Glory.com Decision is Good but Highlights Outbound Risk

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Earlier today, WIPO published the Glory.com UDRP decision. The complaint was denied and the domain owner (Microstrategy) will get to keep the Glory.com domain name. This is great because Glory.com is a high value domain name (they paid $115,000 in 2003 and it is worth substantially more today) that is generic in nature.

From my vantage point, the decision should have been pretty much a no brainer. Glory.com is a meaningful one word .com domain name that could be used by any number of companies called Glory. There are literally companies throughout the world known as Glory, and many of these would likely have a similar claim to the name as the complainant tried to prove. That being said, there was something a bit concerning in the UDRP decision that I look at as cautionary:

“This Panel’s finding is also supported by the fact that Respondent undisputedly never attempted itself to contact Complainant with the offer to sell the disputed domain name, but that Respondent quietly held the disputed domain name for 13 years. “

My interpretation is that had the domain owner tried to sell the domain name at some point, the UDRP could potentially have been decided in favor of the complainant.. This is scary because domain owners and domain brokers who represent domain names reach out to prospective buyers to sell their domain names. If a domain broker represents the owner of “Example.com” and reaches out to Example, Inc. (a hypothetical example), this could theoretically put the domain name at risk.

There is a bit of irony here. If Example, Inc. would love to own Example.com but the owner of Example.com is afraid to approach the company because of the line of thinking in this decision, they may never know the domain name is available for sale. Many companies just assume a domain name is not for sale and don’t inquire over the years, so opportunities could be lost as a result of this.

I don’t believe this is the first time a UDRP panel has mentioned this line of reasoning in rendering their decision. It reinforces the fact that domain owners who are willing to sell their domain names need to proceed with caution when approaching prospective buyers – especially companies whose branding is exactly the keyword in the domain name for sale.

14 COMMENTS

  1. Elliot, Owners of marks composed of generic terms (here,a dictionary word, even assuming their rights predate the domain name, have a heavy burden of proving bad faith even where (for the reasons indicated in this decision) the respondent lacks rights or legitimate interests. This of course was not an investor (or not the usual kind of investor) but I see no reason for investors should not be disheartened by the Panel’s language. The point the Panel is making is that “it makes a difference who approaches whom.” Here, it was the mark owner. There has always been a concern that offering a domain name to a trademark owner triggers bad faith under paragraph 4(b)(i) of the Policy. That concern is heightened as the string of characters moves up the classification scale to suggestive and above. Some care has to be taken how to make it known that a domain name is for sale. We’ll chat more about the issue at NamesCon. I look forward to meeting you.

    • What if the domain name two generic words registered before the trademark and the domain owner approch the trademark owner to sell the domain without knowing trademark existence. Is this consider bad faith?

    • “and the domain owner approch the trademark owner to sell the domain without knowing trademark existence”

      I’d be fascinated to know how that would simply happen.

    • Hello John,

      Great point, Anon you are still in our Hair ? Who pays your paycheck ? where are your other supporters? You are a Chancre on Domainers ASSets. JAS

      Gratefully, Jeff Schneider (Contact Group) (Metal Tiger) (Former Rockefeller IBEC Marketing Intelligence Analyst/Strategist) (Licensed CBOE Commodity Hedge Strategist) (Domain Master ) http://www.UseBiz.com

  2. I think its a bit strange. because lets say i have a 1968 pro-street Pontiac Firebird in my garage for 13 years. I know that a lot of car owners would like to buy the car. but still the car is catching dust in my garage. I bought the car because i liked it then, but I’m not using it now.

    This means that if I want to keep the car for myself. someone who would be interested in the car could come up and say. because you kept it for so long in your garage and didn’t tried to sell it to anyone i have the right to claim your car because i owned a similar car.

    that’s weird.

  3. Actually, that happened recently in a UDRP, whereby a 2-word domain was registered well in advance of the company formation and trademark, but as the panel felt there was a sense that the domain was registered “hoping someone would use it in the future”, in a bizarre decision the UDRP went through and the original registrant lost the domain even though none of the UDRP requirements was met.

    They caught a lot of flack on that one, but it’s yet another strange precedent that further erodes the domain owner’s rights.

    VM Freeman
    domainrecap.com

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