Legal News

RDNH Finding in ALO.com UDRP

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A three member WIPO UDRP panel ruled in favor of the domain owner in the ALO.com UDRP. In addition, the panel ruled that Reverse Domain Name Hijacking (RDNH) occurred. The domain name owner was represented by ESQWire.com (Jason Schaeffer and Ari Goldberger), and this is the second case in the last couple of weeks for the law firm where a finding of RDNH was made.

This seems like a pretty cut and dry UDRP decision. It doesn’t really make sense that a complainant can win a UDRP when the domain name has been owned longer than the trademark of the company filing the UDRP even existed. In its argument, the complainant cited the “Octogen Case,” which was just discussed in a sponsored post the Internet Commerce Association wrote published on CircleID. Putting the theory of “retroactive bad faith” to rest is important for domain name investors.

I think there are several aspects of the UDRP decision that stand out for domain investor rights, and I want to highlight a few of them.

JDM.com Subject of UDRP (Updated)

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A UDRP has been filed against the JDM.com domain name at the World Intellectual Property Organization (WIPO). The UDRP filing is case #D2017-1182.

JDM.com has a creation date of April 1995, making this domain name 22 years old. The domain name is earning advertising revenue via its Uniregistry parked page. As far as I am concerned (and as many UDRP panels have ruled), this is a legitimate business practice. Based on a DomainTools Whois History search (and article written by Jamie Zoch), it looks like the domain name may have recently changed registrants.

As a three letter .com domain name, JDM.com holds significant value. According to Estibot, the value of JDM.com is listed as $118,000, and I would not be surprised to see a domain name like this sell for somewhere in that ballpark or higher. I do to see any public sales information about JDM.com in NameBio.

The complainant in this UDRP proceeding is listed as J.D.M. Sofware B.V. (I think this is a WIPO typo and the correct company name is J.D.M. Software B.V.). A Google search for that entity name shows a company that operates on the JDM.NL ccTLD domain name. I believe this is the company that filed the UDRP. Assuming this is correct, I can see why the company would want to upgrade to the .com domain name.

There have been a few other UDRP proceedings involving valuable three letter .com domain names during the past several months. Going on memory, I think the respondents won all cases, with the exception of a case involving theft. Cases I have written

John Berryhill UDRP Defense to Benefit Dana-Farber Cancer Institute

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If you know John Berryhill or if you follow him on Twitter, you know that he is an avid bicyclist. He rides his bike regularly, including long rides during various domain industry conferences. A couple of years ago, I suggested he ride the Pan-Mass Challenge with me, and he took me up on this great two-day ride to raise funds for Dana-Farber Cancer Institute.

John has a unique and fun way to raise funds for his ride. John will offer a reward of a consultation on a UDRP defense and will prepare a UDRP Response if that defense is viable to (a) the first contributor who donates a minimum of $5,000 or (b) the top contributor who donates over $1000 to the Dana-Farber Cancer Institute via John’s PMC fundraising page if the $5,000 reward is unclaimed at the time of the ride starts on August 5. This reward can also be designated by the qualifying contributor for John to defend a UDRP respondent who is unable to afford a defense.

I think John is one of the best domain name industry attorneys. There are many UDRP cases I could point to as evidence, but in the last couple of weeks alone, John won the Novelist.com UDRP (with a finding of Reverse Domain Name Hijacking) and he also won the Gstaad.com UDRP.

I think it is very cool that John is making this offer on a UDRP defense. You can use it for one of your own domain names or to defend the domain name of a respondent who should not deserve to lose because they cannot mount an effective defense.

If you are considering the $5,000 reward, you need to contact John directly to discuss your case prior to making the donation, although of course you are welcome to contribute to his fundraising effort aside from this offer. As with any legal service offering, this offer is subject to a conflict check, there is no guarantee of a successful outcome, the determination of whether a defense is viable is subject to John’s independent professional judgment, and this reward has no cash or equivalent value.

