Attorney Jason Schaeffer of ESQWire.com recently won a UDRP proceeding in defense of Aveed.com. The UDRP was filed at the World Intellectual Property Organization (WIPO). Although the three member panel did not rule give a RDNH ruling, I think some of the language in the decision could prove to be useful to investors.
Aveed.com was acquired by a domain investor for $1,025 on January 16, 2021. The decision did not mention it, but NameBio shows the domain name was sold via GoDaddy Auctions. This means the auction would have been available for anyone to participate, including the complainant.
Here’s an excerpt from the decision where the panel opined on the strategy of acquiring domain names for investment purposes via expiry domain auction:
“The Panel also observes that Respondent paid USD 1,025 for the Domain Name at an open auction, and responded to an unsolicited offer of USD 2,500 by asking for a payment closer to USD 3,000. In the circumstances of this case, and given Respondent’s stated investment strategy vis-à-vis domain names, the Panel cannot conclude that Respondent’s conduct runs afoul of the above-quoted Policy paragraph 4(b)(i).”
Also of note, the panel discussed why it did not agree wit the complainant’s argument that “passive holding” would constitute bad faith in this particular case. In short, the brand name is not well-known enough. Here’s an excerpt from the decision:
“Finally, with respect to Complainant’s argument that Respondent’s “passive holding” of the Domain Name may constitute bad faith pursuant to the seminal decision in Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the Panel rejects this argument. The Telstra decision is typically (though not always) reserved to famous trademarks, and, again, there is no evidence here that AVEED enjoys such renown. Moreover, unlike the respondent in Telstra, Respondent in the instant case has come forward and explained, under oath, why he registered the Domain Name. “
This is a well-thought out UDRP decision. The decision once again highlights that domain investors are within their rights to invest in domain names, and even if a trademark keyword matches the domain name, it has to be well-known enough to prove it was registered with bad faith intent.
Notably, I found it a bit peculiar that the complainant offered $2,500 to buy the domain name, and filed a UDRP instead of agreeing to the $3,000 counter offer. Now that the domain registrant paid for a UDRP defense – along with the 3 member panel, the domain name would likely be much more expensive to acquire.
The three panelist who decided this UDRP were Robert A. Badgley (Presiding Panelist), Douglas Clark, and The Honorable Neil Brown Q.C.
Had the respondent quoted $30,000 USD vs. $3,000 – would the decision been the same.
While protecting a trademark is brand’s right, investing in domain names is domainer’s and all people’s right. Domains can used for anything, not only for targeting trademark owners to pay the domain. Trademark has been miss understood by a lot of brands’ owners as a monopoly of use of a name. Owning Trademark is to protect brands’ business, as long as domains are not using in bad faith to targeting trademark owner. Trademarks accepted in Generic Keywords are unfair and often become a monopoly in a name : No other parties can use the same name. Unfair for other parties with no trademark.
Glad to see a good decision by the panel. Very interesting how the panel acknowledged that the domain was purchased at an open auction. The complainants and respondent had an equal opportunity to acquire the domain name. With the complainants trying to purchase the domain name from the respondent demonstrates that they were aware that the domain name was acquired fair and square. For this reason, for every domain acquired it’s good to keep records of all these things like bid history, purchase receipts, expenses for building the website, emails from people trying to buy your domain name, etc. So in case a udrp comes up your attorney defending your domain name will have plenty of backup.
They didn’t accept the 3K counter because they believed their attorneys.
Lets see David……
Endo Pharms has 2900 employees and annual revenues of nearly $3B.
The lawyer thugs at Cozen O’Connor LLP really messed this one up.
I know about these thugs as well – talk about Hall of Shame.
Endo probably paid these thugs $15,000. Talk about hookers……
Hey Brian, so Aveed.com was my name. I’m glad it worked out in our favor. Was unfair since I picked up in auction fair and square, and that we didn’t even know about the trademark on it or that its a exact match drug. We bought it because its a first name in persian/pakistani for girls, which we were thinking of naming our daughter. I thought I offered them a fair counter offer of 3k for consideration before I knew who they even were.
Do you know these guys Brian, have they done this before?
Hi Rehan –
I have sent you a request thru the GoDaddy contact form from my Admin email address.
I would be happy to mention a few things outside of this thread.
Thanks Brian, will take a look.
No doubt the response addressed the archive.org uses going back to 2004 – and the whois showing Aveed.com being ‘reinvented’ again in 2005 after being dropped – long before the Endo uses – further demonstrating there is no distinctiveness in AVEED as only a drug. What kind of two-handed stroke did Cozen put on Endo over a lousy $3,000 USD. Endo needs to ‘publicly’ fire Cozen in order to save face.