Legal News

Geometric.com WIPO – Victory with Dissent

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With the assistance of Ari Goldberger and his ESQwire.com law firm, Nat Cohen’s Telepathy, Inc was victorious in its WIPO defense of the generic domain name Geometric.com. The case was filed by an Indian-based software company whose name contains the generic term “geometric.”

There was a dissenting panelist in this case, who stated his belief that the company employs “a conscious strategy to register the domain name for eventual sale to a potential complainant or competitor, to prevent a trademark registrant from reflecting its name in a corresponding domain name, to disrupt a competitor’s business or to attract Internet users for commercial gain by confusing use of the domain name.”

In my humble opinion, Telepathy owns a tremendous portfolio of generic domain names (including Pennsylvania.com and Maryland.com), and they are in the process of developing its names. It takes a considerable amount of time and effort for each project, and it shouldn’t be assumed that there is bad intent simply because a domain name isn’t developed into a full website.

Fortunately for Telepathy, this panelist was in the minority, and the company was permitted to keep its generic domain name. I find it frustrating that some companies file a WIPO for a generic domain name simply because that particular term is contained within their business name. It seems like they are making a business decision that it is worth the gamble that they could potentially acquire the name at a lower cost via WIPO rather than contacting the owner to pay market value for a generic domain name. There is a good chance they will lose, but if they happen to prevail, they could conceivably save thousands of dollars.

In the WIPO case of Geometric.com, the responding company probably paid a few thousand dollars to defend its domain name, but it was necessary, as previous WIPO decisions may be cited as a history of bad faith. Even if the name wasn’t worth the cost to defend it, the responding company is almost forced to defend the name as a protective measure for other generic names in its portfolio.

Congrats to Nat and Ari, two respected people in the domain industry.

Example of a Split UDRP Decision

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Someone posted an interesting UDRP-related question in the Legal Section of DN Forum yesterday. The person asked; If a Complainant filed a UDRP for multiple domain names owned by a single entity, are the panelists forced to make an “all or nothing” decision, or could they determine that some of the domain names should be transferred while others should be kept by the current owner?

Domain attorney John Berryhill provided evidence that a split decision could be reached. Berryhill cited the Yell Limited v. Ultimate Search UDRP Case No. D2005-0091. The disputed domain names in this case were YEL.com, YellWeb.com, UKYellowPages.com and LondonYellowPages.com. In the end, the panelists ruled that:

“For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, yellweb.com, ukyellowpages.com and londonyellowpages.com, be transferred to the Complainant.

The Complaint relating to the domain name yel.com is dismissed.” — Source: ADMINISTRATIVE PANEL DECISION Yell Limited v. Ultimate Search

In the end, the Respondent was able to retain the most valuable domain name of the group.

Get WIPO Updates

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One of the most critical things a domain investor needs to do is stay apprised of domain-related subject matters, especially UDRP decisions. Domain investors can learn quite a bit from various UDRP rulings, and it is pertinent that everyone who has any money invested in domain names should stay on top of these.

I just found out that WIPO allows people to subscribe to receive UDRP updates and decisions posted by panelists. I recommend that people subscribe here: http://www.wipo.int/amc/en/subscribe/decisions.html

House Approves Senate’s Ban on Internet Taxes

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Michael and Judi BerkensThanks to Mike for sending me this link this morning: House Approves Senate’s Ban on Internet Taxes

In an unanimous vote (402-0), the US House of Representatives approved an extension of The Internet Tax Freedom Act yesterday, prohibiting local and state governments from collecting taxes on various Internet services, including email and instant messages. This is good news, as a taxation on these types of services would have impacted just about everyone on the Internet, and it would have caused some drastic measures to police.

For the article, please click here.

Photo courtesy of Barbary Neu, borrowed from DNJournal

Visions.com WIPO – Big Risk Rewarded

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Weather Shield Mfg., Inc., of Medford, Wisconsin filed a WIPO for the domain name Visions.com, owned by Lori Phan. In a decision reached on October 10, 2007, the single WIPO panelist found in favor of the Respondent, and the complaint was denied.

I believe the domain owner took a risk by not requesting a 3 member panel. Although she did a great job of presenting her case, it could have easily gone the other way based on some previous decisions. I think it is always best to ask (and pay) for a 3 member WIPO panel because it means the Complainant needs to convince 2 of 3 people that they are right. Having a single panelist is more risky, in my opinion, especially for a high value name like Visions.com.

If the domain name is worth much more than the cost of the 3 member WIPO panel, I would think it would be best to request it.

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