Here is John’s Pan-Mass Challenge fundraising page!

RDNH Finding on MagicPlan.com UDRP

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A UDRP was filed earlier this year against the MagicPlan.com domain name at the National Arbitration Forum, and the decision was published this morning. The UDRP was defended by Ari Goldberger and Jason Schaeffer of ESQWire.com on behalf of the domain owner. In addition to winning the UDRP, the three member panel found that this was a case of Reverse Domain Name Hijacking (RDNH).

The first bit of good language for domain investors that was published in the decision came in the “Rights or Legitimate Interests” section. This discussion centered around the respondent’s business model as a domain investor, and it cited quite a few examples of similar types of domain names owned by the registrant in showing that the complainant’s business was not targeted. This section also referenced other UDRP decisions acknowledging that domain investing is a legitimate business. Here is an excerpt from this section:

“A respondent may register and use a domain name to attract internet traffic based upon the appeal of a commonly used descriptive term, even when it is identical or confusingly similar to a complainant’s registered mark. Johnson & Johnson v. Chad Wright, webQuest.com, Inc., WIPO Case No. 2012-0010, National Trust for Historic Preservation v. Barry Preston, WIPO Case No. 2005-0424.

A key factor with respect to registering generic, descriptive, common word domain names, whether in connection with a domain reselling venture or otherwise, is that the domain names be selected for their value as generic, descriptive, common word names, without targeting a specific trademark, and without commercial gain from the reputation and goodwill associated with the trademark of another. Metro Sportswear Limited v. Vertical Axis, WIPO Case No. 2008-0754, Baccus Gate Corp. v. CKV et al., WIPO Case No. 2008-0321. In this case there is no evidence whatever that Respondent intended to benefit commercially from the reputation and goodwill of Complainant when it registered the Domain Name. Indeed, Respondent registered it some seven years before Complainant even began using its MAGICPLAN mark in commerce, so it could not possibly have done so.”

In the “Registration and Use in Bad Faith” section of the UDRP, there is another excerpt that I think could be helpful to domain investors whose

NameFind Will Retain Fabricator.com After UDRP Win

Fabricators & Manufacturers Association, International filed a UDRP against Fabricator.com at the National Arbitration Forum. Until the decision was published on the NAF website, I was not sure who filed the UDRP given the generic nature of the “Fabricator” term. The domain name is owned by GoDaddy’s NameFind, and the company was represented by attorney Gerald M. Levine of Levine Samuel, LLP.

This morning, the NAF published the UDRP decision. The panel (only one panelist) ruled in favor of the domain name owner, so NameFind will retain the domain name and be able to sell it.

In order to prove its case, the complainant needs to prove that (paraphrased) the domain name is identical or confusingly similar to a trademark, the complainant has rights and legitimate interests in the name, and the domain name was registered and used in bad faith. In this particular case, the panelist ruled in favor of the domain owner on one element, so he did not feel the need to rule on the other aspects  of the UDRP.

Here is the section  of the UDRP decision I feel is most relevant to domain name owners, especially those who sell commonly used dictionary .com domain names:

RDNH Finding in Novelist.com UDRP Decision

The Novelist.com UDRP was decided and published on the National Arbitration Forum (NAF) website. The decision went in favor of the owner of the domain name, WebMagic. The panel also concluded that this was a case of Reverse Domain Name Hijacking (RDNH). Domain attorney John Berryhill represented the domain owner in this UDRP.

The complainant in this UDRP turned out to be EBSCO Industries, Inc., which operates a website called NoveList. Because the UDRP was filed at the NAF, the complainant was not publicly revealed until the decision was published.

With any UDRP proceeding, the complainant needs to prove three things (paraphrased): the domain name is identical or confusingly similar to a trademark, the complainant has rights and legitimate interests in the name, and the domain name was registered and used in bad faith. Although the panel concluded the complainant proved the first aspect, the panel concluded that the domain owner has rights and legitimate interests in the domain name. Here’s how the panel ruled on that aspect:

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