In the Gekko.com UDRP decision I wrote about yesterday morning, the panelist wrote, “The Panel finds that Respondent’s offer to sell the disputed domain name to Complainant is not relevant as Respondent was first approached by Complainant to sell the disputed domain name.” (emphasis added by me). This seems to imply that it would be relevant if the respondent had approached the complainant rather than the other way around. This bothers me.
One of my companies is called Top Notch Domains, LLC, and I have used TopNotchDomains.com for my website for 10 years. I would love to own TopNotch.com. Not only would it be easier for me to share, but it is easier for people to remember. It’s also a valuable asset because there are so many companies called “Top Notch” something or other. I know the domain name has been owned for a very long time, so I don’t even bother to inquire about it. I figure the owner is using it and perhaps it would be too expensive for me to buy.
That said, I would love it if the owner reached out to me at some point to tell me he is interested in selling the domain name. It would be awesome to have the opportunity to buy this great domain name from the owner as soon as he is ready to sell. The owner, who has owned it for a very long time, should have the right to put his domain name on the market and reach out to the best candidates for the domain name, which are obviously people who use “Top Notch” in their branding.
From my perspective, what the panelist said in the Gekko.com UDRP decision could mean that if the TopNotch.com domain owner were to email me and others to let us know TopNotch.com is available for sale, it could be a strike against him in the UDRP decision. I think this is bad. I understand that there are other requirements that would need to be met for a successful UDRP, but I don’t think the owner of a generic / descriptive domain name should be penalized simply by attempting to sell his valuable domain name to the most obvious prospective buyers.
For any savvy domain owners out there who are familiar with UDRP decisions, this could have a chilling effect on their willingness to offer their domain name for sale. I would certainly think twice about reaching out to companies whose brands make up one of my domain names, even if there are dozens of brands that share the same name. I have been offered a lot of money for Embrace.com, but if I ever decide to put it on the market, I certainly wouldn’t consider outbound marketing if there is a chance a UDRP panelist could penalize me for it.
I think this is unfortunate for brands who could benefit from a generic domain name upgrade. Domain owners may be more reluctant to reach out to sell their domain names.
The owner of a vacant lot facing a beach or waterway in South Florida (i.e. Miami Beach, Hollywood Beach, Fort Lauderdale Beach, Delray Beach, etc) places a sign on the property saying it is for sale. That would be considered normal. Perhaps someone would inquire about the price of the property because they wanted to build a hotel or condo complex at that location. There probably are real estate agents that actively seek out potential buyers for such vacant lots.
However, the rules are different for domains. Putting a for sale sign on your property (parking) can result in a UDRP filing if the ads displayed are deemed to be “infringing.” Sometimes companies have approached a domain investor inquiring about price and merely responding that the domain is for sale can be deemed to be “bad faith.” It also seems unfair that the owner of a .COM who develops a domain years after the .Net registrant might still be found guilty of bad faith usage. Imagine having NewYorkRealEstate.com and not being able to develop it because the .Net or .XYZ registrant developed theirs first.
Could not agree more. The very idea is sickening.
Curious, if I list a name with a broker and the broker does the outbound marketing would his attempts to sell the domain make me liable if I didn’t do the marketing myself?
I presume so, and that is one of the reasons I don’t use a broker.
The most obvious buyers are those who use the keyword in the domain name for a brand, and those are also the most likely to be litigious (especially those with in-house lawyers).
This is very disheartening to me, as I am just now getting into the domain selling business! I just read another article where the company behind the Entrepreneur magazine is suing a person with a website called EntrepreneurIntelligence.com, for trademark infringement, because he is using the word “entrepreneur”. That is just insane!
What frightens me, is third parties you’ve never met shopping your domains around.
That scares me, too.
I’ve always emailed the domain in the title telling the prospective buyer I would like to discuss the opportunity further. I then insist on speaking by phone and word it, “While the domain is not for sale the owner is entertaining offers.” Assuming the company I am approaching is sensitive in nature as this article illustrates. This way there’s nothing on paper and no actual offer of the domain for sale.
I love the movie “Thank You For Smoking” by the way 😉
The complainant in a UDRP can still claim that the domain name was offered for sale via phone.
A Panelist will see through that.
Absolutely they can make the claim that the domain was brought up by a third party.
An equal issue is a sale being treated as a “new reg”. Exposes new owner to possible bad faith purchase not to mention possible disclosure issues for the seller on valued domains held for long term investment.
A simple “Not affiliated with ……….” disclosure could mitigate “infringement”
Offer for sale- Can anyone come up with an example of trying to sell something you legitimately own to anyone in the world as an indication of bad faith intent?
Who doesn’t intend to profit from anyone interested?
With all the recent price increases for “premium” registries and registrars are attempting to profit on lots of possible TM’s yet they are not held to a similar confusing standard.
As long as Domains are treated as simply descriptive titles (Names), rather than
“property” there is nothing to stop any company from obtaining TM’s on any keyword(s) and phrase(s) in different parts of the world that can be bought and sold independently from an actual ongoing concern. In the USA TM’s have to go with company. Not so in other parts of the world.
What I see more often is reference to domains and IP law.
How about an upgraded view of domains as a Domain Property asset and treat as IP rights from the date of creation?
Domainers, Investors, now is the time to contact ICANN and promote change. Get involved for the benefit of all.
Just to put Elliot’s concern into context, the Panel found the Gekko Respondent rebutted Complainant’s allegations that Respondent lacked rights or legitimate interests in , and never reached the question of bad faith. Therefore, who called whom is a nonissue, in this case (emphasis on the prepositional phrase).
But, assume for the moment that Respondent lacked rights or legitimate interests in (even though at one time he did) and who called whom became an issue Complainant would still have the hurdle of proving that Respondent had Complainant’s trademark “in mind” in registering the domain name. In these caes, one should never overlook the controlling facts.
Here, Complainant had priority of use in commerce (trademark registered in 1996, but as a stylized, NOT a word mark); Respondent registered the domain name in 2001 for a business in an entirely different field. The word “Gekko” (as a dictionary term) is a weak mark.
The Panel pointed out that “the dominant word element of Complainant is descriptive, as it refers to a type of reptile. The Panel considers that normally a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of commonly used descriptive or dictionary terms, in the absence of circumstances indicating that the respondent’s aim in registering the disputed domain name was to profit from and exploit the complainant’s trademark.”
There are two circumstances under which who calls whom is important to the outcome of the case. First, when a mark moves from the weak end of the spectrum to the strong end. And, second, when the mark is weak (nevertheless distinctive in a statutory sense) but there’s substantive evidence that the respondent’s motivation in registering the domain name was to take advantage of the mark’s reputation.
Apologies for the length of the explanation!
No need to apologize at all. Thank you for sharing your insight.
Correct me if i am wrong, but if say I have a domain FlipShop.com and approach a company named Flip Shop (website TheFlipShop.com ), I can offer it for sale for $500 and it is not worth for the company to file UDRP. Just buy it for $500 is better and faster.
That would seem to make financial sense in your example. However, a company could theoretically decide to take on a Lanham Act case and file suit as a matter of principle.