Legal News

I read a disappointing UDRP decision this morning involving the 4 letter .com domain name, DWRS.com. The WIPO UDRP panelist, Warwick A. Rothnie, ruled in favor of the complainant, who had unsuccessfully tried to acquire the domain name via GoDaddy’s Domain Brokerage Service (DBS). The complainant is a shoe company founded in 2015 that uses DWRSLabel.com for its website.

I want to make it clear that I don’t lay the full blame on the panelist. The domain registrant did not file a response to the UDRP as the contact information on the Whois record was inaccurate. The panelist, in my view, made a good attempt at piecing the ownership and usage history of the domain name beyond what was presented by the complainant. Kudos to him for using the Wayback machine and Whois records to see how the domain name has been used over the prior few years. This made the registered and used aspect of the UDRP decision murky at best.

What bothered me most about the decision is the panelist’s reliance on the GoDaddy DBS broker’s suggestion about increasing the offer. Since the domain name does not appear to have been listed for sale on GoDaddy or Afternic, the DBS broker is working for the buyer. His job is to get a deal done at the best price for the buyer. Here’s an excerpt from the decision:

A UDRP was filed against the Pay.com domain name at the National Arbitration Forum (NAF). The decision was published today, and unsurprisingly, the panel found in favor of the domain registrant. I think the panel should have ruled that this was an abusive UDRP filing and found this to be Reverse Domain Name Hijacking (RDNH). The panelists on this UDRP were Dawn Osborne, Sandra J. Franklin and Nathalie Dreyfus.

As I mentioned on Twitter when I first noticed the UDRP filing, Pay.com is used and branded by a company doing business as Pay.com:

According to the NAF website, a UDRP was filed against the super valuable https://t.co/HB9tZr9pJx domain name. The domain name is used and fully branded by a business. pic.twitter.com/GFAwnwpdJv

— Elliot Silver (@DInvesting) May 2, 2022

With the emergence and growth of the blockchain domain name market, there has been quite a bit of discussion about domain names with trademarks and famous brand names. There is well-established intellectual property law related to traditional (Web2) domain names, but there are plenty of questions related to decentralized blockchain domain names with famous trademarks in them.

The EnCirca Twitter account posted a link to a comprehensive article about blockchain domain names and trademarks. The article was written by Andrea L. Calvaruso, Matthew Luzadder, Constantine (“Dino”) Koutsoubas, and Kerianne Losier of the law firm Kelley Drye & Warren LLP:

Great primer on blockchain domains from @KelleyDrye law firm! https://t.co/Ms7uJyEmKj

— EnCirca (@EnCirca) June 7, 2022

A UDRP was filed at the World Intellectual Property Organization (WIPO) against the Edouard.com domain name. The complainant in the UDRP is listed as Edouard Lombard. This is WIPO Case D2022-2065.

Edouard.com was created in 1998 – nearly 25 years ago. The domain name does not currently resolve to an active website, and the Whois record shows “Statutory Masking Enabled” as the domain registrant due to GDPR regulations. Historical Whois records at DomainTools show the domain name was owned by a person named Edouard as recently as May of 2018 before GDPR masking of the Whois record.

Attorney John Berryhill represented a complainant in a UDRP decision that I think could be of importance for people who are in the NFT investment space. An open source software company called ODK filed a UDRP against the ODKCentral.com domain name. The complainant in the UDRP won and will take possession of the domain name. The decision was published this morning.

The issue is related to the usage of the ODK branding in the domain name. Despite the fact that the software is open source, there are no rights granted for others to use the ODK branding in domain names. Notable, from the decision:

When the Skill.com UDRP filing was published, John Berryhill shared some thoughts on why he thought the UDRP would fail. His analysis was based on information that he was able to find publicly, so there was a chance additional information would be revealed that would change the perception of the filing.

Yesterday afternoon, I noticed WIPO updated its website to show that a decision had been reached in the UDRP. I was very surprised to see the decision was a “Transfer,” particularly since there were three panelists deciding the case:

Per the @WIPO website, the https://t.co/jDtczBSDLs UDRP went in favor of the complainant. This is very surprising to me. https://t.co/9PgtXEEjHs

Decision has not yet been published. pic.twitter.com/qdKIiOlGKE

— Elliot Silver (@DInvesting) May 31, 2022