Legal News

In my opinion, it should almost automatically be considered Reverse Domain Name Hijacking (RDNH) if a complainant files a UDRP when the domain name has been owned by the registrant prior to the existence of the complainant’s brand. Because a complainant absolutely must prove the domain name was registered in bad faith, it would be impossible for this to have happened if the registrant owned the domain name before the complainant’s brand or trademark was created.

A company called Etrack LLC filed a UDRP against the BYFY.com domain name. According to the Factual Background section of the just-published WIPO UDRP decision, “Complainant owns a federal trademark registration for BYFY, namely, United States Registration No. 6,398,262, registered on June 22, 2021 (application filed on July 22, 2020) for…” On the other side of this complaint, “Respondent annexed to the Response a sworn affidavit in which Respondent states he registered the Disputed Domain Name in 2013 or 2014.”

The President of France has filed a UDRP at the World Intellectual Property Organization to wrest control of the EmmanuelMacron.com domain name. The case is WIPO Case D2022-0035, and it appears to have been filed this week along with four other UDRP filings.

In addition to the UDRP filed against EmmanuelMacron.com, the French President filed UDRPs against the following domain names:

Performing due diligence before buying a domain name is an essential task for domain investors. This due diligence is not limited to the ownership history and provenance of a domain name. Domain investors must also do trademark research to avoid running afoul of anti-cybersquatting laws and regulations.

According to a recent UDRP decision at the National Arbitration Forum (NAF), domain investors are expected to perform trademark research before acquiring domain names. In fact, people who buy domain names as investments “have a duty” to do trademark research.

Here’s an excerpt from the Actionship.com UDRP that was won by the complainant:

A UDRP was filed against the SimplePlan.com domain name at the National Arbitration Forum (NAF). The complainant in the UDRP is the company associated with the rock band called Simple Plan. According to NameBio, the SimplePlan.com domain name was sold for $1,675 in October of 2021 at GoDaddy Auctions.

According to the information in the decision that was just published, the band had owned SimplePlan.com for 20 years. It appears that the domain name expired due to some issues with renewing the domain name. Here’s an excerpt from the complainant’s contention regarding the expiry:

Last week before the Christmas holiday, the Canadian International Internet Dispute Resolution Centre (CIIDRC) announced that Zak Muscovitch was added to its Domain Name Dispute Resolution panel:

CIIDRC is pleased to announce that Zak Muscovitch has joined CIIDRC’s Domain Name Dispute Resolution Panel. Mr. Muscovitch’s profile can be found at: https://t.co/7KUb5mGUSW pic.twitter.com/uSmZV0O9oj

— CIIDRC (@ciidrc) December 24, 2021

This appointment means Zak will serve on UDRP and CDRP panels that come before the CIIDRC. This is noteworthy because quite a few panelists have backgrounds working on behalf of trademark interests or are working at law firms that represent trademark interests in domain name disputes. There are not many domain name dispute panelists who have domain investors as clients.

The Empower.com cybersquatting lawsuit was upsetting to me as a domain investor. Not only did the Defendants own Empower.com before the Plaintiff’s Empower Retirement brand existed, but one of the Defendants was a company called Empower Geographics (the other was the principal at that company). Put simply, it felt like the well funded retirement brand was bullying the smaller domain registrant who had put his domain name up for sale because they didn’t like the price to buy the asset.

James Iles published an article on Tuesday after Jamie Zoch informed him that Empower.com changed hands. The domain name transferred to CSC under Whois privacy, a corporate domain name management firm used by many large companies, including Empower Retirement. James speculated that the domain name was acquired by the retirement brand.