Legal News

The UDRP is a risk domain investors need to consider when investing in domain names. Anyone can file a UDRP regardless of whether or not there is any merit to it. While the vast majority of UDRP cases involve clearly infringing domain names, there have been too many UDRP filings involving domain names comprised of absolutely generic terms and short acronym domain names that have considerable value.

There have been numerous Reverse Domain Name Hijacking (RDNH) decisions, but there is no penalty for filing a meritless UDRP for either the complainant or its legal representatives. This can make the UDRP appealing for companies that are unable to purchase a domain name from a registrant or simply do not wish to even try to purchase a domain name. The UDRP has occasionally become a a tool to extract a valuable domain name from a registrant without having to pay what it is worth.

A UDRP was filed against the VOCL.com domain name, and the single member panel ruled in favor of the complainant. A request made by the panelist in the decision could be concerning to domain registrars that own domain names as investments or are directly related to domain investment businesses.

You should read the entire decision to understand what occurred, but here’s an excerpt from the decision that could be particularly concerning to some domain registrars:

Empower.com is an exceptional domain name, and it is quite valuable. In fact, I made at least a couple of efforts to acquire this one word .com domain name. As you can see in the image above, there are tens of thousands of company listings on LinkedIn for a search of “empower.” According to DomainTools, there are 332 domain names currently registered with Empower as the sole keyword, and more than 63,000 domain names are registered that have “empower” in them.

I believe “empower” is a meaningful and descriptive word, and Empower.com would have substantial value to many companies.

According to an article in Bloomberg Law (subscription required), a Anti-Cybersquatting Consumer Protection Act (ACPA) lawsuit was filed against the registrant of Empower.com by a company that operates a subsidiary called Empower Retirement, LLC. According to the lawsuit (which can be accessed via CourtListener), “Plaintiffs launched the EMPOWER Brand nationwide in the fall of 2014.” Empower.com has a creation date of July 26, 1994. In fact, the plaintiff conceded that the defendant owned the domain name long before its brand was created:

Global computer chip maker ARM filed a UDRP against the ARM.CO domain name. The company operates its business on the ARM.com domain name. I presume ARM wanted to control the .CO domain name in the event of typos and/or to prevent someone else from owning it. The UDRP decision was published today, and the single panelist ruled in favor of the chip manufacturer.

The respondent did not have an attorney represent him in the UDRP. Although an attorney may have been helpful in responding to a UDRP, I do not think it would have been a good use of money. Legal fees could have cost several thousand dollars, and if an attorney suggested paying for a 3-person UDRP panel, it would have been even more expensive. Spending thousands of dollars to defend a .CO domain name like this probably would have been unwise, particularly since the most likely buyer is the company that filed the UDRP in the first place.

I do not really think this was a great decision, although I am having a tough time pinning the blame entirely on the panelist. The Arm term completely matches the complainant’s ARM branding. However, Arm is a generic word and there are also many companies that have ARM or Arm in their branding. There are many others that have ARM for an acronym.

The National Football League’s Green Bay Packers paid $1,500 to file a UDRP against the brand match GreenBayPackers.net domain name. The UDRP was filed at the World Intellectual Property Organization, and it is WIPO Case D2021-1648.

This domain name, which is registered under Whois privacy, was created less than a year ago. In looking at the Whois history records of this domain name at DomainTools, I can see this is not the first time GreenBayPackers.net was registered. In fact, it appears to have been registered several times, by different registrants, since at least 2003.

A UDRP was filed against the valuable Rid.com domain name at the ADR Center of the Czech Arbitration Court (CAC). The three member panel unanimously ruled in favor of the domain registrant, and the complaint was rejected. The domain registrant was represented by attorney Zak Muscovitch of Muscovitch Law P.C. Zak also serves as General Counsel of the ICA trade organization.

The complainant in this UDRP was Oystershell Consumer Health, Inc. This company acquired the RID lice treatment brand from Bayer Health in July of 2020. The domain registrant acquired Rid.com at auction in 2008. Not only is Rid.com valuable because it is a 3 letter .com domain name, but it is also a one word .com domain name. In my view, Rid.com is easily worth six figures retail.

One reason the complainant filed the UDRP to get the Rid.com domain name is because it believes it is “essential to the further development of the brand outside of the US.” I think the domain registrant’s rebuttal to this was stellar: “merely being covetous of a Domain Name does not warrant transfer pursuant to the UDRP.”

In ruling in favor of the domain registrant, the panel reaffirmed the rights of domain registrants to acquire and own domain names as investments. I thought this excerpt is particularly noteworthy: