Legal News

Registrant Wins Costa.com UDRP (Again)

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A UDRP was filed against the Costa.com domain name at the World Intellectual Property Organization (WIPO), and the domain registrant prevailed. This was the second time a UDRP was filed against this domain name – and this UDRP was filed by a different company. In both UDRP cases, the domain registrant was represented by ESQWire.com (Ari Goldberger and Jason Schaeffer).

In 2012, the UDRP was filed by a company called Cross Optical Group, Inc. The most recent UDRP was filed by Costa Crociere S.P.A., the company that operates Costa Cruises. The decision has not yet been published, but it will likely be uploaded to the WIPO website today or tomorrow and can be accessed here when it is available.

In looking at the Costa.com landing page, it is not a surprise that the cruise company would want to file a UDRP. In fact, the complainant cited them in the UDRP: “The Complainant exhibits an example of the Respondent’s web page which contains links to “Costa”, “Cruise”, “Cruise Line”, “Cruise Ship” and “Small Cruise Ship.” Given these links, it would not have been a big surprise to me if the complainant prevailed in the UDRP proceeding.

When I was reading the decision, it looked like the links might doom the domain owner, despite the fact that the “costa” term was considered a dictionary term. Here’s what the majority of the panel wrote about the PPC links:

Chicago Blackhawks Try to Get BlackHawks.com via UDRP (Updated)

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It looks like the NHL’s Chicago Blackhawks hockey team has filed a UDRP at the World Intellectual Property Organization to try and seize control of the Blackhawks.com domain name. The UDRP filing is WIPO Case D2018-2064. The complainant is listed as Chicago Blackhawk Hockey Team, Inc.

BlackHawks.com has a creation date of September 24, 1995, making it nearly 23 years old. Whois records show that the domain name is privately registered, and it appears to have been privately registered since at least 2007. This means that I am unable to tell who owns the domain name today. The domain name is parked, and when I visited the domain name today, it was showing aviation related pay per click advertising links:

What Will the FTC Do With Army.com?

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According to reports on CNET and in AdAge that were published earlier this week it seems that the US government, via its Federal Trade Commission (FTC), could take possession of the valuable Army.com domain name as part of a legal settlement with the company that operated the domain name.

Here’s an excerpt from the CNET article:

“The Federal Trade Commission said Thursday that it had seized nine copycat websites that harvested and sold users’ personal information by posing as US military recruitment sites.

The operators of websites such as Army.com and NavyEnlist.com tricked people interested in joining the military out of their personal information by falsely claiming to be affiliated with specific branches of the military, the FTC said in a complaint filed in an Alabama federal court.”

Here’s an excerpt from a statement put out by the FTC last week regarding the Army.com domain name and other domain names:

“The operators of copycat websites army.com and navyenlist.com have agreed to settle Federal Trade Commission charges that they targeted people seeking to join the armed forces and tricked them by falsely claiming to be affiliated with the military in order to generate sales leads for post-secondary schools.

The defendants, including the Alabama-based companies Sunkey Publishing, Inc. and Fanmail.com, LLC, have agreed to relinquish army.com, armyenlist.com and other domain names, and to stop the practices that they allegedly used to deceive consumers.”

Although many Americans would likely think of the US Army first when they hear the term “Army,” there are armies in almost every country throughout the world. The word “army” could also be used in its descriptive sense as well (ie “an army of people showed up”). As such, the Army.com is a valuable domain name.

In 2015,

Legally Co Files UDRP Against Legally.com (Updated)

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A company called Legally Co filed a UDRP against Legally.com, a one word .com domain name. The UDRP was filed at the World Intellectual Property Organization, and it is WIPO Case D2018-1958.

Legally.com is a domain name owned by GoDaddy’s NameFind portfolio company. From what I can see, this dictionary word .com domain name appears to have a (reasonable) buy it now price of $24,999. Using DomainTools’ Whois history tool, it appears that Legally.com was acquired when the company purchased a large group of domain names from Tucows’ YummyNames portfolio. Legally.com has an original registration date of July 1997, making it over 20 years old.

The complainant in the case appears to be the company operating on the Legally.CO domain name. Assuming this is the company that filed the UDRP, LinkedIn lists its founding date as 2015. There are quite a few companies that are branded “Legally” or that have the “Legally” keyword in them, so it could conceivably be another company with the same name. In fact, a DomainTools search shows thousands of domain names registered with the “legally” keyword in them.

In order to prevail in a UDRP, a complainant will need to prove the domain name was registered and is being used in bad faith. Considering that GoDaddy

Vincle.com UDRP Decision Cites PPC Parking

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The Vincle.com UDRP decision was published this morning, and the complainant won the proceeding. The domain name has been registered by the respondent since 2003. The respondent’s response to the UDRP was late due to travels, but the panelist stated the response was not prejudiced by the tardiness.

In the decision, there was a discussion about whether or not the “vincle” term was generic and whether or not there are other companies using the term “vincle” in their branding. From what I can tell, the panelist was not convinced that the term is generic.

The most notable aspect of this UDRP decision is the panelist’s discussion about pay per click parking:

“In view of the above and since the disputed domain name is pointed to a parking page with sponsored (pay-per-click) links which, by definition, generate revenues for the registrant and/or the registrar, the Panel does not find that the disputed domain name is being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use without intention to trade off the Complainant’s trademark.”

Later on in the discussion, the panel also wrote the following:

Complainants Winning More at WIPO Each Year, But…

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Earlier this morning, I published a poll asking readers about the results of UDRP proceedings to gauge if readers think outcomes have recently been shifting more in favor of domain investors when it comes to valuable (generic / acronym) domain names. So far, it looks like approximately 2/3 of readers who voted in the poll believe domain registrants are faring better now than they did in prior years.

I did some researching using DNDisputes.com, and I was able to find some facts about how UDRP results have changed over the years at the World Intellectual Property Organization (WIPO). WIPO is the largest UDRP provider, and DNDisputes.com primarily archives decisions from WIPO.

Using DNDisputes.com, I shared the percentage of complaints denied (meaning the domain registrant won) since 2008:

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