A UDRP was recently filed against the valuable Tips.com domain name at the National Arbitration Forum (NAF). The decision was just published, and the three member panel ruled in favor of the domain registrant who will retain the domain name. The registrant was represented by attorney Zak Muscovitch.
A quick glance at the UDRP might make an investor think this would be a slam dunk case for the domain registrant, but I don’t think that was the case. In fact, this is a prime example of the importance of hiring a good attorney for a UDRP defense.
When I was in college, it was a requirement for all members of fraternities to get alcohol training. Our college required us to all become “TIPS trained,” and the complainant reportedly has trademark rights to the TIPS term related to alcohol. In the complaint, the complainant cited this trademark and noted that the domain name reportedly had alcohol-related pay per click links on the landing page:
“Respondent lacks rights and legitimate interests in the domain name. Respondent is not commonly known by the domain name nor has Complainant authorized Respondent to use the TIPS mark. Respondent does not use the domain name for any bona fide offering of goods or services nor for any legitimate noncommercial or fair use because Respondent hosts a click-through site and obtains revenue by virtue of third parties clicking on links posted on the website. The first of Respondent’s five posted links pertains to “alcohol training”. Clicking on that link leads to other entities that provide alcohol service training and education in competition with Complainant.”
The respondent’s attorney did a nice job defending the right of a domain investment firm to own a generic domain name like Tips.com even if a possibly infringing pay per click link was shown on the landing page inadvertently. You should read the full defense, but here’s the summary at the conclusion of the supplemental filing by the respondent:
“Complainant relies solely on a single errant link 16 years after registration as a purported means of forcing the transfer of the valuable dictionary-word domain name – immediately after it tried to purchase it. Complainant has again failed to address its ‘30 year’ delay; its previous attempt to purchase the domain name; the ubiquity of the dictionary term; the absence of any evidence of notoriety or reputation; and the absence of any evidence of targeting Complainant at the time of registration.”
Ultimately, the panel ruled in favor of the domain registrant because it is a domain investment firm specializing in generic dictionary word and acronym domain names:
“The Panel accepts Respondent’s evidence that it registered the domain name in 2006, together with many other dictionary-words, as part of its legitimate business of investing in generic dictionary-word and acronym domain names and that, at the time of registration and prior to the filing of the Complaint, Respondent was unaware of Complainant and its TIPS mark. Even assuming that Respondent’s use of the domain name in 2021 is bad faith use and constitutes some evidence of bad faith registration in 2006, the Panel finds that evidence outweighed by Respondent’s evidence constituted by the declaration of Mr. Yikilmaz. Accordingly, the Panel finds that Complainant has failed to establish that the domain name was registered in bad faith.”
This is a solid decision that will likely be referenced in the future.