Legal News

I saw a UDRP filing that made me chuckle a bit. The  California Milk Processor Board of San Clemente filed a UDRP for the domain name GotMILF.com. The domain name has a creation date of 2003.

As you may know, The  California Milk Processor Board made the term “Got Milk” famous, using celebrities, athletes, and other famous people to help advertise milk. As you also may know, MILF is an acronym for a slang term made famous in the movie American Pie.

There are a couple of interesting things to note about this UDRP.

First thing is that the domain name is currently listed for sale at Hunting Moon for $4,000. It appears that the Milk Processor Board opted to take a shot at getting the name for $1,500 via UDRP rather than buying it for $4,000. I do not know if the listing was created by the domain name owner or someone else though, so perhaps it’s an old listing that’s not valid.

The second thing of interest is that the  California Milk Processor Board was aggressive in the past when it came to the “Got MILF” term. According to the Huffington Post, a lawsuit was filed against a t-shirt company that created “Got MILF?” t-shirts in 2009.

When the UDRP decision is handed down, I’ll update you on what happens.

During the last couple of years, domain name seizures have become a hot topic. Hundreds of domain names have been seized by the US Department of Justice and  US Immigrations and Customs Enforcement. You can probably picture the graphic that is displayed on seized domain names.

Whether the domain name was used for copyright infringement or not, I am not in favor of a system that allows a  government  to seize domain names without any opportunity for the owner to defend his or her domain name. A Congresswoman from California turned to Reddit users to crowd source legislation that she hopes will provide due process for domain owners prior to a governmental seizure.

According to a press release from  Representative Zoe Lofgren, a Democrat from California’s 16th District, the Reddit community’s strong SOPA support led her to this unconventional means of crowdsourcing  legislation. Here’s what Representative Logren envisions for this:

“The goal is to develop targeted legislation that requires the government to provide notice and an opportunity for website operators to defend themselves prior to seizing or redirecting their domain names. The focus would be on government domain name seizures based on accusations that a website facilitates copyright infringement and not, for example, accusations of obscenity or libel. Feedback and input should also take into account any legitimate concerns that notice or delay might reasonably lead to destruction of evidence, threats to the physical safety of an individual, or other unintended negative consequences.“

Andrew Alleman wrote about the U.S. Federal District Court decision that awarded a domain owner $126,830 in damages, attorney’s fees, and costs in response to a case of Reverse Domain Name Hijacking (RDNH), and I believe this decision is a big deal for domain investors.

In 2009, the city of Paris, France filed a UDRP for the domain name Parvi.org, and the sole panelist ruled in favor of the city, meaning the domain name was ordered to be transferred to the city. The domain owner responded by filing a lawsuit against the city of Paris, France in the state of Texas (the jurisdiction of the domain registrar). The city of Paris did not respond, and the Texas court issued a default judgment in favor of the domain owner, awarding him over $125,000.

The above synopsis is the shorter version of the story, and I recommend reading the fuller version on the JD Supra legal website. The article was written by  Travis Crabtree, who worked on the case with noted domain attorneys  John Berryhill  and  Paul Keating.

Even though this was a default judgment, I think it’s an important decision domain investors should know about.

There is little recourse at the  arbitration  level when a domain name is subject to a Reverse Domain Name Hijacking UDRP. There really is no penalty (financial or other) when a RDNH finding is made against a complainant. However, there is now case law on the books awarding over $100,000 to a domain owner after a court’s finding of RDHN.

Yes, the legal expense may be considerable if the domain owner chooses litigation, but this could be a  deterrent  to a company filing a questionable UDRP if they know you might hire an attorney to seek damages.

It seems that companies have been tossing the dice with UDRP filings, betting that their $1,500 filing + attorney fees would net them a high value domain name. If the company knows they could be on the hook for RDNH damages of over $100k, they might think twice about following through with a proceeding. Even if the domain owner doesn’t win, the complainant’s legal fees would skyrocket. Their $5-8k UDRP filing could turn into a $50,000+ defense.

Perhaps an attorney would take the RDNH case on contingency and be paid only if victorious, knowing that they could win a $100k+ reward. I am not an attorney, so I don’t know if this is something that could or would be done in this type of situation.

It’s good to know that  domain owners may now have recourse should a UDRP be filed on a descriptive domain names.

There are many companies that actively protect their trademarks when it comes to domain names. Some utilize the UDRP process and others use the legal system to take control of their domain names. They don’t want other companies to make money off of their brands and trademarks, and they don’t want to consumers to be tricked into buying products that aren’t licensed.

One company that doesn’t appear to aggressively defend its marks when it comes to domain names is Sub Zero. Upon looking for a licensed / certified Sub Zero repair company in Google, I see many companies with Sub Zero in their domain names. Some use the Sub Zero domain names as websites and others seem to use them as simple SEO friendly landing pages.

Having the brand in a domain name makes it seem that they are licensed by the company, when they might not actually be licensed. There appears to be a significant amount of private companies operating on domain names that have the SZ brand, and it is not clear whether they have approval to do so, although some might say that not going after these users is sort of a tacit approval.

According to UDRPSearch.com, Sub-Zero, Inc. filed one UDRP for esubzero.com, and the company was victorious. There may be other filings, but I could not find another UDRP filed by the company. There may also be litigation related to domain names, but I did not find anything.

I don’t know about you, but I don’t want to pay a technician to come out and perform repairs on my refrigerator when they may not be licensed to do those repairs, and possibly worse, may not use company made parts. When you spend hundreds (or even thousands) of dollars on repairs, you want to be sure that you are getting parts and services that are approved by the company.

As a consumer, it’s annoying to see people use brands in domain names when they probably shouldn’t.

Vanity.com sues in Arizona court to overturn#UDRP ruling lz.com/b #ICANN Had sued in California lz.com/c

— George Kirikos (@GeorgeKirikos) July 4, 2012

Via his Twitter feed this morning, George Kirikos has reported that Vanity.com Incorporated has filed a lawsuit against Vanity Shop of Grand Forks, Inc. The lawsuit is reportedly in response to the UDRP decision that awarded the Vanity.com domain name to Vanity Shop.

According to Justia, the lawsuit was filed in District Court in the state of Arizona. As a result of this lawsuit filing, the ordered transfer of the Vanity.com domain name will likely be halted pending the outcome of litigation.

Mike Berkens covered this story last month on his blog and it garnered some interesting discussion.