UDRP Filed Against Picture.com at WIPO

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Late last week, I noticed a UDRP was filed against the generic, high value Picture.com domain name. The UDRP was filed at the World Intellectual Property Organization. It is WIPO Case D2020-2016.

Picture.com was originally created more than 25 years ago – in September of 1994. The domain name is registered under privacy proxy, and it forwards to a purchase inquiry page at Uniregistry Market. In October of 2019, domain investor James Booth announced that his company acquired Picture.com, although it is unclear if his company still owns this valuable asset:

The complainant in this UDRP is a company called Picture Organic Clothing. A Google search shows that this company appears to own the double hyphenated, brand match Picture-Organic-Clothing.com domain name. It seems pretty clear why this company would want to have Picture.com, but it is not clear why the company believes it will win a UDRP. A LinkedIn business search shows that this company was founded in 2008, which is about 14 years after Picture.com was originally registered.

For the last several years, UDRP panels have regularly ruled in favor of domain registrants when it comes to dictionary .com domain names. A quick search shows some recent UDRP cases that went in favor of domain registrants including Naturals.com, Bellhops.com, Novelist.com, Legally.com,Β  and Circus.com. Panels have also found that investing in domain names and selling domain names is a perfect legitimate business practice.

Because Picture.com is such a generic and high value domain name, I do not see how the complainant is going to prevail in the UDRP. In fact, I would not be surprised to see a finding of Reverse Domain Name Hijacking (RDNH).

27 COMMENTS

  1. It’s absolutely ridiculous and a six-year-old would know they’re going to be found guilty of RDNH. But until WIPO establishes some painful penalties for RDNH, people will keep spinning the roulette wheel.

    • Ok, folks, you are all witnesses – none other than David J. Castello himself agrees with my position on penalty for RDNH. Zak Muscovitch, et al, please take note. πŸ˜‰ And he gave me a really good laugh with how he expressed it too. And furthermore: even a six year old can tell you “penalty for RDNH” does not mean “loser pays” or “penalty for losing UDRP.” It means penalty for abuse (including defrauding) of process.

      Thank you and that will be all for now.

  2. Will be interesting to see which lowlife law firm took on this doomed from the start UDRP complaint. Whoever it is, shame on you.

    • This is good. Anyone taking such cases need to be shamed! No other effective way to create awareness around this issue. It’s the only way anyone will listen.

      Since everyone still a .com fan: lawyersthatlose.com / lawyerswholose.com avail.

      Put their names out there. Promote that. Let the whole industry know. Ask them, how do you like me now!?

      Domaining ya, don’t tread on me! Bite back.

  3. Don’t forget that when a domain change hands complainant can ask to apply as it is a new registration, that’s the only thng they can show.

  4. “Picture.com was originally created more than 25 years ago – in September of 1994.”

    “A LinkedIn business search shows that this company was founded in 2008, which is about 14 years after Picture.com was originally registered.”

    The original registrant stopped using the domain name quite some time ago. By December 2017, this domain for a former photographic print business resolved to a web page saying that they were no longer in business. In September 2019, the domain name expired. There’s no continuity of ownership or use, and the registrant is more likely to lose the proceeding if they falsely claim to have been the registrant since 1994 or to be the successor in interest in goodwill in what had been a defunct business for several years prior to the name expiring.

    It’s considerably more effective merely to point out that an obscure clothing company is not what makes this a valuable domain name.

    • I am sure a good attorney will do that when defending the domain name. I was pointing out that this valuable domain name was created long before the clothing company existed.

      The embedded tweet gives a pretty good idea of when the domain name was acquired, beyond the Whois registrant change.

    • > In September 2019, the domain name expired.

      Hey John…

      Where are you seeing that it expired?

      namebio.com/picture.com doesn’t seem to have any record of an expiration auction, so can you please provide more details about that?

      • I had misread the dates when I glanced at the WHOIS history. It does not appear to have expired. However, the business associated with the domain name had ceased years before the name was sold. The larger point is that the creation date of the domain name is a distraction.

        • I think it illustrates how egregious this filing is. The company is trying to (mis)use the UDRP system to get possession of a domain name that is over 26 years old and worth a lot of money. Unless I am missing something, the company was created 14 years after the domain name was created, and the domain name has held substantial value since that time.

  5. This is certainly an outrageous move and they need to introduce some kind of a hefty penalty for misusing the system.
    However, the Booth brothers are known for their not so ethical tactics in selling and buying names, they are just a pair of spammers, been getting so many emails pretending to be a female representing their company and offering to buy my names that I just created an email filter to direct all emails from them to my junk folder.
    Picture.com is a generic name but don’t forget what happened to Halifax.com, that name was generic as well and the geniuses who paid $175k to acquire the name and flip it to the RBS lost the name due to they unethical tactics!

    • The domain name resolves to a Uniregistry “for sale” inquiry page, and I do not see anything wrong with that.

      In my opinion, Picture.com was acquired because it is a valuable domain name. The value is derived from the generic nature of the domain name, and that has absolutely nothing to do with the clothing company that filed the UDRP.

      UDRP panels have stated many times that domain investing is a legitimate practice. Unless something major happened that is not visible to me, I can’t see a reason for the panel to conclude the domain name was registered (purchased) in bad faith and that it is being used in bad faith. Without being able to prove that, the UDRP is doomed.

  6. ‘Spam emails’ are the key to buying premium domains. They’re not spam emails at all. They’re not sent via an automated program. They’re individually vetted, just some slip through the net because the (domain investor) owner is hiding behind privacy. We by and large have a ‘fair wholesale’ offer. Your interpretation of that may vary but it is the reason opportunistic domainers can still make it today. Sometimes you can get relatively good deals. That female representative you refer to is a legitimate family member, so pipe down with your blanket statements, ‘Ray’.

  7. If the defendant hires a good domain attorney, zero chances of getting the domain, and RDNH.
    This would be a good one for Zak (attack!) Muscovitch. πŸ™‚

  8. The are some on the worst spammers in domaining. They use Maggie Kay and many others to hide their own names on spam emails. Karma!

  9. Hey Josh,

    Didn’t you read that Andy said above that all those females are family members that are backing those mass e-mailings?

    And how is it “Karma” when they are obviously going to win with literally no effort?

    Just because they send out mass e-mailings doesn’t mean they deserve to lose a domain which they innocently own, got it?

  10. I would be curious to learn if the argument of senior registration of the domain is applicable if the domain changes hands. If the first registrant is 1994, it would be hard to argue that registrant could have known about a future TM registration but if it changed hands yesterday or not long before, could the argument be made that the new registrant is not subject to the same argument?

    So, basically, is it domain creation vs TM registration or domain registrant change vs TM registration?

  11. In my opinion, and as Berryhill suggested, the registration date is not even part of the argument. It doesn’t have to be. Nobody’s trying to exploit their mark.

  12. If it is a RDNH, the panelist should punish the complainant with very expensive fine. So this trend to try owning high value domain names without buying, but through UDRP can be stoped. Every one is trying to own 6 figures domain name trough UDRP, they choose UDRP as a cheap way to acquire domain names, and this is a wrong habit that has been becoming a trend for years.

  13. They use Maggie Kay and many others to hide their own names on spam emails.

    Andy said above that all those females are family members that are backing those mass e-mailings.

    Hey, Shill Bidding Brothers,
    Can you tell us How many females are there in your family on earth?

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