ICA Successfully Advocates to Discredit the Dangerous Retroactive Bad Faith Theory Under the UDRP

Elliot Silver
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Let’s say you register a domain name today. You’ve done your due diligence, and you see there aren’t any companies that use the keyword(s) in your domain name as a trademark or for their brand name. A few years from now, some company launches with its brand matching your domain name.

The company now wants your matching domain name, but they don’t want to pay you for it – they want to take it from you. Until recently the company could file a UDRP complaint seeking the transfer of your domain and reasonably hope to succeed in being awarded your domain by the UDRP panel. The company would rely on a fringe interpretation of the UDRP known as “Retroactive Bad Faith” (RBF) that some panelists used to justify the transfer of long registered domain names to owners of trademark rights that arose since the domain was registered.

RBF had been cited in a number of UDRPs. One particular case that stands out is the UDRP for Camilla.com. Here’s what Andrew Allemann wrote about that UDRP decision, which ended in a transfer ruling in favor of the complainant:

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Everphone.com UDRP: Despite Front Running, Domain Registrant Prevails

Elliot Silver
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Front running is the act of attempting to sell a domain name that is not owned by the person who is making the sale attempt. Unfortunately, front running has become more common, and I wrote about front running during NameJet auctions  a few years ago. There was an interesting UDRP decision that domain auction participants will want to note because front running almost cost the domain registrant a domain name.

A company called Everphone GmbH filed a UDRP to get the Everphone.com domain name. This domain name sold on NameJet for $842 in January of this year, according to NameBio. According to the complainant in this UDRP, it seems that two entities contacted the complainant either during or prior to the auction claiming to be willing to sell this domain name. Because the complainant had been dealing with entities that seem to have been front running this domain name, the auction winner and current registrant was not aware of these other emails when the complainant approached him about selling the domain name.

In the UDRP decision, the domain registrant’s attorney Jason Schaeffer (of ESQWire.com) did a good job explaining that the two prior contacts were made by front runners and not made by the domain registrant, who didn’t own the domain name at the time time. In the decision, the three member panel understands what happened and did not hold it against the domain registrant:

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Complaint Denied in TNP.com UDRP

Elliot Silver
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In early April, I wrote about the TNP.com UDRP filing. As I suspected, the complaint was denied and the domain name owner will retain this valuable domain name. The domain owner was represented by attorney John Berryhill.

In order to win a UDRP complaint, the complainant needs to prove that the domain name is identical or confusingly similar to a trademark, that the domain owner has no rights or legitimate interests in the domain name, and the domain name was registered and is being used in bad faith. All three elements need to be proven by the complainant to win the UDRP. In this particular UDRP proceeding, the panel concluded that the first element was not met by the complainant.

Although this would have been enough for the domain owner to retain the domain name, the panel decided to rule on the rights or legitimate interest aspect as well. The language used in the decision is a good one for domain name investors who own three letter .com domain names:

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Hilco Streambank Marketing Vanity.com

Elliot Silver
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According to an article in the Milwaukee Business Journal, Vanity Shop filed for Chapter 11 bankruptcy this past March. Following this filing, Hilco Streambank has been retained to sell the Vanity Shop assets, which includes the valuable Vanity.com domain name.

Hilco Streambank Executive VP Jack Hazan told me “the assets include the Vanity trademark for apparel, retail and accessories and the premium one-word domain name – Vanity.com.” Hilco set up a marketing page on its website that has more details about what is included in the sale as well as some detailed information about the company and its background.

When I received the email from Jack, the first thing that stuck out to me was the Vanity.com domain name. As you may recall, Vanity.com was involved in a 2012 UDRP dispute. When the decision was published and the panel ruled in favor of the complainant (Vanity Shop), Mike Berkens wrote an article about it and called it “a case that should be VERY troubling for all domain holders.” He also wrote that

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RDNH Finding in ALO.com UDRP

Elliot Silver
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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.

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JDM.com Subject of UDRP (Updated)

Elliot Silver
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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

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