IMI.com UDRP Decision is Stunning | DomainInvesting.com
101 Domain

IMI.com UDRP Decision is Stunning

14

A UDRP was filed against the IMI.com domain name a little over a month ago. The decision was just published on the NAF website, and I am shocked that it went in favor of the complainant, despite the fact the respondent did not file a response to the UDRP.

The complainant in the UDRP is a company called Irving Materials, Inc. I had never heard of the company before I saw the UDRP filing, but their logo has “IMI” in it and the company was one of the top 10 or so results for IMI. I can see why this company would want the domain name, but I don’t agree with the decision that was rendered.

Although the respondent did not file a response, I think the publicly available Whois information makes it clear why it owns the IMI.com domain name (note the admin organization name, Internet Marketing, Inc.). This has been the case since at least 2000, according to the Whois History tool at DomainTools. I wouldn’t necessarily expect the panelist to use an account at DomainTools to see how long it has been registered to the registrant, but the current Whois information shows the company name. This also matches the header on the IMI.com landing page.

Putting that aside for a moment, there is something else I can not reconcile:

“Complainant registered the IMI mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,794,396, registered Dec. 16, 2003)”

Later in the decision, this was written:

“(b) Respondent registered the domain name on March 15, 1994″

If the complainant registered the IMI trademark in 2003 and the respondent registered the domain name in 1994, I don’t see how the domain name was registered in bad faith. From the decision, I understand that the company was founded in 1965 and apparently is a well known construction materials company. I can’t recall ever hearing of the company, so I don’t think it is fair that the domain owner should have known about this company, especially since the trademark wasn’t registered until 9 years after the domain name was registered. I also don’t see how anyone who visits IMI.com would be confused since the top of the website says Internet Marketing, Inc.

The UDRP panelist in the UDRP was the Honourable Neil Anthony Brown QC. In my opinion, Mr. Brown is one of the best panelists out there who always seems to look at both sides fairly. I think the decision was wrong (granted I am not a lawyer and I tend to be biased in favor of generic domain name owners). We will see if the domain registrant files a court action to try and retain the domain name.


About The Author: Elliot Silver is an Internet entrepreneur and publisher of DomainInvesting.com. Elliot is also the founder and President of Top Notch Domains, LLC, a company that has sold seven figures worth of domain names in the last five years. Please read the DomainInvesting.com Terms of Use page for additional information about the publisher, website comment policy, disclosures, and conflicts of interest.


Reach out to Elliot: Twitter | | Facebook | Email

Comments (14)

    John

    That’s a bizarre ruling to say the least.

    November 8th, 2017 at 11:53 am

    Elliot Silver

    I want to share some additional thoughts about the UDRP and this particular decision.

    In my opinion, for a UDRP to succeed, it should be fairly obvious that the domain registrant purchased the domain name specifically because of the complainant and only bought it to take advantage of the complainant and its brand. This is a simplistic and non-legal view of the UDRP, but I think the UDRP should be for fairly obvious cases of cybersquatting. There are other avenues for companies to proceed if the situation is not clear.

    Using this as a litmus test, I don’t understand how the UDRP succeeded. There are many companies, people, and organizations that use IMI as an acronym or for their initials. The domain owner seems to be doing just that, and a quick look at Archive.org shows this has been the case for a long time. Even without looking at Archive.or or Screenshots.com, the Whois information could have been enough. Oftentimes, panelists say “Is the domain owner known as X?” In the case of IMI.com, it looks like the registrant had been known as that and still uses that in the Whois.

    With this decision, the panelist is giving the complainant rights to a domain name that theoretically dozens of other businesses, people, or organizations could equally claim as their own. For instance, IMI Systems, which was founded in 1933 as Israel Military Industries (where the IMI comes from) was established in 1933, which is 22 years before the complainant. Wouldn’t their “rights” supersede the complainant’s? What would’ve happened had IMI Systems filed a UDRP at the same?

    Assuming the registrant has owned it since 1994, why did the complainant take so long to file a UDRP? I know the domain registrant did not respond to cite the doctrine of laches, but shouldn’t that have been considered? If not owning IMI.com was such a big issue for the complainant, why did it wait over 20 years since the domain name was registered to file the UDRP?

    This decision is really disheartening.

    November 8th, 2017 at 3:38 pm

      John Berryhill

      “This is a simplistic and non-legal view of the UDRP, but I think the UDRP should be for fairly obvious cases of cybersquatting.”

      Not simplistic at all. That was indeed the original point of the UDRP.

      The panelist here had “Internet Marketing Inc.” right there in the WHOIS information, and was aware the domain name long-pre-dated the registered mark. (one can quibble over the common law claims)

      There was essentially nothing which indicated the name was registered to exploit that mark.

      In reply to Elliot Silver | November 8th, 2017 at 3:46 pm

    Elliot Silver

    “Anon” comment was deleted.

    I do not allow comments of that nature.

    November 8th, 2017 at 6:01 pm

      Anon

      I understand your concern about my comment, but how else do you explain his irrational decision?

      In reply to Elliot Silver | November 9th, 2017 at 2:10 am

    Nat Cohen

    It is stunning how terrible a decision this is.

    There is so much wrong with this decision that it is hard to know where to start. In addition to the points already made by Elliot and John, a simply glance at the website shows that the findings in the Decision are completely wrong.

