The viral “Girl Explaining” meme has been making the rounds, and it was a matter of time before someone made a domain name-related version of it. Cristin Brouillard, Assistant to attorney John Berryhill, posted her version of the girl explaining meme.
In this version, the girl is explaining what happens when a company files a bullshit UDRP against a rightfully owned domain name:
— Cristin Donahue (@CristinPhilly) August 25, 2022
According to NameBio, the Calpers.com domain name was sold for $1,718 in December of 2021 at NameJet. The California Public Employees’ Retirement System, commonly known as “CALPERS,” filed a UDRP against the domain name at the National Arbitration Forum and won the decision. The domain registrant did not submit a response.
In looking through the UDRP decision, this seems to have been a pretty easy case for the panelist to decide. Apparently, the “resolving website displays click-through advertising links to products and services, some of which compete with those of Complainant.” A domain name that matches a complainant’s trademark combined with infringing PPC links is a recipe for disaster for a domain registrant.
I think CliffsNotes is a fairly well-known trademark. In fact, several people have mentioned “Cliff’s Notes” or “Cliff Notes” in various comments on this blog over the years to ask for a summary of something. My CliffsNotes version of the brand is that CliffsNotes is a brand of study guides that gives a synopsis of a book. If I wanted to get the scope and general idea of a book without reading it, I might read the CliffsNotes version. That’s the brand the company has built.
A UDRP was filed by Course Hero, the company that owns the CliffsNotes brand against the cliffnotebooks.com domain name and the decision was published earlier today. Surprisingly, the sole panelist (Debrett G. Lyons) ruled against the complainant. The domain registrant did not even reply to the UDRP to defend the domain name. Nat Cohen also expressed his surprise at this decision:
There are plenty of baffling #UDRP transfer decisions. This is a rare instance of a baffling #UDRP denial.
— Nat Cohen (@domainarts) July 12, 2022
I read a disappointing UDRP decision this morning involving the 4 letter .com domain name, DWRS.com. The WIPO UDRP panelist, Warwick A. Rothnie, ruled in favor of the complainant, who had unsuccessfully tried to acquire the domain name via GoDaddy’s Domain Brokerage Service (DBS). The complainant is a shoe company founded in 2015 that uses DWRSLabel.com for its website.
I want to make it clear that I don’t lay the full blame on the panelist. The domain registrant did not file a response to the UDRP as the contact information on the Whois record was inaccurate. The panelist, in my view, made a good attempt at piecing the ownership and usage history of the domain name beyond what was presented by the complainant. Kudos to him for using the Wayback machine and Whois records to see how the domain name has been used over the prior few years. This made the registered and used aspect of the UDRP decision murky at best.
What bothered me most about the decision is the panelist’s reliance on the GoDaddy DBS broker’s suggestion about increasing the offer. Since the domain name does not appear to have been listed for sale on GoDaddy or Afternic, the DBS broker is working for the buyer. His job is to get a deal done at the best price for the buyer. Here’s an excerpt from the decision:
A UDRP was filed against the Pay.com domain name at the National Arbitration Forum (NAF). The decision was published today, and unsurprisingly, the panel found in favor of the domain registrant. I think the panel should have ruled that this was an abusive UDRP filing and found this to be Reverse Domain Name Hijacking (RDNH). The panelists on this UDRP were Dawn Osborne, Sandra J. Franklin and Nathalie Dreyfus.
As I mentioned on Twitter when I first noticed the UDRP filing, Pay.com is used and branded by a company doing business as Pay.com:
According to the NAF website, a UDRP was filed against the super valuable https://t.co/HB9tZr9pJx domain name. The domain name is used and fully branded by a business. pic.twitter.com/GFAwnwpdJv
— Elliot Silver (@DInvesting) May 2, 2022
With the emergence and growth of the blockchain domain name market, there has been quite a bit of discussion about domain names with trademarks and famous brand names. There is well-established intellectual property law related to traditional (Web2) domain names, but there are plenty of questions related to decentralized blockchain domain names with famous trademarks in them.
The EnCirca Twitter account posted a link to a comprehensive article about blockchain domain names and trademarks. The article was written by Andrea L. Calvaruso, Matthew Luzadder, Constantine (“Dino”) Koutsoubas, and Kerianne Losier of the law firm Kelley Drye & Warren LLP:
Great primer on blockchain domains from @KelleyDrye law firm! https://t.co/Ms7uJyEmKj
— EnCirca (@EnCirca) June 7, 2022
