VK.app UDRP: Don’t Email TM Holders

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A UDRP was filed against the VK.app domain name at WIPO. The UDRP was filed by the company that operates a business on the VK.com domain name. A three member panel ruled in favor of the complainant in the UDRP, despite the fact that VK.app appears to me to be generic enough to be defensible.

From what I can see, it looks like the VK.app domain name is being used in a relatively defensive manner. The domain name doesn’t have PPC links like what was alleged in the Micro.Center UDRP, but it does utilize a usually safe “for sale” landing page. After all, short (1, 2, 3, and 4 letter) domain names typically can be acronyms for a variety of businesses, people, organizations…etc.

What seems to have caused the loss in this UDRP is that the domain registrant allegedly reached out to the complainant to try and sell the VK.app domain name. According to the complaint, “the Complainant points out that on January 18 and 21, 2019 the Respondent again offered to sell the disputed domain name to the Complainant for USD 50,000, although its original asking price for it was USD 100,000.

Here’s the panel discussion about how this outreach doomed the registrant’s case:

“Whilst the Respondent alleges that the disputed domain name was registered purely based on its descriptive, valuable inherent nature (particularly due to the scarcity of two-letter domain names) and provides examples of other two-letter domain names registered by it, the non-generic pairing of the characters “v” and “k” in the specific circumstances of the present case would suggest otherwise. Given that there are hundreds of two-letter domain name permutations available, any of which could have met the Respondent’s desire to register a further two-letter domain name, combined with the fact that the Respondent is a professional domain name investor, it is unlikely that it did not research the potential marketability of the specific domain name “vk” prior to registering the disputed domain name and that it was unaware of the Complainant. In view of this, the Panel is not convinced by the Respondent’s assertions that “vk” was selected randomly due to its supposed generic nature without intending to target the Complainant for commercial gain.

Moreover, the evidence submitted by the Complainant shows that prior to this proceeding the Respondent contacted the Complainant with the following message: “We are contacting you concerning the domain name ‘vk.app’. We own this domain name and are in the early stages of listing this domain for sale. As you own the corresponding domain name ‘vk.com’, we’d like to offer you the opportunity to purchase this domain name before we offer it for auction. We feel ‘vk.app’ is quite suitable for your online social media mobile application and complements your main domain ‘vk.com’.”

The Respondent has submitted no comments on this message and the Panel is therefore entitled, if not obliged, to draw whatever inferences from it that are justified. For the Panel, it clearly shows that the Respondent, being well aware of the Complainant and of its social media platform and official website, initiated the contact with the Complainant prior to the commencement of this proceeding and prior to offering the disputed domain name for sale to the public through the announcement on the landing page at the disputed domain name. It appears that the Complainant was the first entity to which the Respondent offered the disputed domain name for sale and no evidence has been submitted that the Respondent also offered the disputed domain name to parties other than the Complainant. The content and timing of this message satisfy the Panel that it is more likely than not that the Respondent registered the disputed domain name targeting the Complainant and with an intent to offer it for sale to the Complainant at a high price. The statements in the Response about the market prices of two-letter domain names and its second offer for sale of the disputed domain name made in the course of this proceeding are revealing in this respect. The Panel does not regard the conduct of the Respondent in respect of the disputed domain name as being carried out in good faith and as giving rise to rights and legitimate interests of the Respondent in the disputed domain name.

Therefore, the Panel finds that the Respondent does not have rights and legitimate interests in the disputed domain name.”

Unlike in the RosettaStone.app UDRP (now pending litigation) where it was passive holding that caused the UDRP loss, the domain registrant in this UDRP likely put the domain name in peril by trying to sell the domain name to the complainant. I don’t think offering a domain name for sale, especially a short one that would be valuable in other legacy extensions, should cause the loss of the domain name. However, it seems that this panel felt differently. Even having ESQWire.com as counsel, the UDRP was not won.

I guess the lesson here is to not email trademark holders to try and sell a new gTLD domain name.

11 COMMENTS

  1. That’s an interesting decision given the fact that all 3 panelists usually have a more “moderate” reputation when it comes to complaints about generic domain names, especially Neil Brown who denied almost 50% of his cases. Did the fact that the owner contacted VK with an offer to purchase the domain for $50k really constitute bad faith? I think it’s a very fine line in that case, but apparently there was no dissenting opinion.

  2. VK is Facebook of Russia and other post-USSR countries. VK.com offers installation of VK mobile app. It was very stupid to approach VK offering them to buy vk.app. Panel’s ruling was correct.

    • How else is a name like that going to get sold other than by approaching people? It is about the first time that losing a UDRP may be a blessing in disguise because they won’t have to pay the $1,000 renewal that would be coming up.

  3. I just checked the registration dates of vk.app and the VK trademark. The former is 2018-05-03 and the latter is 2016-03-18.

    So even if the Respondent did not contact the Complainant, the Complainant probably could still win vk.app because of trademark infringement.

  4. Ha, you wrote “I guess the lesson here is to not email trademark holders to try and sell a new gTLD domain name.”

    Noooooooo noooooooooo noooooooooo! The lesson here is not to ever buy a gTLD. Duh.

      • The difference is selling a name like vk.com would not require aggressive outbound approaches, it also wouldn’t have the problem of 4 figure registration fees which pushes people to “hot potato”. People would genuinely want to buy it and would be making approaches.

        There is a lot of selling pressure on .app’s right now because of renewals coming up.

  5. The seller is a moron, cybersquatter and deserves that. Only two letters in a name give so much freedom to make up something that would legitimize your ownership. Think of a project name, make a website, make an app, wait. The buyer of such magnitude would come to get it one day. This way, even though everyone would understand what you are really after, it would be by the rules.

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