    The IMI.com web site home page lists 17 different companies that use the IMI acronym and helpfully provides links to them-

    “Searching for other IMI Companies, try these:”

    One of these companies was the Complainant.

    The Complainant’s allegations are contradicted by the web page itself-

    “Complainant also argues that Respondent uses the disputed domain name to resolve to a website that contains a series of hyperlinks redirecting users to services that directly compete with Complainant, presumably to benefit commercially from pay-per-click fees. ”

    Where does the presumption of pay-per-click fees come from? The links to the other companies are direct links, there is no tracking mechanism, the user is not routed through a PPC service.

    The web page does not contain a list of links to “services that directly compete with Complainant”, it contains a list of other companies that use the IMI acronym, demonstrating both that IMI is not exclusively associated with the Complainant, and that the companies on the list are not competitors but merely companies making use of the acronym.

    The Complainant benefits from these links as anyone typing in IMI.com hoping to reach the Complainant will find a link to the Complainant on the web page. The decision is exactly backwards – the domain owner is receiving no benefit from providing those links, while the Complainant is benefiting from the domain owner placing a free link on the IMI.com web page.

    The For Sale page indicates that the domain owner values the domains imi.com and imi.info at $2 million-

    ==

    Domain Names

    imi.com & imi.info

    are for sale!

    PartnerVision Ventures is winding down IMI’s liquidation sale. All of the company’s patents and other intellectual property are now gone. The only assets left within the company are it’s popular domain names (www.IMI.com) and (www.IMI.info).

    With brand identity coming at a premium these days, you can image what the value of such a name will bring. If you are interested in purchasing this domain, please contact us.

    Note: Offers less than two million dollars will not be considered.
    ==

    While that is an ambitious asking price, the domain owner should be free to quote whatever price he/she wants. The Honourable Neil Anthony Brown QC has with full knowledge enabled the theft of a domain in violation of the requirements of the UDRP that the owner values in excess of $1 million.

    It appears that nearly every finding made in the decision is demonstrably false.

    According to the LinkedIn profile for the owner, Jeff Black, (https://www.linkedin.com/in/blackjeff/), he appears to be quite a successful person who has led numerous companies and has been involved in a leadership role in several volunteer organizations including serving as the Chairman of the Board for California Search and Rescue for over seven years.

    One can only speculate as to why he failed to respond to the UDRP. It is quite unfortunate that he should be deprived of his rightfully registered IMI.com domain name due to such an egregious decision.

    November 8th, 2017 at 6:35 pm

    John

    Just remember folks: if Elliot brings himself to use a word like “stunning,” that’s like Margaret Thatcher pulling out a Howitzer and shooting up the place. So you know it’s an outrageous decision.

    November 9th, 2017 at 4:48 am

    Eric Borgos

    The registration date of the trademark is not really an issue; what matters is when the company first started using it (the 1960s). But, it is strange the panel agrees with this statement: “Complainant contends that Respondent must have had actual knowledge of the IMI mark given the fame of the IMI mark in its industry.” because like you said, IMI is a form of their own company name so it is 99% likely they had not heard of Irving Materials, Inc.”. I assume the fact that the domain owner did not respond at all led to the bad faith finding by default for this part of the case.

    November 9th, 2017 at 5:50 am

      John

      All other issues aside which makes this decision outrageous and a disgrace, does it even make sense to decide that such a complainant has rights to the domain and should have it transferred when there are also other “IMI” TM holders whose first use predates the 90’s? Is that not another inherent flaw in this whole system?

      In reply to Eric Borgos | November 9th, 2017 at 4:49 pm

    John Colascione

    The respondent should have simply ‘ responded’to the complaint. I guess the fact that he did not respond added to the fact that the domain was clearly for sale, was enough to take the domain. Sad when Internet Marketing Inc. should have clearly showed that respondent had rights or legitimate interests in the domain name.

    November 9th, 2017 at 6:32 am

      Mike Brady

      John,
      This is what we can learn from this.
      Thank you.

      In reply to John Colascione | November 9th, 2017 at 11:08 am

    john m

    outrageous. All these attorneys preying upon the little guys. They probably thought this was a long shot but gambled. WHat it cost them? The respondant figured this is a no brainer why spend $$$$ to defend an easy case. I didnt read the case, did the comlainant ever offer to buy or try to purchase the domain? ANyway, its always one lawyers or group creating work for more lawyers. Now tak it to court, fight for your name and attorney fees if your lucky.

    November 9th, 2017 at 12:24 pm

    Andrea Paladini

    Big mistake here was not responding … always, ALWAYS, respond to a UDRP, preferably with the assistance of a good IP attorney.
    That said, the decision in itself is IMHO baseless and ridiculous, especially in proving common law rights, given also that “IMI” is a very common acronym worldwide and Complainant’s TM protection is limited to a specific sector/business and geo area.
    Plus, some allegations, including those related to those “links” (see Nat’s comment above) are definitely groundless.
    At this point I’d suggest Mr Black to sue them in court to block the transfer.

    November 9th, 2017 at 1:21 pm

    Stu

    Everybody knows udrp and wipo are corrupt as hell, think about it, the complainant pays the panelist’s wages, I rest my case with this corruption.

    November 9th, 2017 at 6:10 pm

Leave a Reply

Name *

Mail *

Website