ATC.com UDRP Won by Domain Owner

Elliot Silver
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In late March, I wrote about the ATC.com UDRP filing.  ATC.com had been created back in 1990, and the complainant owned the domain name for many years. The decision was just made, and the domain owner will retain this valuable domain name. The  ESQwire.com  law firm defended the domain name on behalf of the owner.

The primary reason for the decision going in favor of the domain name owner was that the three person panel found that the “Complainant has failed to establish sufficient trademark rights to the letters ATC.” Because of this finding, the panel did not have to decide whether or not the domain owner had rights or interest in owning the domain name, nor did the panel need to consider whether the owner had registered and used the domain name in bad faith.

In looking at the decision (which should be published publicly soon), it appears that the panel declined to consider Reverse Domain Name Hijacking for this UDRP proceeding. Since it  does not appear in the decision, I  do not know why it was not considered. Based on the fact that the panel found that the complainant didn’t even establish trademark rights to the three letter combination (not even considering that the owner reportedly registered the name back in 1990), it seems like RDNH should have been at least been considered and discussed.

Even without

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Legal Threats Are Unwise in a Negotiation

Elliot Silver
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It is unfortunate, but I regularly see UDRP filings that involve seemingly generic / descriptive .com domain names. This is only part of the issue because there are a lot of situations that are resolved privately. I have one piece of advice for  people trying to get generic domain names from domain name owners – making legal threats is unwise.

I am fortunate to not deal with legal threats on a regular basis. I  attribute this to the descriptive nature of my domain name  and the relative size of my portfolio. When a legal threat is made or implied though, I immediately cease a friendly discussion and turn things over to my General Counsel and sometimes outside legal counsel. This isn’t good for anyone.

If a trademark owner or their representative is

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James Fenwick Retains Fenwicks.com After UDRP

Elliot Silver
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I recently reported that the 1996-registered Fenwicks.com domain name was the subject of a UDRP proceeding. Of note, the domain name appeared to be owned by the same person, James Fenwick, for many years. It was surprising to see a UDRP filed against a domain name with those circumstances.

Yesterday afternoon, I saw that the status of the UDRP had been changed to “Terminated.” A Whois search showed me that the domain name was still owned by the same registrant as before, so it did not appear that the owner lost or sold the domain name. I reached out to Mr. Fenwick to see what happened with the UDRP and find out if he was able to reach a deal with the complainant. Mr. Fenwick was kind enough to reply and share an update that he  allowed me to share publicly:

“I retained Stevan Lieberman who successfully assisted in showing that my right to the domain name extended over the past twenty-one years.

Given the evidence the complainant decided to withdraw. And no, I did not sell the domain name even though a purchase was offered by the complainant.”

Mr. Fenwick also mentioned to me that

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“Allegations of Theft are Outside the Limited Scope” of the UDRP

Elliot Silver
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A UDRP was filed at the World Intellectual Property Organization for 74 domain names. When I saw the filing, I thought it was a bit strange since the domain names didn’t seem to have much in common. This was peculiar since it would mean the complainant would need to prove the domain owner was cybersquatting on a variety of terms and/or marks.

The decision was published on the WIPO website this morning, and it appears that the complainant filed the UDRP because of an alleged theft of the domain names. According to the decision, the complainant contended “that the Respondent registered the disputed domain names in bad faith as the Respondent hacked into the Complainants’ GoDaddy accounts and changed the registrant information for the disputed domain names to the Respondent’s personal information without the knowledge or consent of the Complainants.”

Unfortunately for the complainant in this UDRP case, the sole panelist (Linda Chang) ruled in favor of the domain registrant, who did not file a response to the UDRP. In the discussion, the panelist was

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How to Choose a UDRP Lawyer

Elliot Silver
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In the  Domain Investing guide section of this website, there is a short  article about domain name  lawyers. The primary purpose of the article is to share a list of attorneys who I understand to be  experts when it comes to the legal intricacies  of domain name  ownership and the rights of domain name owners. There are thousands of intellectual property lawyers, but there are far fewer lawyers who I consider specialists in the field of domain name investing.

One question I have been asked many times is how to choose a good domain industry lawyer for a UDRP defense. It’s great to have a short list of attorneys and law firms that can help with a UDRP defense case, but narrowing down that list to one attorney can be a bit of a challenge.

Having worked with several lawyers on that list for a variety of legal matters, it is difficult for me to recommend just one attorney to help defend a domain name in a UDRP proceeding. Without having experience dealing with a UDRP (thankfully), I also don’t really have much advice about choosing a lawyer for a UDRP. Other than suggesting to look through UDRPSearch.com and see some of the results of UDRP cases that are similar to  the domain name  the domain owner will have to defend, I don’t really have a great way  to help someone choose a lawyer.

That being said, I want to direct you to a long post that

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Instagram Goes After Instagram.tv Domain Name

Elliot Silver
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InstagramInstagram  filed a UDRP at the World Intellectual Property Organization to get the Instagram.tv domain name. This isn’t all that surprising to me, but it is surprising that it took the company so long to go after the domain name. Instagram has filed quite a few UDRPs to take possession of typos and Instagram-related domain names.

Instagram.tv was created in January of 2011. The domain name appears to be registered to someone in China. Instagram originally launched in October of 2010, approximately three months before the Instagram.tv domain name was created.

It appears that the same registrant who owns Instagram.tv also owns Instagram.net, which was registered in November of 2010 (one month after Instagram launched). The registrant email addresses are a bit different, but it looks like it is the same registrant. Strangely, Instagram

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