop or for a potential idea, they certainly don’t buy names as traders.
“and have determined that a singular nGTLD,, and its plural, are unique and distinct entities, and that it will not confuse the public, goes to show that domain names have nothing to do with trademarks. After all, domain names are left of the dot PLUS the dot PLUS the right of the dot, like below.
DN = LOD + D + ROD
D= Dot DN= Domain Name LOD= Left Of Dot ROD= Right Of Dot
The domain name is the whole thing, not just a section of it.”
Wrong. Trademarks are about devices/descriptions used in the furtherance of commerce.
If TLDs/ccTLDs were unique there would not be any need for any UDRP process and there wouldn’t have been legal cases.
Time will tell whether test case law gives further legitimacy to TLDs against trademarks, but the confusion that is obvious with consumers makes it likely that TLDS will be treated like the words they represent.
I believe that ebet.com would beat e.bet at court on the basis of confusion assuming they were already trading and had built up common law interests in the name. A registered trademark would also help.