Legal News

Congratulations to the IOC on This Massive UDRP Win

The International Olympic Committee (IOC) is a somewhat frequent UDRP filer. The organization, which manages the Olympic Games, has filed dozens of UDRP proceedings, according to UDRPSearch.com. I took a quick look at the domain names that were subject of these UDRP filings, and none of them are as huge as the one that was just won.

The IOC filed a UDRP at the World Intellectual Property Organization (WIPO) for the olympic-ioco-wso-wsmaf-wmaf-imac-wimaf-wmmaf-gmmaf-wfff.org domain name. The decision was just published, and not surprisingly, the IOC prevailed in the dispute and will become the new registrant of this 55 character .org domain name.

AOGA.com UDRP is a Toughie

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Alaska Oil and Gas Association filed a UDRP against the AOGA.com domain name, and the organization prevailed. In reading the decision, I can see both sides of the case and think it’s a tough situation. I think it was probably the right call, but I think the rationale for the decision was bad.

Alaska Oil and Gas Association previously owned AOGA.com. According to the decision, the complainant reportedly had the domain name stolen from its account at Network Solutions:

“Complainant lost control of the Domain Name via a fraudulent unauthorized transfer in 2020. In the context of Complainant’s investigation, Complainant contacted the registrar where the Domain Name had been registered, Network Solutions and the Registrar, where the account had been transferred. Complainant was informed by Network Solutions that third parties had contacted that registrar and ordered a transfer, which per Complainant was not authorised. Complainant further learned that its account with Network Solutions had been accessed several times by different people in different parts of the world. Unknown to Complainant and without authorization, one or more persons infiltrated Complainant’s domain management account and transferred the Disputed Domain to another.”

Making matters worse, the domain name was apparently sold to someone else on NameJet. According to NameBio, AOGA.com was sold $1,193 on NameJet in December of 2020. I did not participate in the auction, but I looked at historical Whois records on DomainTools and it does not appear that this domain name was ever in expired status.

It seems plausible that the domain name was, in fact, stolen from the complainant and the domain name was acquired by the registrant at an auction for $1,193. Beyond contacting the AOGA to ask about the domain name, it would have been difficult to know the domain name was stolen, particularly if the buyer did not have access to a paid account at DomainTools or DomainIQ.

Yes, the complainant most likely had the domain name stolen from its account but the current registrant bought a 4 letter acronym domain name at auction without knowing it was stolen.

This makes things a bit murky, particularly because it’s a fairly generic domain name and the complainant organization is Alaska Oil and Gas Association and not a company called Aoga.

One big issue I have with the decision is where the panelist highlights the discrepancy between the purchase price and the registrant’s asking price as if it should matter:

RDNH Finding in IndoorBillboard.com UDRP

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A UDRP was filed against the domain investor-owned IndoorBillboard.com domain name at the National Arbitration Forum (NAF). The decision was published today, and the domain registrant prevailed and will retain this generic domain name. The three member panel discussed Reverse Domain Name Hijacking (RDNH), and it ruled this was an abusive filing. The domain registrant was represented by Jason Schaeffer of ESQWire.com.

The complainant in this filing is a company called Indoor Billboard/Northwest, Inc. It argued that it has a trademark for the “indoor billboard” term and that it “received notoriety” for the term. The panel felt that the complainant did not offer up any evidence to that effect:

BYFY.com UDRP Results in RDNH

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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.”

French President Files UDRP Against EmmanuelMacron.com

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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:

Domain Investors “Have a Duty to Research” Trademarks

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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:

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