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.