When a company has a huge portfolio of domain names like HugeDomains, it is bound to see its fair share of UDRP filings. A pair of Spanish companies called Bookker Corporate S.L.U and The Graffter SL filed a UDRP against Bookker.com, a domain name owned by HugeDomains. The UDRP was filed at the World Intellectual Property Organization (WIPO).
HugeDomains, which was represented by attorney Jason Schaeffer of Esqwire.com, prevailed in the UDRP. The panel also ruled that this was Reverse Domain Name Hijacking (RDNH). This UDRP decision is worth highlighting because of the pro-domain investor language from the three member panel (Assen Alexiev, Alejandro Touriño, and Jeffrey Neuman).
There were two important reasons for why HugeDomains prevailed. Crucially, the domain name was registered and owned by HugeDomains before the complainant could have established trademark rights. This, by itself, is enough to win a UDRP. The registrant also showed that it owned similar domain names like bookkers.com, wokker.com, and mokker.com to show that the company wasn’t simply targeted the complainant.
The panel also discussed buying and selling domain names, and the decision offered some language supporting the rights of domain investors to sell domain names as long as they aren’t trading off the goodwill of a trademark owner:
“The Respondent offers the disputed domain name for sale to the general public for USD 6,095. The registration and resale of domain names in and of itself is a legitimate activity provided that such activity does not trade off of the goodwill of trademark owners. Given the lack of any evidence of targeting of the Complainants or of their BOOKKER trademark, the Panel cannot find that the domain name was registered and used in bad faith.”
In the discussion about Reverse Domain Name Hijacking, the panel admonishes the complainant for bringing the UDRP complaint knowing the registrant owned the domain name before the complainant’s trademark existed. The panel also discussed how this was a “Plan B” UDRP. Here’s the key excerpt from the RDNH discussion:
“Nobody knows better than the Complainants that they do not have earlier rights than the Respondent – and yet, this is what they stated in the Complaint, and certified their statements under Rules, Paragraph 3(b)(xiv). The Panel regards this conduct of the Complainant as an attempt to mislead it. The only logical conclusion from the fact that the Respondent could not have known of the non-existent business of the Complainants at the time of registration of the disputed domain name is that it has not registered it in bad faith. The Complainants must have appreciated this, but nevertheless, they proceeded with the Complaint after an unsuccessful attempt to acquire the disputed domain name from the Respondent, without a plausible legal basis, and basing it on only the barest of allegations without any supporting evidence. In addition, this is another example of a “Plan B” scenario where the Complainants only filed this case after attempting to negotiate the price of the domain name. The UDRP should not be considered a back-up plan to go after Registrants after unsuccessfully trying to negotiate the price of a domain name. This is especially egregious given the fact that the Complainants’ rights did not accrue until well after the disputed domain name was registered.”
I think the complainant should have spent the $6,095 asking price to buy the domain name rather than spending fees on the UDRP and associated legal expenses. Knowing the HugeDomains pricing model, they probably could have gotten a small discount on the list price or bought it with a payment plan!
Because HugeDomains spent money on the three member panel and had to hire outside counsel to defend this asset, I presume the price will be much higher if it goes back up for sale in the future.
Gosh I hate HD right now. Thanks to them, the days of snapping good expired domain auctions for 15 bucks are over
I miss the days when names expired without a grace period. That was fun.
ill go with Thank you Huge Domains for defending the business of purchasing creative domains names because they could become successful business, in essence, establishing common law rights because yes someone did think of that name when they registered it, and thanks to HD for going 3 member panel
Thanks to Jason for excellent prose in the arguments and to Elliot for publicizing.
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UDRP has been used for long time to acquire valuable domains in cheap price. So RDNH is very common until now. Some companies still think that if they apply for Trademark, they only have to pay 1500$ to get the domains they want. Wipo and Trademark have to do something to punish RDNH and make UDRP not a way to steal domain names from other party.