A UDRP was filed against the generic SmartWallet.com domain name at the National Arbitration Forum. SmartWallet.com is domain name owned by Andy Booth and his company, Booth, Ltd. After being notified of the UDRP filing, Andy announced he was going to turn the tables and file a lawsuit in federal court.
So you get UDRP’d on your hyper generic domain… Time to turn the tables. https://t.co/rAsmwwuOCG >> federal court
— Andy (@AndyBoothcom) December 12, 2020
I was just notified that the complaint was filed (pdf) yesterday by David Gingras as local counsel and Stevan Lieberman as lead counsel. The lawsuit was filed in the United States District Court, District of Arizona. That jurisdiction was chosen because SmartWallet.com is registered at GoDaddy, and a complainant must agree to the registrar’s jurisdiction when filing the UDRP.
According to the lawsuit filing, the domain name was acquired in a private acquisition earlier this year for $25,239.50. I would imagine Andy’s company bought the domain name because of the generic nature of the “smart wallet” term and its ability to be useful in a number of industries, particularly related to cryptocurrency.
In the lawsuit, Booth, Ltd. is suing for a finding of Reverse Domain Name Hijacking and is seeking to cancel the federal trademark registered to the complainant that is apparently the impetus for the UDRP filing. Because of the lawsuit, the UDRP filing will likely get thrown out.
This is a bit of a gamble for Andy and his company, as litigation can get expensive very quickly compared to a UDRP defense. On the other hand, with SmartWallet.com being a generic domain name, the company that filed the UDRP could end up having to pay a high penalty for filing the UDRP, as a Reverse Domain Name Hijacking ruling in federal court can come with a $100k penalty.
At the very minimum, this action could serve as a warning to other companies who are contemplating a UDRP filing since they are often done to save time and money vs. a federal Lanham Act cybersquatting lawsuit. I will keep my eyes on the litigation docket to see how this litigation progresses.