Legal News

One of the things I have learned over the years is that no matter how descriptive a domain name is, there is always the risk that a company will believe it has more rights to the domain name than an investor has. Sometimes, a company will start off by sending a Cease & Desist letter (C&D) to the registrant in an effort to scare the registrant into giving up the domain name for nothing or a pittance. This can be the first salvo in a long legal battle or it can be the last communication.

Responding (or not responding) to a C&D letter may depend on the situation. While it might be tempting to respond on your own, particularly in the case of a serious overreach, I think it is best to hire a good IP attorney with domain name expertise to evaluate the situation and come up with a best response (or non-response). An attorney might suggest how to reply or might be able to write a strong response if necessary, depending on the exact situation.

Logan Flatt shared a brief snippet about a recent situation he was in and gave thanks to attorney Jason Schaeffer for his assistance:

A Turkish company officially known as Türkiye’nin Otomobili Girişim Grubu Sanayi Ve Ticaret Anonim Şirketi filed a UDRP against the 4 letter TOGG.com domain name at the World Intellectual Property Organization (WIPO). The panelist, Matthew Kennedy, ruled in favor of the domain registrant and found that the complaint was brought in bad faith (Reverse Domain Name Hijacking – RDNH). The domain registrant was represented by attorney John Berryhill.

According to the decision (published today), the complainant tried to withdraw the UDRP in order to reach a settlement with the domain registrant. The domain registrant was willing to allow the withdrawal if the complainant agreed to not re-file a UDRP or other legal dispute elsewhere. By not agreeing to this stipulation, the WIPO UDRP proceeding continued.

It looks like this was a fairly straightforward case for the domain registrant and its counsel to defend. The domain name was acquired well before the complainant existed, and without having knowledge about the complainant in advance, it would be impossible to prove the domain name was registered in bad faith. Here’s an excerpt from the decision covering that aspect:

A UDRP was filed against the Buttkicker.com domain name at the National Arbitration Forum, and the decision was published today. The sole panelist, Michael A. Albert, ruled in favor of the domain registrant and also decided this was an instance of Reverse Domain Name Hijacking (RDNH). The domain name will remain with the registrant.

The UDRP was filed by The Guitammer Company, which operates a business on TheButtkicker.com. The domain registrant and respondent in this UDRP is Herschel Thompson, and he was represented by Roberto Ledesma of Lewis & Lin, LLC.

There were two reasons why the domain registrant was able to defend its registration.

The first reason is the panel found that the respondent haw rights to the domain name because it bought the domain name for a “smoking cessation program.” Here’s an excerpt from the decision regarding the registrant’s rights and legitimate interests in the domain name:

Great-West Life & Annuity Insurance Company, which operates a company called Empower Retirement, filed a cybersquatting lawsuit against another company called Empower Geographics over its ownership and use of the descriptive and valuable Empower.com domain name. The ACPA lawsuit was filed in the United States District Court for the Northern District of Illinois (Eastern Division).

Last Friday, the defendants in the lawsuit filed a Motion to Dismiss, as shared by IP and domain name industry attorney John Berryhill on Twitter:

https://t.co/03s8lw1hIH pic.twitter.com/RPGHLoTmHF

— John Berryhill (@Berryhillj) September 10, 2021

A Mexican company called Grupo Nacional Provincial, S.A. filed a UDRP against the valuable GNP.com domain name, which is owned by a domain investor. The decision was distributed today, and the UDRP complaint was denied by a three member WIPO panel. The domain registrant was represented by attorney John Berryhill.

Ordinarily, a domain registrant has a pretty strong chance of winning a UDRP against a three letter .com domain name unless there are seriously mitigating circumstances. For instance, if a domain registrant parks a LLL.com domain name and it shows advertising that infringes on the trademark of a company that utilizes the three letters as its branding, it can be difficult to convince a panel the domain name hasn’t been used in bad faith. It is not an impossible task, but it may make the UDRP more difficult to defend.