Legal News

According to a post on CircleID this afternoon, the ICANN Board of Directors held a vote to impose the non-refundable $.20 fee on ALL domain names registered from the moment of registration. The unanimous vote which took place on January 23 was noted in sections 5 and 6 of the ICANN meeting minutes, which were recently distributed. According to the notes,

“the Board resolves (2008.01.04) to encourage ICANN’s budgetary process to include fees for all domains added, including domains added during the AGP, and encourages community discussion involved in developing the ICANN budget, subject to both Board approval and registrar approval of this fee.” – Preliminary Report for the Special Meeting of the ICANN Board of Directors

By charging a fee on all registrations, people will be much less likely to buy large amounts of domain names with the intention of dropping the unprofitable names. This should close the loophole that was created to protect people who registered a domain name in error. In exploiting this loophole, some people were buying thousands of domain names (and more), keeping them for under the 5 day grace period to test the traffic, and dropping the names that didn’t receive traffic. This led some companies to register and monetize trademark domain names and quickly drop them to avoid being detected.
Dell recently filed a lawsuit against companies they believe engaged in this act, and the case is still pending.

I was reading the UDRP decision that was filed for the domain name Michelman.com by Michelman, Inc.   The owner of the domain name registered it in 1997, and in the response, his attorney stated the domain name was registered “for a website containing commentary concerning the issue of abortion rights.” The complainant argued that the “Respondent has never made any use of the disputed domain name, legitimate or otherwise.”

The WIPO panel eventually ruled in favor of the complainant, and the panel stated, “Ten years’ nonuse without a demonstrable right or legitimate interest clearly amounts to use in bad faith consistent with the reasoning of Telstra.”

With that said, I have a question about the reference to “nonuse.” What exactly does the term “nonuse” constitute? Does nonuse always mean that a domain name isn’t or wasn’t developed?   I think this term is a bit of a grey area that I don’t fully understand.

I know of several domain names that may technically look like they aren’t being used, but behind the scenes, the domain name is the backbone for comprehensive email address systems.   If a domain owner wishes to use his domain name simply for the vanity email addresses he would have access to, does this decision mean that he must build out an expensive website just to eliminate the appearance of nonuse?

I believe the definition of “nonuse” should be more clearly defined, because at the present time, I am not sure I understand what it means. To me, a domain name may be “used” even if it doesn’t appear to be so.

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.

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.